Disclaimer

Is my trade mark descriptive of my business?

Example:

PIXAR (digital animation studio)

PIXAR is not a descriptive term. It is not commonly used in connection with the provision of goods and services of a digital animation film studio. 

MYVIRTUALDEPOT  (online hardware depot)

MYVIRTUALDEPOT is quite descriptive of hardware depots available online.

The inclusion of the word MY is important but is still quite descriptive.

The Legal Test

Whether the mark is:

(i) descriptive of a characteristic of the business;  and

(ii) other traders could reasonably be expected to want to use the mark, from time to time, in the ordinary course of business without an improper motive.

If descriptive, am I prepared to include a logo?

Examples:

PIXAR

The mark is not descriptive.  For this reason there is no need to include a logo.

MYVIRTUALDEPOT

There could be a need to include a distinctive logo as the mark is slightly descriptive.

The Trade Marks Office may or may view the mark as not being sufficiently distinctive (non-descriptive) without a distinctive logo.

The disadvantage of including a logo is that a court may find that the scope of my protection is limited to the logo.

Would I be better off having an arbitrary type mark?

Note: Arbitrary Marks are marks that have a descriptive meaning but not a descriptive meaning in relation to the goods/services of the business.  For example, APPLE for computers.

Example:

PIXAR

Pixar is a made-up word and appears to be distinctive enough to function as a trade mark.  Use of an arbitrary mark is not needed.

MYVIRTUALDEPOT

MYVIRTUALDEPOT may be too descriptive, but is possibly on the borderline.

Is the mark a suggestive type mark?


Suggestive Marks are suggestive of a characteristic of the goods/services, while not being directly descriptive.

Eg: Citibank (financial services); Brewed Awakening (coffee); Copperstone (suntan lotion); Pinterest (social media network/on the web)

Examples:

PIXAR

PIXAR does not suggest a meaning or relation to its goods.

MYVIRTUALDEPOT

A trade mark examiner may object to an application MYVIRTUALDEPOT is possibly directly descriptive.  If not directly descriptive, then the mark is suggestive.

Is my trade mark memorable?

Examples:

PIXAR

Is fairly memorable as it is not something that would ordinarily be used in connection with digital animation film studio.

MYVIRTUALDEPOT

The mark is fairly memorable.  Possibly the may be a bit long-winded when used as a domain name (e.g. www.myvirtualdepot.com)

Is my trade mark appealling to my target audience?

Examples:

PIXAR

The audience comprises young adults, middle-aged and elderly people. The mark PIXAR appeals to all generations.

MYVIRTUALDEPOT

The audience comprises home improvers who want to spend their money on quality products.   The mark is considered to be more memorable than appealing.

Are the domain names available?

Examples:

PIXAR

A search reveals that the .com and .co domains are not available. Other less well known domains extensions such as .biz are available.

MYVIRTUALDEPOT

The .co and .com domains are available.

Is anyone using a similar mark for similar services?

Examples:

PIXAR

One company, namely, Pixar Bio Corporation, is using the mark but not in connection with digital animation film studio services.

Pixar Bio provides drug, agent and cell delivery systems.  For this reason there is no likelihood of confusion.

MYVIRTUALDEPOT

A few entities are using “Virtual Depot” but for different services (i.e. business management services, software services, etc.)  Because ‘Virtual Depot’ is directly descriptive and many people are using it, there is no real likelihood of confusion.

Which classes should I register my trade mark in?

Examples:

PIXAR

May wish to cover ‘cinema studio services, motion picture studio services, and movie studios’ in Class 41.

MYVIRTUALDEPOT

May wish to cover ‘retailing of goods (by any means); and convenience and/or department store retailing‘ in Class 35.

May also consider covering ‘storage of goods, delivery of goods or shipping of goods‘ in Class 39.

Are there any similar registered marks?

Examples:

PIXAR

A similar mark ‘PIXARBIO’ is registered on the Australian Database.  The mark is, however, registered for ‘drug, agent and cell delivery system comprised of a range of biomaterial formulations for neurological use’ and is not related to the provision of goods and services in connection with a digital animation film studio.

The marks have a different meaning and would not be confused.

MYVIRTUALDEPOT

Similar to a registered mark MYVIRTUALHOME but the marks would not be confused.

Can I remove these registered marks for non-use?

A trade mark registration can be removed from the Australian Trade Marks Register for non-use on two separate grounds:

      (i) if, at the time of filing, the owner had no intention in good faith to use or authorise the use of the mark in Australia;  and

      (ii) if the owner has not used the mark in good faith for a continuous period of 3 years (ending 1 month before the date of filing of the non-use application) and the mark has been registered for 5 years or more.

Can I obtain consent from the registered owners?

In some circumstances it may be possible to obtain a letter of consent from the owner of a conflicting registration.

Generally, the only disadvantage of requesting a letter of consent is alerting the owner of the conflicting registration to the existence of a possible conflict.  After being alerted, the registered owner could commence an infringement action seeking damages, an account of profits or an injunction.

Will my reputation in the mark confer registrability?

Examples:

PIXAR

There are no conflicting marks so a reputation is not needed.

MYVIRTUALDEPOT

Whilst there are no conflicting marks, the mark has been used extensively in Australia with a substantial turnover.  For this reason ‘honest concurrent registration’ would have been possible (if there was a conflicting mark).

As the first person to use the mark in connection with the goods and services, ‘prior use registration’ would also have been possible.

Should I file overseas?

Due to costs, it is often advisable to file an overseas US application and a CTM application via the Madrid Protocol and then add countries as required.

Should I modify the classes when filing overseas?

Usually it is advisable only to modify classes for the purpose of limiting costs.

Have I considered centralised filing systems?

The Madrid System

The Madrid System is a one-stop solution for registering and managing marks overseas.  There are 96 member countries, including the US and Europe (CTM).

The CTM System

The Community Trade Mark (CTM) system offers trade mark owners a unified system of protection throughout the European Union (EU).

Notably, if there is an earlier registration in a member country, it is possible to continue to break a CTM application into applications for other member countries.

aside: Countries

Countries covered by a CTM registration include: Austria, Benelux (Belgium, the Netherlands and Luxembourg), Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

Countries covered by a Madrid registration include: Albania, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Egypt, Estonia, European Community, Finland, France, Georgia, Germany, Ghana, Greece, Hungary, Iceland, Iran (Islamic Republic of), Ireland, Israel, Italy, Japan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, Norway, Oman, Poland, Portugal, Republic of Korea, Romania, Russian Federation, San Marino, Sao Tome and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, The former Yugoslav Republic of Macedonia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, and Zambia.

Am I prepared to do it myself?

It is important to:

(i) properly select important goods and services;

(ii) monitor all due dates and deadlines.

(iii) advise the Trade Marks Office of changes in address.

.Unless you are experienced with matters of trade mark law, it is generally not advisable to file an application yourself.

*As with all information provided by this website, the content of this webpage is subject to our disclaimer. The material provided is not to be relied upon under any circumstances.