Hayley Tarr, Principal of Tarr Law, shares her insight on the recent trade marks applications not being filed by an IP solicitor, or patent and trade marks attorney.
33 trade mark applications have been filed with IP Australia since yesterday morning. All of these list the applicant itself as the address for service. That is, none of them was filed by an IP solicitor, or patent and trade marks attorney. This is an incredible statistic, demonstrating that applicants are – en masse – doing trade mark work themselves. So, is the trade marks attorney obsolete?
Looking at the 33 self-filed applications, it is clear that:
- Eleven of the applications – exactly a third of the total 33 applications – will receive an objection as none of EXCO SOLUTIONS, NDBOX, RUHIL, House Of JT, Small Engine Spares, MOTHER COW DAIRY TRUST and Cedar Wrap are valid legal entities, and so cannot own a mark.
- One of the applications is filed in the name of The Trustee for The Kelly Family Trust. The Trustee has not been named however, and so could be anyone.
- One of the applications, for Quokka, in the name of Australian Organic Distillery Pty Ltd appears to have been filed in response to a recent application for Fat Quokka Cider in the name of Lloyd Jenkins, and a bit of a stoush over the rights to the Quokka name for alcoholic beverages (except beer) is brewing.
- Two of the applications for MOTHERCOW include the ® symbol within the mark of the application itself. Refusal may apply where the trade mark contains a sign that is specified in the Regulations as not to be used as a trade mark. This includes: the words “Patent”, “Patented”, “By Royal Letters Patent”, “Protected International Trade Mark”, “Registered”, “Registered Design”, “Copyright” “Plant Breeder’s Rights”, “EL rights”, or words or symbols to the same effect (including the symbols “©” and “®”).
- One of the applicants has filed an application in classes 3 and 8, when she is employed by Greenleaf Cosmetics Australia, providing publicly available evidence of what could possibly amount to a breach of a restraint of trade/non-compete clause, depending on what clauses are contained within the employee agreements for staff of Greenleaf Cosmetics Australia.
- One of the applications for HIGH TIDE for spirits (beverages) is filed in the face of an existing registration for HIGHTIDE VINEYARDS for wines, despite the fact that this earlier mark will almost certainly be cited as the trade marks examiner’s manual is clear that “a general claim for spirits includes distilled grape spirits such as grappa and brandy” and is therefore too similar to a general claim for wine.
When we see these issues on a cursory glance of the register, it is evident that the job of a trade marks attorney is not obsolete. All of these – oftentimes minor – errors will consume tax payer money in IP Australia issuing objections, and then processing the responses. This then means either an increase in filing fees, a backlog in processing time, or both, for other applicants. While there are merits in making the system user friendly for all, there are downsides too.
The take aways are:
1. If you can afford it, hire an attorney to assist you. Their role is not obsolete.
AND
2. Trade marks need to be filed in the name of a valid legal entity. This is either your full name or the name of a company (i.e. with the letters Ltd at the end).
