All excellent advice. It's really important to cover the right Classes, and to describe the coverage in your claim accurately – wide enough to capture what you need, but not so wide as to throw up issues of Non-Use (which is a Bad Thing). And you need to make sure the Trademark is held by the right entity in your corporate structure – ie, not your main trading entity, or in your own name. You wouldn't have your trading company own your house would you? Well, your trademark could be worth more than your house one day.

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alison Reply:
April 29th, 2010 at 9:06 am

Hi Karl. What do you mean by making sure that the trademark is held by the right company? Sorry for the ignorance on this but I am unsure what is mean by 'right entity' and 'not trading entity'? It sounds very important. Thank you in advance.

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Karl Scott, LUCID LAW Pty Ltd Reply:
April 29th, 2010 at 12:42 pm

If, as part of your business operations, you will be utilising and generating significant intellectual property, one of the fundamental ways to protect that asset is in an appropriate corporate structure. The structure we often recommend involves intellectual property being held by an IP Holding Company, that does not trade, with a licence granted to a subsidiary Trading Entity (or Entities), which conduct the business –and hence incur risk and liability. This keeps the IP and the Risk in separate rooms, so to speak.

A Founder or Stakeholder's personal ownership in the corporate group would best be held directly in the IP Holding Entity (it doesn't necessarily need to be a Company although often it is), and often a discretionary trust is likely to be an appropriate vehicle in which to hold those interests.

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All excellent advice. It's really important to cover the right Classes, and to describe the coverage in your claim accurately – wide enough to capture what you need, but not so wide as to throw up issues of Non-Use (which is a Bad Thing). And you need to make sure the Trademark is held by the right entity in your corporate structure – ie, not your main trading entity, or in your own name. You wouldn't have your trading company own your house would you? Well, your trademark could be worth more than your house one day.

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Good article. I have found the Headstart program offered by IPAustralia a convenient tool for investigating whether or not you will get registration and, more importantly, have the freedom to operate. Most examiners are a lot more experienced than the average filer and it only costs $90 per class.
Just a comment about the Madrid Platform. Not all countries are members. Also, in many jurisdictions, applications are prosecuted outside of the Madrid system. If you're planning to expand business into the US, for example, a clearance search should be carried out there, bearing in mind that there are both state and federal trade marks. Such a search is relatively cheap. However an investigation into freedom to operate in Europe can be prohibitively expensive. One way to address this is to ensure that your brand is highly distinctive. This will avoid the possibility of a conflict, not to mention all the other advantages associated with highly distinctive marks. In short, the more distinctive your mark, the more value it will have long term.
As for class selection, remember that you can always narrow down the scope in response to an allegation of non-use or conflict. However, expanding the class will necessitate the cost of filing a further application.

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Hi Karl. What do you mean by making sure that the trademark is held by the right company? Sorry for the ignorance on this but I am unsure what is mean by 'right entity' and 'not trading entity'? It sounds very important. Thank you in advance.

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Do you have any comments about trademarks and facebook? I have a trademark and there are a number of fb pages in my name. Seems like the freedom to create pages, also renders legal protection impotent. Your thoughts and anyone elses'?

Thanks for the article Tony!

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