Trade Marks

A trade mark is a way of identifying a unique product or service.

It's a form of brand protection which distinguishes between your products or services and those belonging to your competitors. A trade mark can be your most valuable business asset and marketing tool. The more successful your business, the more valuable your trade mark becomes.

At IP Solved we understand the increasingly important role of brands in the market place and their value as a business asset. Gaining a competitive advantage in today’s marketplace requires you to have an effective trade mark strategy.

Trade Mark Registration

A registered trade mark provides you with exclusive rights to use, license and sell the trade mark. It’s also a valuable marketing tool because the value of your trade mark increases with the success of your business.

It is generally possible to obtain trade mark registration for any ‘sign’ which distinguishes one trader’s goods or services from another’s. We have the expertise to recognise not only words and logos capable of registration, but also non-traditional trade marks such as shapes, sounds, colours, scents and aspects of packaging.

We work with you to understand your business and industry and customise our strategic advice for you. Our Trade Marks team have strong credentials in the filing and prosecuting of trade mark applications/registration, including certification marks.

We have extensive experience dealing with national, regional and international trade mark registration systems including the Madrid Protocol International Registration system administered by the World Intellectual Property Organisation (“WIPO”).

For Trade Mark application in overseas countries, it is usually necessary to appoint a local attorney in the overseas jurisdiction. We have extensive networks of overseas attorneys built on long established and trusted relationships to assist where necessary in obtaining overseas trade mark rights.

Trade Mark Searching and Clearance

Searches are a vital part of selecting a trade mark. A thorough search of the Trade Mark Registers should be undertaken before a proposed trade mark is selected for commercial use, and potential registration. The purpose of this process is to determine the commercial and legal risk of infringing the intellectual property rights of a third party and/or to identify any other obstacles you may encounter in attempting to register your trade mark.

We offer a full trade mark searching and clearance service and our trade mark specialists will provide a comprehensive report outlining any obstacles to the use or registration of a trade mark including a discussion of relevant prior conflicting marks and provide a strategy to reduce or address any risks so that you can make important business decisions in confidence.

Trade Mark Intelligence & Monitoring

Once your trade mark is safely registered, we recommend that a watching service is set up to monitor any competitors who may be seeking to register a substantially similar mark in the areas where your business trades. This enables you to react quickly to any potential infringements on your trade marks.

We offer a comprehensive watch service of any trade mark databases that may be of interest. The watching service can be tailored to meet your specific needs, and can includes monitoring:

• similar marks
• applications filed in particular classes, and
• applications filed by competitors

Trade Mark Opposition & Non-Use Proceedings

Oppositions

The trade mark registration process incorporates an unavoidable opposition phase, which allows third parties to oppose the registration of a trade mark application that is accepted for registration.

If such an opposition conflict/dispute is encountered during the process of registering your trade mark, you will be in good hands. Our trade mark specialists have proven expertise and a high success rate in handling trade mark oppositions and to achieve registration of the trade marks that were opposed.

When a trade mark application is opposed, the attorney that is prosecuting the application will also be directly responsible for managing the opposition and where required, the attorney will engage with outside legal Counsel.

Non Use Proceedings

An essential requirement of trademarks is that the trade mark must be used commercially. A trade mark must be continuously used or intended to be used in trade otherwise the trade mark will be at risk of being removed from the Trade Marks Register through a trade mark non-use proceeding.

Businesses may register trademarks with the intent to use them, but the trade mark may not actually be used, or the trade mark is only used for a limited time. Non-use proceedings are relatively common, and are used to remove trade mark registrations that have not been used by the registered owner for a period of time.

Protection of Certification Marks

A certification mark certifies the nature or origin of the goods or services on or in connection with which it is used. This includes, for example, region or location or origin, materials of construction, method or mode of manufacture of goods or provision of services, quality assurance, accuracy of the goods or services, and any definable characteristic of the goods or services. It can also certify manufacture of goods or provision of services by members of a union or other organization to certain standards.

We have considerable experience in the establishment and administration of certification trade mark schemes and our expertise includes the preparation of “rules” governing the use of certification marks as well as liaison with regulatory bodies in connection with the filing and amendments to such rules.

Trade Mark Renewals

Each jurisdiction has its own unique renewal and maintenance schedule that must be adhered to and managed to protect the trade mark rights. The management of the renewals that are payable across your IP portfolio, is a long-term and on-going process, and can be relatively complex to administer, with potentially disastrous ramifications if the payment of a renewal fee is inadvertently missed.

We have a very experienced and talented Renewals Group that offers very cost competitive renewal services, and makes the process easy for you across all jurisdictions. You are in safe-hands.

Trade Mark Portfolio Management

We have expertise in managing large trade mark portfolios and regularly advise our clients on the development and implementation of IP strategies aimed at maximising protection of IP assets in the most cost effective manner.

We assist our clients by reviewing their existing trade mark portfolio’s and identifying any potential overlap in the protection afforded by relevant marks which may allow for rationalisation of the portfolio and cost savings without the loss of any commercially important IP assets.

Domain and Business Names

Domain Names

A Domain name is the address of your website that people type in the browser URL bar to visit your website.

In simple terms, if your website was a house, then your domain name will be its address.

Domain names form an important part of any IP portfolio and are an essential aspect of e-commerce. In particular, the effective use of domain names can significantly enhance brand penetration and awareness in target markets.

A comprehensive domain name registration program can also avoid the risks of domain name piracy and squatting by other parties. It is important to note that domain name registration does not in itself confer ownership rights and is therefore a supplement, not an alternative, to the benefits of trade mark registration.

Domain name disputes typically arise when domain names which incorporate third party trade marks are registered. In Australia, use of a trade mark in a domain name may infringe a registered trade mark or breach a trade mark owner’s common law rights and consumer protection legislation.

We handle disputes involving enforcement of trade mark rights against owners of conflicting domain names. We can also advise you regarding contentious matters such as cyber-squatting and if required take appropriate action to recover domain names which have been improperly registered.

Many domain name disputes are resolved through the Uniform Dispute Resolution Policy (UDRP) or the Australian Domain Name Dispute Resolution Policy (auDRP). We provide advice on dispute resolution strategies and procedures as well as prepare and lodge formal complaints.

Business Names

A business name must be registered before it is used. Any company, person or other entity that trades in a name other than their own legal name must register that name.

Registration of a business name does not provide any proprietary or enforceable rights to that name. So it’s important to consider registering your business name as a trade mark. It is also very important to ensure your intended trading name does not infringe any third party rights.