Trademark registration is easy to get wrong. An experienced trademark lawyer will help get it right. We create trademarks which are strong, enforceable and add value to your business, but that is only the first step. We’ll help you identify opportunities to extract the full value and potential of your trademarks rather than let them languish. We also offer a number of tailored fixed fee trademark protection packages which are designed to match your unique priorities and requirements.
Some of the areas a qualified trademark lawyer can assist in include:
- Pre-filing clearance searches;
- Filing and maintaining your trademarks and trademark portfolios, including overseas;
- Putting together enforcement and anti-dilution strategies against competitors;
- Implementing strategies to overcome adverse examination reports;
- Prosecuting and defending trademark opposition proceedings;
- Challenging third party trademark registrations;
- Preparing documentation to assign or transfer trademark rights.
What is a Trademark?
A trademark is the name or logo which is associated with the products or services which you provide. A trademark 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. Most importantly, a trademark represents your brand and embodies your goodwill. It should instantly communicate to the consumer what to expect from your product or your service.
Benefits of Trademark Registration
Trademark 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 by 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 trademark, 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 trademarks;
- 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 trademark but there are many ways to get it wrong. Getting it wrong may mean that you find yourself with an unregisterable or unenforceable trademark, or a trademark which is vulnerable to revocation or cancellation if challenged.
Benefits of engaging a qualified Trademark Lawyer or Trade Marks Attorney
Some trade mark 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 trademark 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: That means determining whether to apply for a word mark or stylised logo mark, as a series of marks, whether to claim colour as a feature of the mark, or whether to break up your mark into its elements to ensure that your protection is expansive as possible.
- 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. There are also a number of options for drafting your specification which may attract a different filing fee and we can determine which is best for you.
- 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 trademark 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 or trademark lawyer listed as your address for service has a number of 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 trademark lawyer rather than with you directly. A trade mark application or registration without a trademark lawyer on record presents itself as a soft target.
Andrew Petale is a qualified and highly experienced Trade Marks Attorney and Trademark Lawyer and can assist with any of the following areas regarding trademarks:
Pre-filing trademark clearance searches: It is a common misconception that having a business or trading name accepted for registration by ASIC provides protection over 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 trade mark searches cover a number of 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 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.
Trademark Applications: We can attend to the preparation, lodgement and processing of your application on your behalf to maximise the prospects of obtaining an enforceable registered trademark. Our service includes:
- determining the best format in which to file your application to ensure registrability as well as 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 HeadStart 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 trademark registrations blocking acceptance of your trademark.
- monitoring deadlines and attending to necessary extensions and ensuring that registration is finalized. If there issues are raised during examination, ordinarily you will have 15 months by which to overcome those objections, however, there are a number of strategies we can employ to extend that deadline significantly to ensure that your application remains on foot while those objections are being raised.
Our Trademark 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 Trademark Applications: If you intend to market your goods and services overseas, it is important to also protect your trademark 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 with in 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 trademark 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 their 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.
Trademark 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.
Conversely, we can also assist with bringing opposition proceedings against other third parties to prevent registration of their marks where required. Our services include preparing any necessary notices within the required time frames, monitoring deadlines (which are strictly enforced), review and preparation of evidence, negotiations throughout the process to obtain early resolution, preparing written legal submissions on your behalf and attending the hearing if required.
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 be filed within 2 months of the acceptance of the trademark 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 trademark 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: 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 trademark 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.
- Appeal: 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.
Removal and Cancellation Actions: 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 trademark rights if a trader has filed a removal application or is seeking to cancel registration of your trademark. 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.
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 trademarks or other IP rights. These may include:
- Agreements for sale or purchase of your intellectual property, including trademarks, 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.
Y Watch– Trademark Monitoring: Our trade mark monitoring service is a tool for trademark clients who wish to proactively monitor and stamp out competitive trademarks at the earliest opportunity, before they become a significant infringement concern or have the opportunity to dilute your trademark 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.
The key features of our service are:
- About Y Watch: Our trade mark monitoring service is a subscription service which permits us to regularly monitor trademark, company, business and phone directory databases to identify potential new brands which may infringe your registered trademark rights.
- Customisable search scope: We will work with you to tailor the scope of the searches we will undertake depending on the types of infringers you are looking to target and the core features of your trademark which are exclusive to your brand identity.
- Annual or month to month subscriptions: We offer package deals for annual subscriptions or month by month if you prefer. Either can be cancelled at any time.
- Simple Reports: You will receive a monthly report which details what new trademarks have been identified, the owner of that trade mark, the types of goods or services for which it is used and any recommended actions to halt or prevent further use of those marks from commencing or continuing.
- Ongoing Client Support: If any further actions are needed, we will discuss those with you and provide you a further fixed fee for implementing those recommendations.