A Trade Mark is a sign (such as a name or logo) which is associated with the products or services which you provide or offer. A Trade Mark could even be a shape, colour, sound or a smell, provided it is capable of distinguishing your goods or services from those of other traders.
Trade Mark Registration is a crucial part of protecting your brand, products and services, as it represents your brand and embodies your goodwill. Ideally, a Trade Mark should instantly communicate to the consumer what to expect from your product or your service.
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:
Provide you with a powerful enforceable statutory monopoly to prevent other traders from using a substantially identical or deceptively similar mark for similar or closely related goods and services. Without a registered Trade Mark, your only fallback is to seek to rely upon establishing reputational rights in that mark which can be difficult if your product or service has not had significant promotional exposure or established broad market recognition;
Prevent other traders from being able to register similar Trade Marks;
Ensure that unscrupulous traders do not attempt to appropriate your brand or something similar. Once registered by a third party, it can be a difficult and costly process to have that Trade Mark removed, even if you have prior use.
Convert your brand into a tangible and valuable asset which embodies your goodwill, which can later be licensed, transferred or sold as an asset of the business.
In Australia, it is easy to apply for registration of a Trade Mark but there are many ways to get it wrong. Incorrectly registering your Trade Mark may leave you with an unregisterable or unenforceable Trade Mark, or a Trade Mark which is vulnerable to revocation or cancellation if challenged.
Trade Mark registration is easy to get wrong. An experienced Trade Marks Attorney will help you get it right the first time and avoid costly problems with your Trade Mark Application.
We help secure Trade Marks which are strong, enforceable and add value to your business, and provide ongoing service to ensure you can fully engage your Trade Mark 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 Trade Mark Lawyer today.
Why Choose Us:
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.
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.
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.
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.
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.
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 Trade Mark Lawyer based in Melbourne and can assist with any of the following areas regarding Trade Marks.
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.
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.
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.
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) Trade Mark 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 Trade Mark search by a qualified Trade Mark 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 Trade Mark searches cover several databases in addition to the Australian Trade Marks Registry to identify potential problems based not only on existing registered or pending Trade Mark applications but also based on common law reputational rights which other traders may be entitled to assert without registration.
These Trade Mark 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 Trade Mark 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 Trade Mark searches where you have a global market in mind for your product or service.
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.
There are often opportunities to seek the removal or cancellation of third-party Trade Mark registrations, either if those registrations have fallen into disuse or should not have been registered in the first place. We can implement effective strategies to pursue those actions if those registrations are blocking your registration or infringement is being asserted against you.
We can also assist you to protect and maintain your existing Trade Mark rights if a trader has filed a removal application or is seeking to cancel registration of your Trade Mark. Often those applications are made for strategic reasons and there may be scope to negotiate with the removal applicant to preserve or maintain your Trade Mark rights.
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.Contact Us
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.Contact Us
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.Contact Us
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.Contact Us
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.Contact Us
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.Contact Us
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:
not attend the hearing;
file written submissions (legal arguments) only;
present their case in person or through their lawyers by video or telephone link.
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.Contact Us
A Trade Mark 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:
Agreements for sale or purchase of your intellectual property, including Trade Marks, patents, Designs and Copyright.
Agreements between related entities to transfer or license the use of intellectual property. This may be required to ensure that the correct entity owns and is regulating the use of your intellectual property to ensure that your assets are protected and your rights are not vulnerable to challenge.
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 Trade Mark lawyers to actively monitor Trade Marks Registers to identify infringement and opposition opportunities.
To discuss your needs with a qualified intellectual property lawyer, book a meeting today. Our experienced IP lawyer in Melbourne can quickly get to the heart of your issue. We can provide you with the information, guidance and options you need to make an informed decision before you choose to engage us.
5 Everage Street, Moonee Ponds
Melbourne, VIC 3039