Trademark Lawyer Melbourne
Trade Mark registration is easy to get wrong. An experienced Trademark Attorney will help you get it right the first time and avoid costly problems with your Trade Mark Application.
We help secure Trademarks which are strong, enforceable and add value to your business, and provide ongoing service to ensure you can fully engage your Trademark and reap the benefits now and in the future. We work with you to identify opportunities as they arise, extracting the full value and potential of your Trade Marks rather than letting them go to waste.
We also offer several tailored Fixed Fee Trade Mark Protection Packages which are designed to match your unique priorities and requirements. Book a consultation to discuss your needs with a Trademark Lawyer today.
A qualified Trademark Lawyer or Trademark Attorney can assist in:
Challenging third party Trade Mark registrations;
Preparing documentation to assign or transfer Trade Mark rights.
Why Register Your Trade Mark With Y Intellectual Property?
If you’re looking to register a Trademark and protect your brand, Y Intellectual Property can help you register it correctly and avoid issues in the future. We offer fixed prices for Trademark Registration, allowing you to get the services you need without worrying about hidden fees or additional costs.
Our qualified Trademark Attorney can manage the entire process of Trademark registration for you, as well as helping you protect your Trademark after registration. As your Trademark lawyer, we work to understand your circumstances and goals, protecting your interests and identifying opportunities for further Trademark protection.
Benefits of Trade Mark Registration
Trade Mark registration is an essential but often overlooked business asset. It is an easy thing to push to the side and often comes to the forefront when a business is either challenged by a competitor or wishes to take action to prevent misuse of a brand by a third party.
Without having Trade Mark registration already in place, it can often be too late or costly to rectify at that stage to take appropriate action or mount a defence against such claims. Therefore, the best time to seek protection is before or closely after the launch of a new brand.
Once registered, a Trade Mark will:
Benefits of engaging a qualified Trademark Lawyer or Trademark Attorney
Some Trade Mark filing services are content to file your application with minimum input or understanding of your business and promptly forget about you. We are not that type of service.
We are constantly on the lookout for opportunities to enable your Trade Mark to work for you throughout the application process and past registration. Some benefits of engaging us to handle your application for you are:
Ensuring you are protecting the right mark:
Filing the wrong mark can either cause problems with obtaining registration or leave you with a mark which is ultimately unenforceable to prevent infringements.
Ensuring you have the right specification:
Often your goods or services may fall under multiple and often overlapping categories and it may be difficult to determine which accurately reflects your actual business activities or which classes are needed to ensure your mark is fully enforceable against potential infringements.
Ensuring deadlines are not missed:
Deadlines are strictly enforced by IP Australia and if they need to be extended, there are multiple (and sometimes creative) ways to do so in advance, some of which may be more cost-effective than applying for a simple extension.
Speeding up examination:
The current time frame for examination of a Trade Mark application is around 13 weeks from filing. There are ways to obtain an earlier indication of registrability or to expedite the examination process if there is a need to know the outcome of examination earlier. We can assist with that process if needed.
Having an experienced and recognised Trademark Lawyer on record:
Having a specialised IP practitioner, Trade Mark Lawyer or Trade Marks Attorney listed as your address for service has several benefits. Firstly, it means that all communications will go directly through us. That means you will have the head start of hearing about any issues from us first with our recommendations to overcome them.
It also acts as a deterrent to other traders considering removal or cancellation of your mark. Competitors and other law firms tread much more cautiously and will take you more seriously if they know that they need to deal through your Trade Mark Lawyer rather than with you directly. A Trade Mark Application or Registration without a Trade Mark Lawyer on record presents itself as a soft target.
Andrew Petale is a qualified and highly experienced Trademark Lawyer in Melbourne and can assist with any of the following areas regarding Trade Marks.
Pre-Filing Trade Mark Clearance Searches
It is a common misconception that having a business or trading name accepted for registration by ASIC protects the use of the name. Unfortunately, that is not the case and many businesses have found themselves in the position of being hit with a letter of demand from a registered (or unregistered) Trademark owner months or even years into trading and being faced with the prospect of either rebranding and losing their established goodwill or facing costly legal action.
A Trademark search by a qualified Trademark lawyer is designed to mitigate against that risk and ensure that you have chosen a brand which is both capable of protection and which does not potentially infringe upon the rights of other traders. Our Trademark searches cover several databases in addition to the Australian Trademarks Registry to identify potential problems based not only on existing registered or pending Trademark applications but also based on common law reputational rights which other traders may be entitled to assert without registration.
These Trademark searches are best conducted before you decide to launch your brand so that changes can be made to your mark if needed before we file so that time and money is not wasted pursuing an application which will raise unnecessary problems later on. Our Trademark searches are to the point, easy to comprehend and will also include proactive and innovative recommendations to address any issues identified where available. If there is an angle available to get around an identified mark, we take great delight in identifying those options for you.
We can also co-ordinate international Trademark searches where you have a global market in mind for your product or service.
Trade Mark Applications:
We can attend to the preparation, lodgement and processing of your Trade Mark Application on your behalf to maximise the prospects of obtaining an enforceable registered Trade Mark. Our service includes:
Choice of Mark
We can determine the best format in which to file your application to ensure registrability as well as the enforceability of your mark. Getting this wrong can mean that your mark may not be registrable, may be vulnerable to removal or cancellation, or may not be capable of enforcement to the extent that it should be when the time comes to assert your rights against other traders.
Choice of Goods or Services
Once filed, it is very difficult to add further goods and services to your application and often it is necessary to file a fresh application to cover those additional goods and services. Choosing the right specification can avoid objections during examination, reduce the likelihood of opposition and maximise the enforceability of your mark. We will also advise you whether a pick list or more customised specification (which attracts a slightly higher filing fee) might be appropriate for your application depending on the nature of your products or business.
Speeding Up Examination
We will advise on methods available to speed up examination of your mark, including utilising the HeadStart Request system and applying for expedited examination of your mark. Those options can be useful if you would like an earlier determination to identify potential objections which may be raised during the formal examination.
Dealing with Objections
We will advise on strategies to deal with any objections to registration which might come up, either during the Head Start examination or following formal examination of your application. We are experienced in formulating strategies to deal with objections which may be raised in an Trade Mark Examiner’s adverse report, whether that be in the form of preparing legal submissions where an incorrect decision has been made, preparation of evidence demonstrating use of your mark, or challenging registration of cited Trade Mark registrations blocking acceptance of your Trade Mark.
Deadlines and Time Extensions
We will actively monitor deadlines and attend to necessary extensions for your application to ensure that registration is finalized. If there are issues raised during examination, ordinarily you will have 15 months by which to overcome those objections, however, there are several strategies we can employ to extend that deadline significantly to ensure that your application remains on foot while those objections are being raised.
Upfront Fixed Fee Pricing
Our Trade Mark Lawyer services are fully fixed fee and disclosed upfront. We do not charge additional fees for standard reporting of examination or registration, or for keeping you updated on the progress of your application once it is filed. If further actions are required to prosecute your mark, we will agree with you a further fixed fee to address those matters as and when they arise.
International Trade Mark Applications
If you intend to market your goods and services overseas, it is important to also protect your Trade Mark in those jurisdictions where your goods and services will be offered or sold. It is possible to apply for Trade Mark protection in most jurisdictions through a single application through the Madrid Protocol system. Those countries which are not covered by the Madrid Protocol can be applied for directly. We can prepare and prosecute your international applications and where specific domestic issues arise, we work with a large network of overseas IP firms we can work within every jurisdiction to address those needs.
Each jurisdiction presents its own unique peculiarities and challenges and there are vast differences in the manner that applications are examined, objections raised and time frames are implemented from country to country. A Trade Mark lawyer can advise on:
Any unique classification requirements in particular countries. For instance, several countries have specific and unique rules regulating how goods or services must be described and prohibitions on the type of content that can be contained in various Trade Marks. That means that your specification of goods and services may need to differ from country to country to avoid dealing with objections later on.
The examination process and time frames from country to country. By way of example, some jurisdictions may allow applications to proceed to acceptance even if objections are raised and leave it to the rights holders to oppose registration rather than raise absolute grounds of refusal.
Each jurisdiction also has its own procedure for dealing with Trade Mark oppositions. If your application is opposed overseas, we would work with one of our network of overseas associates to manage your Trade Mark opposition.
Trade Mark Oppositions:
Trade Mark applications can be opposed by third parties which can significantly protract the registration process. Often those oppositions may have little legal merit but be filed for purely strategic reasons to achieve some other commercial objective. We have a wealth of experience dealing with those matters and can formulate effective strategies to maximize your prospects of defending opposition proceedings as well as aggressive strategies to force an earlier resolution.
The normal steps involved in a Trademark opposition which a Trademark lawyer can assist with are:
Filing/receipt of Notice of Intention to Oppose:
It is important that this is filed within 2 months of the acceptance of the Trade Mark application being advertised in the Official Journal of Trade Marks. Having a monitoring service, such as Y Watch, in place will ensure that those deadlines are not missed.
Filing/receipt of Statement of Grounds and Particulars:
This is a summary document outlining the grounds of opposition which the Opponent intends to argue and must be filed within 1 month of the Notice of Intention to Oppose. Failure to meet that deadline may result in the opposition being abandoned.
Filing/receipt of Notice of Intention to Defend:
This document must be filed by the Trade Mark owner if they wish to defend the opposition, within 1 month of receipt of the Statement of Grounds and Particulars. Failure to do so may mean that the Trade Mark is automatically removed from the Register and the opposition will succeed by default.
Filing of Evidence in Support:
This will be filed by the Opponent within 3 months of receipt of the Notice of Intention to Defend. It usually takes the form of a Declaration (or Declarations) outlining in detail the material which the Opponent wishes to be considered to support its grounds. This material needs careful consideration as it forms the backbone of the opposition and the first opportunity for the case to be truly tested.
Filing of Evidence in Answer:
This will be filed by the Trade Mark Applicant within 3 months of receipt of the Evidence in Support. This material must address the Evidence in Support and provide evidence to contradict or discredit that material where possible.
Filing of Evidence in Reply:
This is a further opportunity for the Opponent to address any new material raised by the Evidence in Answer and must be filed within 2 months of the receipt of the Evidence in Answer. It is important that this evidence does not go beyond responding to the Evidence in Answer or introduce new material otherwise it may be objected to at the hearing.
Elect to go to Hearing:
Once the evidence stages have concluded, it is up to either the Opponent or the Applicant to request a Hearing of the Opposition. If no hearing is requested, there will be no decision made until either party has asked for a determination and paid the appropriate fee (depending on whether the parties do or do not wish to appear in person or by telephone/video link.
Each party has the choice to:
a. not attend the hearing;
b. file written submissions (legal arguments) only;
c. present their case in person or through their lawyers by video or telephone link.
Currently, in person hearings are not being held in Canberra due to the COVID-19 epidemic, however this may change in the future.
A written decision will usually be issued within a few months of the hearing.
If either party is dissatisfied with the decision made, it is possible to file an appeal with the Federal Court or Federal Circuit Court of Australia. In those instances, the matter will be decided afresh and may incorporate new evidence not previously considered.
Licensing and Assignments:
A Trademark lawyer can assist with drafting or review of any IP related agreements dealing with the right to use or transfer of ownership of your Trade Marks or other IP rights. These may include:
Trade Mark Monitoring
Our Trade Mark monitoring service is a tool for Trade Mark clients who wish to proactively monitor and stamp out competitive Trade Marks at the earliest opportunity before they become a significant infringement concern or have the opportunity to dilute your Trade Mark rights. It’s a great way to make your Trade Mark work for your business and obtain value from your registration, rather than letting your rights languish and gather dust. Most of the world’s leading brands engage Trademark lawyers to actively monitor Trade Marks Registers to identify infringement and opposition opportunities.