I am starting to see a concerning increase in accountancy practices filing trade mark applications on behalf of their clients. Of course, at first glance, you can see why this would appear to be the logical next step after registering business and/or company names.
But it’s not, and for two reasons: timing and expertise.
Timing
When establishing new business and/or company names, the following sequence is considered good practice in brand protection:
- Before business and company names are registered, a trade marks attorney will advise if the chosen name is actually protectable under the Trade Marks Act 1995 (Cth). Or is it too generic? Is it prohibited in any way? Does it rely on geographical location?
- Then, if it meets protection eligibility criteria, thorough searches of the trade marks register and common law databases are conducted to determine availability. Obviously, it’s not a good a start if a business owner ends up with a name already legally owned by someone else.
- Next, strategic trade mark applications must be made immediately in the right classes, for the right goods and/or services. This assumes the searches gave the all-clear. If they didn’t, it’s back to the drawing board for a new name.
- Finally, after filings are made, business and company names can be registered, and with some overall peace of mind that the trade mark should be able to progress through the protection process due to the initial due diligence.
Expertise
Naturally, you want your client to have the benefit of brand protection undertaken by an expert in trade mark searching, filing, and prosecution (seeing the mark through to registered status).
Without this specific knowledge and skillset, unfortunately, applications made by accountancy firms often fail for the same reasons they fail when businesses file for themselves — they do not meet the requirements of the Trade Marks Act 1995 (Cth).
Thankfully, in many cases, an adverse report from IP Australia is not the end of the application. So if you have made trade mark filings on behalf of your clients that are stuck in the process due to an adverse examination report, it is essential to have a trade marks attorney review the examiner’s objections and provide their advice. With the right response, the mark can move on to ‘accepted’ status.
Here are four reasons why it is best to hand the brand protection process over to someone who spends every working day in this space:
- For the benefit of your client — strategic brand protection advice, and as early on in the process of setting up a new business, is crucial
- To save money that will otherwise be lost in useless government filing fees spent on trade mark applications that have no hope of attaining registered status
- To save time as it takes a minimum of 7 1/2 months to achieve registration and these flawed applications will eat up nearly half of that time waiting for an adverse report from IP Australia with objections that cannot be overcome
- To avoid the embarrassment of filing applications that simply can never achieve registration for your client.
Trade mark applications, as easy and enticing as they may appear, are not a case of ‘how hard can this be?’ — if you are not familiar with the Trade Marks Act 1995 (Cth), if you do not have advanced searching skills, it is very likely that you will ultimately file unprotectable trade marks.
It is far better to directly refer your client to a trade marks attorney. Or, if you want to keep this service under one roof, include expert trade mark searching, filing, and prosecution as a value-added white label service by aligning with a trade marks attorney.
I’m sure you won’t be surprised to learn that as a trade marks attorney, I refer my clients to accountants for accounting!
Alicia Beverley is a registered trade marks attorney, IP educator, IP auditor, and IP strategist based in Sydney, Australia. She writes extensively on intellectual property – to view more of her articles, click here. Her start-up KOMO® IP is the only Australian business developing online IP training programs. To see the current line up, click here. Several new titles are in development. To learn more about her adverse report review service, click here.