Choosing a name for a new business is exciting. Finding out months later that the name is
difficult to register as a trade mark is not.
TM Headstart is a service offered by IP Australia that allows you to obtain an early indication
of how an examiner may view your proposed trade mark before you commit to a formal
application.
It can be particularly useful if you are developing a new business name, logo, product or
brand and want to test it before investing heavily in the launch.
HOW DOES TM HEADSTART WORK?
You submit your proposed trade mark and the goods and services for which you want
protection. An IP Australia examiner then assesses the application and aims to provide an
initial report within five business days.
You then have a further five business days to decide whether to make permitted changes
and proceed with the application by paying the Part 2 fee.
If the examiner identifies significant problems and you decide not to proceed, you can simply
allow the Headstart request to lapse. While you will not recover the initial Headstart fee, you
avoid paying the Part 2 fee for an application you may no longer wish to pursue.
THE BENEFITS
AN EARLY INDICATION
The biggest advantage is speed. Rather than waiting months for an examination report, you
can receive an early indication of potential issues within five business days.
This can be particularly valuable when you are considering several possible business names
or logos. Headstart can help you identify potential problems before you build a website, print
packaging, launch a marketing campaign or otherwise invest heavily in a brand.
AN OPPORTUNITY TO MAKE CHANGES
The Headstart process also gives you a short opportunity to respond to obvious problems
before formalising the application.
Depending on the issue, changes may include amending the goods or services, removing
goods or services, correcting certain details or changing the representation of the trade
mark.
For example, if a proposed word mark raises concerns about its distinctiveness, you may
decide to explore whether a distinctive logo or visual representation provides a better basis
for the application.
This is not guaranteed to overcome an objection, but Headstart gives you an opportunity to
consider the issue before proceeding.
Importantly, the process can also give you an opportunity to communicate with the examiner.
Most IP Australia examiners are friendly and helpful. While they cannot provide legal advice,
they will generally explain the reasons why they have raised concerns about an application.
This can be particularly useful if you have engaged a trade mark attorney or other IP
professional who understands the language and approach used by examiners and can help
you assess the legal and practical options available for your particular brand.
THE DRAWBACKS
YOU ARE LIMITED TO THE PICK LIST
TM Headstart requires you to select goods and services from IP Australia’s Pick List. While
the Pick List covers a very large range of goods and services, some businesses require
more specialised or customised descriptions.
A standard application may therefore be more appropriate where the scope of protection
needs to be carefully tailored.
THE WINDOW TO RESPOND IS SHORT
Five business days can pass quickly.
For example, if a section 41 objection is raised because the examiner considers the trade
mark insufficiently distinctive, and your proposed solution is to develop a new logo or visual
representation, you may have only a very short period to brief a designer, approve the
design and submit the amended representation.
For some start-ups and brand creators, that simply isn’t enough time.
IT IS NOT A CLEARANCE SEARCH
A favourable Headstart assessment does not mean that nobody else has rights in the brand.
It is an examination of the application by IP Australia, not a comprehensive commercial trade
mark clearance search.
It also does not guarantee that the trade mark will ultimately be registered.
IS HEADSTART RIGHT FOR YOU?
TM Headstart can be a useful early test drive for your trade mark. It is particularly valuable
when you are still deciding on a brand and want an early indication of potential registration
problems.
There are situations where a standard application may be the better option, particularly
where your goods and services require customised descriptions or you need more time to
respond to potential objections.
The important consideration is to assess your trade mark strategy before you build your
business around the brand.
