Why A Lawyer Is Necessary For Registering A Trademark In Australia

You might be unsure of whether you should work with a trademark attorney, a lawyer, or do it yourself when it comes time to register a trademark for your company. The registration process can be challenging, despite how easy it may seem at first and how alluring it may be to save some money. Any errors or adjustments you might need to make after submitting your application could end up costing you a lot of time and money. When you apply for a trademark by yourself, you run the danger of making straightforward errors that a trademark expert would be able to identify and rectify, which would lead to the rejection of your application.


To ensure the success of your application with the least amount of fuss, it is worthwhile to enlist the help of a specialist who can help defend your company’s and brand’s interests.



When Must You Employ a Trademark Lawyer?


When you have an idea for the name of your business, you should consult a trademark attorney.


This is due to the fact that a trademark lawyer should look up your name and give you an opinion on whether it is safe to use. Before ordering signage and/or product packaging, far too many business owners fall in love with a name and neglect to thoroughly research and clear the name. If you decide on a name before even engaging a trademark lawyer, you are taking away many of the tools that the lawyer can use to help you.


Common Issues People Run Into When Trying to Register Their Own Trademark


Even while the procedures for Australian trademark registration may appear simple, but they might be difficult to understand. Therefore, trademark owners may incur expensive errors that may have been prevented if the application had been prepared or evaluated by a lawyer. Typical errors include:


  • choosing an incorrect filing basis. Use of the mark in commerce and intent to use the mark in commerce are the two filing bases. Due to their lack of understanding of the differences, many people choose the incorrect premise. When you try to enforce a registered trademark due to this error, it may provide little to no protection.


  • supplying an incorrect trademark sample. You must include a sample with your application that demonstrates how you really utilise your mark in commerce. If you submit the incorrect kind of specimen, your mark may not be protected.


  • Choose the incorrect trademark class or incorrectly describe your products or services. To protect your trademark, you must select a class of products or services and specify which products or services you wish to be protected. The classification method can be challenging to understand, and making a mistake could result in your application being rejected.


In the end, it might be more expensive to employ a lawyer to deal with an application that was not properly prepared than it would have been to pay a lawyer to handle it correctly.


Benefits Of trademarking lawyers


Attorneys for trademarks don’t just submit your application on your behalf. The appropriate attorney can guide you through every step of the trademark registration procedure, from picking a name through final approval and thereafter monitoring for trademark infringement. They can also assist you in responding to any office actions if something goes wrong. If these aren’t the trademark services being given, search elsewhere. All of this aid and the appropriate legal guidance help secure clearance on the first attempt.


In simple words,


  • They will educate you legally.


  • With trademarking lawyers, your chances of success increase by as much as 50%.


  • 80 percent of all applications need a response to an initial denial, hence the IP Australia advises hiring a trademarking lawyer.


  • You won’t overpay the IP Australia filing fees, which are non-refundable.


  • Time will be saved.


  • You should be managing your company, not studying trademark law.


Why Hire a Trademark Lawyer?


There are many who are wondering, “Why engage a trademark attorney at all if you can submit a trademark application on your own?”


In an effort to save money, it could be tempting to proceed with the filing on your own. However, working with a skilled trademark lawyer can be a fantastic advantage that ultimately ends up saving you both time and money.


Here are the top 3 reasons to hire a trademark lawyer.


  • Pre-Registration Trademark Clearance Search Assistance


A preliminary search for other marks that already exist that may be similar to the one you’re contemplating is crucial before you register a trademark. Otherwise, you run the risk of submitting an application for a mark that could be denied registration because it is too similar to another mark already in use.


A trademark lawyer can carry out a thorough clearance check in the IP Australia database for trademarks that might compete with yours.


By conducting these kinds of proactive searches, you can avoid future disagreements that could result in expensive litigation because of claims made by other businesses that your trademark is confusingly similar to theirs.


  • Application Method


A trademark lawyer may assist with the preparation of your trademark application after ensuring there are no comparable marks that have previously been registered. Before your trademark application may be approved by IP Australia, a number of complicated conditions must be satisfied.


An “office action” comprising queries, requests for clarifications, or a rejection of your proposed mark may occasionally be issued by IP Australia. To address any potential issues brought up by the examiner, an attorney can prepare a reply to an office action.


Attorneys who specialise in trademark law have experience with this application procedure and may assist you in making sure you follow all the necessary procedures to increase the likelihood that your name will be registered.


  • Post-Registration


After you file for a trademark, your brand’s journey does not end there. You are in charge of keeping an eye on how your trademark is being used in the marketplace.


It makes sense that most business owners are more focused on running their company than checking to see if others are using their trademark. To make sure that others are not weakening the power of the brand you’ve developed, this is still crucial.


Another task that a trademark lawyer can assist with is this one. An attorney who specialises in trademark law can keep an eye on new trademark filings, keep track of any unauthorised uses of your trademark by other parties, and give you advice on how to best enforce your trademark rights and stop any infringement by third parties.


Additionally, IP Australia mandates that you renew your trademark registration every ten years following the fifth anniversary of registration. In order to prevent your trademark registration from expiring, a trademark attorney can make sure that all the necessary paperwork is submitted precisely and on time.


Let a lawyer handle monitoring the usage of your trademark and staying on top of these recurring filings so that you aren’t bothered. You can then give your full attention to managing and growing your company.


If there is an infringement, they may be in charge of the legal action or suggest the best way to prevent it. A trademark attorney can readily keep an eye out for any unauthorised uses of the trademark or any confusingly similar trademarks. A trademark attorney makes sure you are informed of any possible infringement and, in the end, makes sure your brand and business are best protected.




Which elements of your brand require trademark protection and which don’t can be determined with the help of a trademarking lawyers. To avoid losing filing costs, make sure your trademark application is submitted accurately from the beginning. You should also react to any preliminary refusals issued by IP Australia. If you lack the necessary legal experience, it may be challenging to complete it successfully.



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