IP Australia’s 7th Annual Report – A Case Study Caution
In celebration of World Intellectual Property Day, IP Australia recently released the seventh edition of the Australian Intellectual Property (IP) Report. In addition to detailing recent trends and changes in IP activity in Australia, the IP Report included a number of interesting case studies.
One case study, about Alison Abernethy’s application to register DECLUTR, demonstrates the help provided to Alison by IP Australia:
“… I had initially just put in an application to trade mark the business name, but a helpful examiner from IP Australia explained that it was too close to a real word that could be used in everyday occurrence. So we talked about including the tagline and logo, packaging this up for protection…”
By way of reminder, IP Australia is precluded from providing applicants with information on:
- Whether the trade mark is the most apt for a business;
- Whether an applicant will be infringing another trader’s common law rights;
- How a business can make the best strategic use of a trade mark;
- Whether a trade mark provides the optimum coverage for a business, in terms of the goods and/or services specified; or
- Strategies for protecting the trade mark and enforcing protection.
Did Alison receive the best possible advice, in view of the above boundaries?
The Examiner could not (or should not) have provided Alison with advice around a multitude of important legal considerations, such as correct ownership of the trade mark, or the likelihood of being able to enforce the combined word + logo + tagline trade mark against third parties. The provision of such advice by IP Australia would raise questions around privilege and, arguably, the principle of competitive neutrality.
Hopefully, Alison’s trade mark will not need to be tested in respect of the types of legal considerations mentioned above. But these issues should not be ignored, and applicants should be aware that any advice provided to them by IP Australia – including by way of assisted online filing – does not consider these and other important matters.
Applicants should not be misled into believing the type of assistance Alison was provided is complete and proper legal advice. Despite the apparent “ease” with which applicants can file their own trade marks with IP Australia and other automated filing services, it remains important to seek appropriate advice from a qualified Trade Marks Attorney. Failure to do so might not initially prevent an applicant from obtaining a trade mark, but the resulting registration may not be appropriate or indeed, enforceable.