Registering a trade mark may seem expensive, especially if you are just beginning your journey as a start-up or if you are a small business owner with many other expenditure outlays to consider.
If you are reading this post, you are probably already aware of the importance of protecting your trade mark. If you’re not completely convinced, you can read more about why you should register your trade mark in this article: Do I need a trade mark?
Regardless of whether you self-file, use an online service or engage a lawyer or attorney, you will need to pay fees to the Trade Marks Office (also known as IP Australia), the government body that handles all intellectual property registrations in Australia.
Should you try to file your trade mark application yourself?
We all want to save money and there may be times where we feel we can cut corners or get things done cheaply in a way that won’t adversely affect the outcome of what we are trying to achieve. However, self-filing your trade mark does not necessarily mean that you will save money or time.
Firstly, there are currently 45 trade mark classes to choose from. There may be adverse consequences if you choose the incorrect or too many classes when you draft your own trade mark application. Not only do you risk paying too much money for your application, but if you attempt to seek registration in a class that does not actually reflect your business’s goods or services, you may not end up getting the protection you need in the areas of goods or services that are most relevant to your business. Likewise, if you choose too many classes you may pay for something you do not actually need.
You should weigh up several factors when deciding how to file, including the time it takes to prepare the application and complications or issues that could arise during the trade mark process. Though the filing process can be relatively straightforward for a seasoned expert, it is not simple and often requires careful consideration of the ‘bigger picture’. For example, did you know that there are important ownership issues to consider, which cannot be corrected if you get it wrong at the time of filing?
If you look at the flowchart below, you can see it is not just a case of lodging a form and hey presto, here’s your registered trade mark.
Is an online service a better option?
Using an online legal service may seem attractive because it is cheaper than using a lawyer or an attorney. It may even appear to be a faster option. In theory, it should save you time on the trade mark search, and a second set of eyes to look over your application may be beneficial. However, will you receive feedback and advice? In most cases, the answer is no. They will not evaluate the strength of your trade mark nor provide advice on other relevant issues such as ownership considerations.
Best left to the professionals?
Since the terms are often used interchangeably (particularly in popular culture), there can be some confusion between the role of a “trade mark” Lawyer and how that differs to a Trade Marks Attorney.
Unlike attorneys, lawyers (or admitted solicitors) may be able to assist with litigation, negotiating settlements, drafting commercial agreements, conducting IP asset due diligence and copyright.
Generally speaking a trade mark Lawyer will most likely charge flat fee + additional hourly fees or just hourly fees (straight billable hours) to process a trade mark application. Charges may be affected by the extensiveness of the search, and complications during the application process. While some trade mark Lawyers may have experience conducting trade mark matters in Australia and elsewhere, it is usually not their sole focus and they may not have specialist IP or trade marks qualifications.
Trade Marks Attorneys are highly specialised in providing trade mark services including preparing and filing trade mark applications, carrying out trade mark registrability searches, responding to objections and preparing trade mark assignment and licensing agreements. They are very familiar with the process and the way the Trade Marks Office works, and will also find out whether your proposed mark will infringe another’s IP rights.
Another key difference between trade mark Lawyers and Trade Marks Attorneys is that Attorneys are registered to practice with the Trans-Tasman IP Attorneys Board, where as a trade mark Lawyer is not. Attorney firms are governed by a separate Professional Code of Conduct to solicitors, and as professional advisors, are bound by Attorney client privilege.
An experienced Trade Marks Attorney will provide you with advice on your application and help guide your strategy. They will help you by gathering all the relevant information to meet all the requirements of the Trade Marks Office and will communicate with the Office on your behalf.
A professional will also do a more comprehensive search since most law and intellectual property firms subscribe to specialist search software that is more sophisticated than IP Australia’s free search tools.
During the application process, you may receive adverse reports from the Trade Marks Office, or they may request additional information. Trade mark professionals are well versed in responding to objections and will provide you with advice on the options for proceeding. Online filing services may not offer these services, and the Trade Marks Office cannot provide strategic advice or assist you with preparing a response to any objections raised.
Conclusion: DIY is cheap but may not get you the outcome you want. Likewise with the online services. Hiring a professional may seem more expensive at the outset, but it is worth it.
Overall, it should be a question of value rather than price. People with expertise and knowledge of the system, such as lawyers and Trade Marks Attorneys, have the benefit of years of preparing trade mark applications, on a daily basis. They have seen all the kinds of objections that come up and are therefore more likely to draft your application in such a way that objections are not raised. If objections are raised against your application, a trade mark professional will know the best way of attempting to obtain registration of your mark. If you file yourself and then your trade mark is unsuccessful, it could end up costing you much more than any initial savings. A dedicated Attorney will provide you with expert advice and walk you through the process right through to registration, and can also assist you with any enforcement issues that may arise after registration.
Summary of costs associated with each method:
The above costs are indicative only and include official fees and GST, but do not include costs for dealing with objections or opposition proceedings. Often, online services are not equipped to assist with objections. The cost for dealing with objections will differ between Law Firms and Attorney Firms and is generally based on usual hourly rates. Lawyer rates may range up to AU$600 or more per hour and Attorney rates average at around AU$450 per hour.