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Intellectual Property

Intellectual property lawyers

Intellectual property is a bundle of intangible proprietary rights and includes patents, copyright, designs, plant breeder rights, trade marks, trade secrets and other rights.

Our intellectual property lawyers are highly experienced advisers providing intellectual property law solutions to our Australian clients and acting as local agents for our overseas referral firms.

We have expertise in providing the following services:

  • trade mark prosecution, enforcement/litigation and branding strategy;
  • global trade mark and domain name portfolio management and advisory services;
  • copyright advice and dispute resolution;
  • privacy and spam compliance;
  • intellectual property due diligence;
  • intellectual property commercialisation, licensing strategies and contracts;
  • confidentiality and non-disclosure agreements; and
  • intellectual property dispute resolution involving registered and unregistered intellectual property rights including misleading and deceptive conduct claims.

Our clients include start-ups, established businesses and overseas referral firms who operate across the healthcare, retail, travel and resources industries.

HOW OUR IP LAWYERS CAN HELP YOU

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.

WHY YOU NEED AN IP LAWYER

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.

COPYRIGHT

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

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.

DESIGNS

Where trade marks protect the name of a product and patents protect how the product works, designs protect the visual appearance of the product.

Designs are registered under the Designs Act 2003 (Cth) for a maximum period of ten years. For a design to be registered it must be new and distinctive and IP Australia will test this during examination of the application (if requested by the applicant, which is a pre-requisite for enforcement action).

Unfortunately, if the design is used or disclosed before filing the application this may prejudice the ability to obtain the grant of a design. We therefore highly recommend clients seek advice before commercialising new products so any registerable rights are not lost.

PATENTS

Patents are inventions that are new, inventive, useful and not previously used. The Patents Act 1990 (Cth) grants the owner an exclusive monopoly to commercialise the patent in exchange for full disclosure to the public.

Because filing a patent application requires technical expertise in the area (e.g chemistry for pharmaceuticals), we assist clients by partnering with leading patent attorney firms in Australia to deliver the required service.

TRADE SECRETS

Trade secrets include ‘know how’ of businesses and other sensitive commercial information. We assist clients to protect their hard-earned industry knowledge and confidential information and can help clients evaluate whether the best protection is achieved through non-disclosure agreements or registration of the IP (such as a patent). In the event trade secrets are being misused, our litigation team can take steps to enforce our client’s rights.

DOMAIN NAMES

A common misconception is that you can ‘own’ a particular domain name. In fact, a domain name is merely a licence to use a particular name for the duration of its registration.

Frequently, domain name squatting is a source of dispute amongst businesses where one party has acquired, but is not using, a domain name that appears to pertain to another business. Importantly, having a business name does not entitle a business to a corresponding domain name. The only way to prevent domain name squatting is to have a registered trade mark.

We are experienced in resolving domain name disputes for our clients involving top level domain names and country level domain names. Given the potential high cost in conducting domain name disputes we often recommend taking a negotiated approach in the first instance to resolve the matter amicably at the lowest cost.

YOUR TRADE MARK LAWYER

While anyone can file a trade mark application, only a skilled trade mark lawyer will understand how to obtain the broadest possible protection for brands and what to do in the event objections from IP Australia or oppositions by third parties are raised against the application. Our trade mark lawyers provide a fixed fee service for filing straightforward trade mark applications to provide our clients with certainty.

FILING A TRADE MARK APPLICATION

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).

EXAMINATION

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.

ACCEPTANCE

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.

REGISTRATION

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.

INTERNATIONAL APPLICATIONS

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.

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