Trade Mark Lawyer
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.
A qualified Trade Mark lawyer 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 Trade Mark and protect your brand, Y Intellectual Property can help you register it correctly and avoid issues in the future. We offer fixed prices for Trade Mark Registration, allowing you to get the services you need without worrying about hidden fees or additional costs.
Our qualified Trade Marks Attorney can manage the entire process of Trade Mark registration for you, as well as helping you protect your Trade Mark after registration. As your Trade Mark lawyer, we work to understand your circumstances and goals, protecting your interests and identifying opportunities for further Trade Mark 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 Trade Mark Lawyer or Trade Mark Attorney
Some Trade Mark filing firms 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 Trade Mark 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 Trade Marks Lawyer and Attorney 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) 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.
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:
Determining 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.
Drafting your filing specification. 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.
Advising 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.
advising and dealing 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.
Monitoring deadlines and attending to necessary extensions and ensuring 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.
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:
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.
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 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/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.
If either party is dissatisfied with the decision made, it is possible to file an appeal with the Federal Court of Australia. In those instances, the matter will be decided afresh and may incorporate new evidence not previously considered.
Filing of Evidence in Answer:
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 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:
It is up to the parties (usually the Opponent) to request a Hearing of the Opposition. If no hearing is requested, the opposition will still be considered on the papers by a Hearing Officer at the Trade Marks Registry (IP Australia) and the parties can still file written legal submissions in support of their position which are best prepared by an experienced Trade Mark lawyer. Otherwise, an administrative hearing will be listed at the Trade Marks Registry offices in Canberra at which either party can attend in person, through their appointed legal representatives, by video link or simply by filing written legal submissions. A written decision will usually be issued within a few months of the hearing.
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.