With all that goes on in running a business, we understand intellectual property can sometimes be an ‘afterthought’, however that is when problems arise. Without the benefit of registered intellectual property rights (such as trade marks) a business may be forced to rely upon the more difficult to establish and more costly to pursue common law tort of ‘passing off’ or statutory causes of action for misleading or deceptive conduct. Unregistered IP rights are also significantly less attractive to investors or acquirers of businesses as they do not have the same monopoly rights as those which are appropriately registered.

Worst still, unless the business’ employment and consulting agreements are drafted properly, the business may find it does not even own the IP and at best may only enjoy an implied licence to use the IP. Although our litigation team are highly experienced in resolving intellectual property disputes that arise from poorly drafted agreements, engaging an IP lawyer early can provide long-term value by ensuring issues are identified before they crystallise.

Intellectual property can be poorly understood by businesses who may not be fully aware of all the legal issues that can arise when developing and commercialising intellectual property. Our team of intellectual property lawyers are highly experienced in intellectual property law and will take the time to explain to our clients often complex concepts in plain language, having regard to the wider commercial and industry circumstances which influence our clients’ businesses.

Our IP lawyers can assist clients throughout the entire IP life cycle. From providing initial advice on the registrability of trade marks and strategies for protecting trade secrets, through to licensing and other commercialisation strategies in Australia and overseas, our IP lawyers have the skills and experience to assist clients in protecting their IP. We can also assist clients with enforcing intellectual property rights and resolve intellectual property disputes by leveraging the resources of our litigation team where necessary.

We take a commercial approach to providing our clients with solutions that combine our deep technical knowledge of intellectual property with our broad skills in corporate and commercial law to provide a holistic legal solution. Our intellectual property lawyers work closely with our corporate lawyers on exit strategies and the appropriate treatment of intellectual property assets in corporate transactions including IPOs, equity investments and trade sales.

We also regularly assist our clients with cross-border IP transactions, and we have relationships with associate law firms overseas who are engaged to provide a seamless service to our clients. When we engage overseas firms on our client’s behalf, they can rest assured knowing their IP lawyer remains the single point of contact for the matter and they do not need to deal directly with multiple firms around the world.

Copyright in Australia is governed by the Copyright Act 1968 (Cth) and provides protection for authors of original work. Copyright is not a registered intellectual property right and arises automatically as soon as the work is created, generally providing protection for the life of the author plus seventy years.

Our Gold Coast intellectual property lawyers help clients navigate the limitations and exceptions relating to copyright (such as fair use) and are experienced in enforcing copyright claims against unsolicited reproductions.

Trade marks are key to brand protection and are used to distinguish the unique goods or services from others. In Australia, trade marks can include both registered and unregistered marks, however we strongly recommend our clients apply for registration of key brands given the monopoly rights registration provides. Of note, simply having a business or company name registered with ASIC (the corporate regulator) does not provide the owner with any proprietary rights in the name which only a registered trade mark can provide.

Registered trade marks are governed by the Trade Marks Act 1995 (Cth) and are renewable every ten years. A registered trade mark allows the owner to enforce its rights if a person uses a mark that is substantially identical or deceptively similar to the registered trade mark in Australia in relation to similar goods or services.

Our trade mark lawyers have significant experience in all aspects of trade mark prosecution and disputes, both in Australia and overseas through our network of referral firms.

Before filing a trade mark application, we develop a comprehensive understanding of our clients’ businesses, goods/services and the industry. We also undertake high level searches of the Australian trade marks register to potentially identify obvious conflicts with prior-filed marks, however a more comprehensive search offering is available on request.

After identifying the relevant mark for registration, we prepare tailored class specifications and seek instructions to file. If the client believes they will be seriously disadvantaged because of the time taken between filing and examination of the application (which can take four months), we can request expedited examination. Such requests are assessed by IP Australia on their individual merit and are more likely to be accepted if any delay examining the application is likely to result in a particular commercial or other form of disadvantage (eg impending sale, imminent product launch etc).

After filing the application, it will be placed in a queue to be allocated to an examiner who will assess its registrability against the Trade Marks Act 1995 (Cth). A report will be issued which will highlight any issues preventing acceptance, such as descriptiveness issues or the presence of prior filed marks that are substantially identical or deceptively similar to the application.

If an adverse report is received, we provide the client with detailed advice on how to best proceed to maximise the opportunity for success. Strategies employed to overcome objections may include filing legal submissions, amending the class specifications, obtaining letters of consent from third parties, filing oppositions or non-use actions, or filing evidence of use. Often a variety of strategies are adopted to respond to the objection.

It generally takes about four months from the lodgement date for examination to occur, unless an expedited request is granted.

When the trade mark is accepted for registration, the details of the application will be advertised in the Official Journal of Trade Marks.

For two months after the advertisement date, anyone who believes the trade mark should not be registered may oppose its registration. Usual grounds for opposition include descriptiveness issues and likelihood of confusion with a prior filed mark.

If the application is opposed, we provide our clients with comprehensive advice on how to best proceed and defend the action. Only a small percentage of applications are opposed.

If no oppositions are filed against the application (or if oppositions are unsuccessful) the trade mark will be registered for ten years from the date of filing.

The earliest date a trade mark can be registered is seven and a half months after an application is filed. This is to allow IP Australia to fulfil its international obligations to allow six months for applicants to claim a priority date based on overseas filing under the Madrid Protocol. The Madrid Protocol is an internationally recognised agreement between member countries that standardises the way in which applicants can obtain international trade mark registrations.

Once the trade mark is registered, the client can use the commonly used ® symbol to highlight to others the trade mark is registered. This is optional and not a requirement for maintaining registration of the mark.

We have a network of highly experienced trade mark professionals around the world who we engage to assist our clients with securing their trade marks in foreign jurisdictions.

We generally recommend our clients file international applications within six months of filing the Australian application so as to secure the Australian filing date for those international applications (ie a ‘priority’ application). International applications can still be filed after six months, however the Australian priority date will be lost.