Trademarks

At Legum ILP our practice is built on the registration and protection of client brands and trademark portfolios. We have worked with some of the worlds leading brands in trademark strategy from simplified logos through to the protection of shapes, sounds and colour.

Have you really considered the value of your Trademark ?

It may not just be only a brand or logo, a Trademark can also extend to non traditional signs such as shapes, sensory and sound.

Our team of qualified Trademark attorneys uncover the true value of your Trademark that you may not otherwise have considered.

Why Register a Trademark?

Choosing a Trademark

Choosing a Good Trademark is a hard task and sometimes it may just be easy. However what aspects of the sign need to be considered for registration.

When registering a Trademark you may want to consider more than just a word, logo or tagline.

Your sign may also include sound and sensory aspects for the Trademark registration or a combination or all three.

Your Branding strategy is important and you will want to ensure that not only what your brand conveys to the mark also distinguishes your brand in the market.

At Legum ILP we can also assist with our brand development services, through creative strategy, clearance research and ensuring that your proposed trade mark can distinguished from others in the global market place.

Protect Your Brand Identity

Having a registered Trademark provides you the owner with certain exclusive benefits. The benefits you can derive from a registered trademark are the right to sell, licence or assign the trademark, pursue parties that infringe your trademark and most importantly list your trademarks amongst your assets when it comes to valuations.

If you dont have a registered trademark than your are limited in your protective actions and others may copy or infringe on your trademark. This leaves you with limited options such as taking common law court action under Section 18 of the Competition and Consumer Act 2010 (Cth).

Taking such action is extremely difficult and could prove burdensome. Under Section 18 you will need to prove that your brand has established a sufficient reputation that the infringing party has deceived consumers into buying a product which they think is yours.

Why Use a Trademark Attorney

You may have seen the websites offering cheap trademark registration services.

These websites may seem easy and cost effective however they do not take into full consideration if your proposed trademark can be registered, what class of goods it should be registered in and potentially if there could be any objections made during the examination process such as a oppositions by owners who have a similar registered trademark.

By using a Qualified Trademark Attorney at Legum ILP who is registered with the Trans Tasman IP Attorneys Board of Australia and New Zealand you can assure that your trademark application or matter receives the right attention and the due care of a practising professional. Most importantly you are provided with the right advice on trade marks law which is subject to professional privilege.

Trademark Services

Trade Mark Clearance FTO

Undertaking a professional trademark clearance know as a Freedom To Operate or FTO will not only give you a clear picture that your proposed trademark can be registered, it will also save valuable time and money against a possible opposition.

Utilising our expertise is absolutely necessary in conducting a trademark search. You need extensive intellectual property experience to be able to find similar (or in some cases, the same) trademarks. You even need to know, and understand, how to search through unregistered trademarks, particularly given that rights can still be claimed for unregistered trademarks in some instances.

We offer a whole range of trademark searches and can generate numerous reports, all of which are designed to help you understand prior trademark claims, and how these claims could affect your registration.

Trade Mark Monitoring

Trademark monitoring gives trademark owners’ early warning of other similar trademarks that may be filed with the Trademarks Office. Shortly after a trademark application is filed with the Trademarks Office our monitoring service notifies owners.

Trademark monitoring serves as a proactive brand protection tool and Brand owners can undertake general monitoring matching new similar or key word trademark applications or opposition monitoring for similar trade mark applications by key competitors.

The key point is being notified and on guard to any possible infringement.

Portfolio Management

A handshake agreement licence or assignment of a trademark for accounting purposes is leaving your Trademark exposed.

In the context of business sales trademark assignments are an essential element of any transaction and getting the assignment right is important.

In some instances businesses will seek to exploit their trademarks by licensing them, whether through a franchise system or for specific goods and services.

Legum ILP has extensive experience with trademark licensing.

Our expertise includes:

Advising and preparing trademark assignments;
Negotiating and documenting trademark licensing agreements;
Providing strategic advice about trademark licensing including for franchise systems;

Trademark Registrations

We can assist clients in Australia and New Zealand and the United Kingdom to undertake domestic Trademark Applications and filings.

Whilst this can a simple process in some aspects we can advise our clients on where protection is best sought be it a class of goods or a service. Undertaking a correct filing for the right class of goods is critical in trademark protection to ensure that you have the exclusive right to exploit that mark and others are prevented from doing so.

Our Trademark registration is a process where you are fully informed and provided with a work flow process in protecting your name or brand. Its important to keep in mind not only are words or logos trademarks but you may want to consider other protections such as scents, shapes, colour and sounds, which could be a distinctive mark of your goods or services in the market and such marks are worth protecting giving the long term revenue that can be derived from such registered intellectual property

Trade Mark Litigation

The protection and enforcement of intellectual property rights is a fundamental part of any brand protection strategy. Trademark rights give you exclusive rights, and the value of those rights can often only be fully exploited through the enforcement of them through the Courts.

Whether you are protecting your trademarks from infringement, or challenging a Trademarks Office decisions in the Courts, decisive and expert trademark litigation advice is essential.

Legum ILP litigation team have extensive experience in the Federal Court and regularly represent brand owners and respondents alike.

Trade Mark Renewals

After registration, a registered trade mark is in force for 10 years. At the 10 year mark, the trade mark owner can then opt to keep the trade mark active by paying the appropriate renewal fees. The trade mark renewal can be done every 10 years from the date of filing, indefinitely so long as the trade mark continues to be used as a trade mark.

If your business has been actively gaining goodwill associated with the trade mark, a lapsed trade mark opens up a window for opportunistic trade mark filings by any competitors for a similar or identical trade mark in respect of the same goods and classes.

Therefore, it is in your best interest to stay informed of the important dates in your trade mark’s timeline and have Legum ILP manage renewals on your behalf.

International TM

Registering a Trademark in Australia or New Zealand does not give you global protection, this is a common misconception by Trademark owners.

Problems can arise in countries such as China where Trademark squatters may register your Trademark in China where you manufacture your goods. This is due to China having a system of first to register unlike Australia which has a system of first to use. This can be crippling to a business who has a high reliance on the manufacture of goods in China.

Your options are to File a Trademark in individual countries where you manufacture or sell your goods or file via the Madrid Protocol.

The Madrid system is a much simpler process. Only a single international trademark application is required, It is in one Language, It is filed in the Trademarks office of the Home Country, protection can be sought in One or All of the other member countries and Updates and renewals can be handed centrally.

TM Licensing

You have spent years on developing your trademark portfolio which is an incredibly valuable asset to your organisation. Like any other asset, a trademark portfolio needs careful monitoring, auditing and management.

At Legum ILP we work with you to develop and implement a cost-effective strategy designed to keep your trademark portfolio safe.

We have the knowledge and experience to shield your trademark portfolio from infringement. If your trademarks do come under any attack from competitors, you can rest easy knowing that we are fully equipped to protect your rights.

Engaging our practice to manage your brand and your assets, you can focus on growing your business and expanding your innovations.

Domain Names

Registering a domain is not registering a Trademark however it may be helpful in recognising prior use in a trademark application opposition.

Registering a domain name does not give full rights to the name. Any party that registers a domain name does not own the name; the domain name can be used for a specified period according to certain terms and conditions. When filing a domain name request, the applicant automatically agrees too and is responsible for ensuring they are eligible to use the domain name.

Importantly if a business or individual in the course of business or trade is deceptively using a similar domain name to your domain and your trademark it can be revoked under .au dispute resolution policy and the World Intellectual Property Office Domain Name Dispute Resolution procedures.

If you facing such a issue talk to our IP litigation Team. Our litigation team can develop a strategy in dealing with the dispute and the right course of action eliminating online domain threats to your trademark.

Trade Mark Oppositions

Filing a trademark application that you may believe is clear to sail through still may face opposition from the jurisdictional Trademarks Office you are filing in and there may also be an opposition for non use of a trademark that you have had registered for some time.

Legum ILP is proactive on Trademark oppositions and we can take care of the whole opposition process on your behalf, including:

Providing strategic and tactical advice in relation to oppositions;
Preparing notice of opposition and statement of grounds and particulars (SGP);
Defending trademark oppositions;
Preparing non use applications, and defending non use applications;
Attending and advocating at opposition hearings;

Trade Mark Clearances

Undertaking a professional trademark clearance will not only give you a clear picture that your proposed trademark can be registered, it will also save valuable time and money against a possible opposition.

You even need to know, and understand, how to search through unregistered trademarks, particularly given that rights can still be claimed for unregistered trademarks in some instances.

Certification Marks

The certification trade mark is one type of trade mark. It's a special logo that shows consumers that a product or service meets a particular standard.

These standards usually relate to matters like:

quality
composition
place of origin
manufacturing method
suitability for a particular task.
All certification trade marks must have rules about how the logo can be used.

Examples of such Certification Marks are: “Made in Australia” and the “Woolmark” certification mark. Certification Marks must be approved by the Australian Competition and Consumer Commission (ACCC) and the application filed through IP Australia.

Under the Trade Marks Act 1995, the ACCC must be satisfied that certain criteria are met before a certification trade mark can be registered. If you are considering developing a certification mark speak to one of our team on developing your strategy.

Speak with Our Specialist Trade Marks Team

James Leslie-Watt

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Managing Partner & Trans Tasman IP Attorney - Legum ILP Sydney

James represents clients in all phases of domestic and international trademark registration from clearance searches and freedom to operate advice, to preparation of new applications and representing clients in application & registration oppositions from IP Australia and external third parties.

Further to James skills he has commercialisation, licensing and transactional experience in risk protection and portfolio management of multi-brand portfolios.

James is a registered Trans Tasman Trademark Attorney with the TTIPAB, holds post graduate qualifications: Professional Certificate in Arbitration (Adelaide University) Master of Business Administration (Finance) (AIB), Master of International Law (Griffith University) and Master of Intellectual Property (UTS Sydney).

He is also a member of the IPTA, Resolution Institute, Charted Institute of Arbitrators & Lesanz International