Trade Mark Attorneys
Experienced Attorneys who are here to protect your intellectual property.
Registration is a defence to trade mark infringement. This means you will avoid a letter of demand requiring you to stop using your name. You may become involved in costly litigation and have to pay an account of profits or damages to the trade mark owner.
As soon as an application is filed it is available for public searching in the trademark office records so that other traders who may be considering using a "deceptively similar" trade mark can identify and avoid conflict with your rights.
Rights can be obtained that are directed to “intention” in terms of your business plan even though you may not ultimately use the mark for all goods and services in your plan.
After a trade mark application is filed “the date of registration” is the filing date so the rights are retrospective to the filing date. Even maintaining an application in the search records can be enough to deter others from using your brand. This also means you can take defensive measures to cover a wide range of goods and services trade mark for at the time of filing. As long as you document in your business plan where you think the business might go in the right circumstances you can secure a much wider cover than you would otherwise be entitled to at common law.
A registered trade mark is separate from the goodwill in the business whereas an unregistered trade mark must be locked in with the goodwill and must be sold as part of the business. A registered trademark can be separated and held in another entity thereby protecting the brand from the ordinary risks of carrying on business and it can be sold or licensed separately from the business. This has the advantage that upon selling a business the former owner can maintain a royalty stream or the brand can be extended to other traders for certain uses.
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A trade mark registration is for the whole of Australia even though you may not be trading in a particular area at the present time. An unregistered trade mark only gives you geographical rights where you have and hold a particular reputation and can prove it.
Common law rights in an unregistered trademark require an existing reputation where the offence occurs and a deliberate misrepresentation to be enforceable. At common law another trader can use a deceptively similar brand but as long as they do not make a deliberate misrepresentation they can continue. There is no requirement for reputation or a deliberate misrepresentation for trademark infringement. It is simply an objective comparison with the certificate of registration.
Exclusivity in a brand equals greater value as a matter of principle. Dilution is said to be the “bane of the brand owner”. Dilution is where similar brands are in the market place and once there are two coexisting, the next trader points to that coexistence to justify a third and so on. A trade mark registration in many classes serves to prevent dilution and over time increase value due to exclusivity.
Trade Mark registration provides an exception under Section 51 of the Unfair Competition provisions of Part IV of the COMPETITION AND CONSUMER ACT 2010.
Trademark Search Procedures
A non exhaustive list if the services we provide is as follows:
- assist in devising a brand strategy and policy from the beginning to build brand value and avoid dilution;
- availability searches - local and global branding;
- interpretation conflicting marks; of "deceptive similarity" and "closely related goods/services" and registrability advice;
- clearance to use and freedom to operate advice;
- ownership advice in relation to organisation structure;
- preparation of and prosecution of applications for registration;
- user agreements;
- trade mark oppositions and litigation;
- negotiation of and settling co-existence agreements;
- watching briefs - after we get a registration keep a watch for others who may be trying to register something similar and file an opposition.
Trade Mark Search
We need to do a search and evaluation to advise you whether you have an infringement risk, whether your trade mark is one that can become valuable and whether it can be registered. We will also be able to give you an estimate of costs for registrations based on the results of our search and the available options.
Only once we have completed our investigations may we be able to provide you with Clearance to Use/ Freedom to Operate.
The following options are available noting the Search Limitations set out below and a report will be completed within 5 days of your payment.
- Australia - search, interpretation and evaluation $330 per mark including GST
- “International” (see countries under Search Limitations) - search, interpretation and evaluation $1100 per mark including GST
- Single country other than Australia - please advise the country for costs
Our search is conducted using the public search records and the computer based records of the “Trade Marks Office” of the country concerned and is subject to the accuracy of those records. As a consequence, the search does not cover trade marks used in the marketplace without the benefit of registration or current in company, business name and telephone listings. If you are aware of any similar trade marks being used, you should draw these to our attention for consideration.
The Trade Marks Office computer databases are updated regularly, but at present, there are delays between lodgement and trade mark details entering the search records.
The search does not cover trade mark applications yet to be filed in the country searched but may still be filed under International Convention. An application filed in a "Convention Country" up to six months ago could be filed in another convention country claiming priority from the earlier application and this application would not appear in the current search records.
Our “International Search” can not cover all countries and at present covers Australia, NZ, USA, European Community Trade Marks, WIPO International trade marks. We also search OHIM TMVIEW which covers a wide range of countries but coverage is variable. If you require any specific country please let us know as some countries have to be searched by local agents and this will incur extra charges.
China is a special case with special requirements so please advise if you intend to export from China or sell product in China, in which case we will need the Chinese transliteration of the mark. There may be more than one and we may have to consider how the mark will be spoken in China and possible meanings it may acquire by sound alike expressions.
We Are Attorneys
We are licensed trademark attorneys that are qualified to advise on trademark and patent law matters.
Over 30 Years Experience
Our Primary Attorney has been a registered patent and trade mark attorney since 1991 giving him a wealth of knowledge.
Demystify The Process
Our attorneys break down each step and foreshadow the entire process which ensures that you will not see any surprises.
Your business is unique and is why our approach to your trademark or patent registration needs to be personalised.
All Inclusive Pricing
We provide clear upfront pricing and eliminate any hidden fees you are likely to see with online search services.
Demystify The Process
We have a high success rate which is attributed to trust, communication and our attention to detail with our customers.