If everything goes right, registering a trade mark can be a cheap and straight-forward process. On other occasions, however, this may not be the case.
If everything goes right, registering a trade mark can be a cheap and straight-forward process. On other occasions, however, registering a trade mark may lead to a series of litigation, which would see your expenses balloon exponentially. Even when a trade mark has been registered, third parties may still commence proceedings to revoke or remove that trade mark. Even after registration of a trade mark, the trade mark owner can be taken to court by any third party, believing the registered mark is allegedly identical or similar to their registered mark and is allegedly causing confusion in the market place.
The good news is, businesses now have the option of insuring themselves against such risks, after the Australian Trade Mark Office (IP Australia) has introduced IP Insurance (trade mark defence insurance and trade mark opposition insurance) for the first time in history. The Australian Trade Mark office offer the insurance through a co-operating Australian insurance company. The option to select trade mark cover is even part of the registration process, where the applicant is asked to select the option or to opt out.
Once accepted, the particulars of a trade mark application are published in the online Trade Marks Journal. From this point onward, third parties have two months to file a Notice of Opposition on the basis that the trade mark does not comply with the relevant provisions.
Oppositions may allege that the trade mark is descriptive, not distinctive, or is likely to deceive or cause confusion. Unfortunately, your trade mark can be original, unique and highly distinctive, but other traders always have this right to oppose your mark’s registration. The ensuing litigation may end up unexpectedly costing registrants many times the initial registration fee in legal costs.
Even when a trade mark has been registered, a third party may still bring an action against the trade mark owner. They may allege that the trade mark should be removed from the register for non-use. Alternatively, they may argue that the trade mark should be revoked since it should not have been registered in the first place.For small business owners, the trade mark defence insurance can guard them against the risk of incurring thousands of dollars in legal fees, if a third party chooses to oppose their trade mark applications or bring an action aginst their registered trade marks.