How to Trademark a Logo
Our Firm's Trademarking guide (below) is written to assist you and prevent you from falling into common traps that we see from Business owners.
Trademark Protection Steps
- Don’t design graphics until you are confident the words featured in your logo don’t infringe: Otherwise you may waste your funds developing a logo if the words infringe. A Trademark Attorney can conduct trademark searches and assess your proposal. D.I.Y. searches or quick searches by professionals often lead to issues that are only brought out when Court action is commenced. See our Court case reports.
- Make certain the graphics do not infringe either: If you design a boomerang for your clothing do you infringe Nike's "Tick symbol" even though they are different items? For legal confidence, a Trademark Attorney should evaluate your image and ensure your logo does not infringe.
- Trademark your logo: You need the legally correct format, class(es), wording and ownership to enable your Barrister to stop copycats, otherwise your trademark will certainly almost not work. The Trademark Office does not assess these filed components and presumes they are all right. See this Court case where a D.I.Y. Trademark owner engaged a Trademark Attorney when his trademark was infringed to stop a copycat. His Trademark Attorney spotted an issue with the D.I.Y. trademark and amended the Trademark details to fix it, then took Court action. However the judge dismissed the case and ordered Cancellation of the "amended" Trademark Registration on the basis that it was invalid when lodged. The D.I.Y. Trademark owner could not stop the copycat!
- Wait 8 months for your Trademark to be Registered before use: The Trademark Office does not warranty rights, and the Registration can be Revoked if it were not legally right for you to own them. For clarity, an attorney can lessen your risk in just 2 weeks (or less) with comprehensive infringement research. Beware of quick easy looking searches or offers, they often are not comprehensive and are not worth it!
- Once Registered, find infringements each month: Monitoring for infringements is not a role of The Trademark Office. An attorney can assist you assess whether a rival’s use of your name infringes and seek compensation for you.
Accepted Trademarks Removed
At least once a month, we blog an interesting Court case on our Facebook page. More and more often we see Trademark applications which have been lodged, FAIL in the Courts after they have been Accepted and Registered by IP Australia because they weren't lodged with legal care or knowledge.
Business owners should see the outcomes of these Court decisions first, so they understand exactly what can happen.
For example a company CLIPSO was sued by CLIPSAL after CLIPSO was Registered as a trademark. The Director of CLIPSO must have been surprised to find that his Registered trademark was cancelled by the judge who ordered IP Australia to remove the Trademark Registration. Then the Director was held to be personally liable, even though he had a company. Read the full case here.
They also lost their domain name http://www.clipso.com.au as they can't use it anymore.
There are many other cases reported on our Facebook page where Trademark Registrations, especially where experienced Trademark Attorneys weren't used.
One example is where a D.I.Y. applicant thought it was easy to file a trademark with legal help. Little did they know that the trademark ownership was legally invalid. The Trademark Office does not check this either and the trademark was Registered. Later when the trademark was copied, the judge ordered that the Registration be CANCELLED because the ownership was incorrect at the time of filing.
This Registration was cancelled even though their legal representation spotted the flaw, and amended the ownership before going to Court. See the full case here.
What lessons can be learnt?
- Registered trademarks do not guarantee you are free of infringements, or that you can enforce. Having an expert guide you through the pitfalls is essential.
- Other businesses can challenge your right to the logo, and if your Trademark Registration is cancelled, this leaves you open to compensation claims.
- Inadequate infringement research is not the way to go. If your proposed name or logo happens to infringe, then you have just alerted the owner and you can be contacted for compensation, or forced Court Action.
So how do you avoid these issues?
- Avoid the logo traps and have a Trademark Attorney represent you by engaging our firm straight away.
- Our Patent and Trademark Attorney firm has 30 years of experience in Trademark Infringements.