Preparing to file a trade mark application

Before filing a trade mark application, you need to consider the following questions.

What are your trade marks?

Trade marks can be business names, brand names, product names, logos, characters, colour of products, the shape of products, scents of products, among others.

Your trade mark attorney assists you in identifying the possible types of trade marks of your business and assessing their inherent distinctiveness.

What are the goods and services you want protected by your trade mark?

When filing a trade mark application, applicants need to nominate classes of goods and services to be claimed in an application. The World Intellectual Property Organisation (WIPO) divides all goods and services into 45 classes. Your products and services are categorised into one or more classes.

A list of your products and/or services is helpful for your attorney to identify correct classes for your application and define a suitable scope of protection for each class.

Who will be the applicant?

Usually, the author of the trade mark or the person who has first used the trade mark on relevant goods and services is entitled to apply for a registration of the trade mark. The applicant should meet certain eligibility requirements to be able to own a registered trade mark. The applicant of an application is the owner of the trade mark when it is registered.

A trade mark registration obligates the owner to continuously use the trade mark in the course of trade. Accordingly, the owner of a trade mark registration determines the legislative user of the trade mark after registration.

However, it is common that the author or the first user of the trade mark is not going to be the ultimate user of the trade mark in trading. Your trade mark attorney can advise how each party should exercise its rights legitimately. In some cases, an assignment or a license may be needed.

Any conflicting registrations or applications?

Conflicting registrations and applications are one of the most common barriers which prevent an application from progressing to registration. Pre-filing trade mark searches can effectively identify conflicts and your trade mark attorney will be able to advise you around strategies on avoiding or addressing the conflicts.

Trade mark prefiling considerations

To summarise the trade mark prefiling considerations, here is a to-do list to be accomplished.

  • Identify the form of trade mark being applied for.
  • Identify the type of goods and services for the trade mark application.
  • Conduct a pre-filing trade mark search.
  • Ensure that all the details below are correct:
    • A representation of your trade mark;
    • Applicant information;
    • An assignment of the trade mark from the original designer or the author to the applicant if they are not the same person;
    • A professionally prepared specification of goods or services;
    • If your trade mark contains foreign words or characters, English translation and transliteration are needed; and
    • Trade mark fees

Once pre-filing considerations have been addressed, your attorney can file your trade mark application.