INTELLECTUAL PROPERTY ('IP')
Ramsden Lawyers offers an intellectual property service to legal and other professional firms on the Gold Coast as well as direct to our own corporate clients.
- Protect the value of symbols, designs and processes;
- Patent and trade mark research;
- Advice on availability;
- Advice on intellectual property strategy;
- Design and lodgement of patent specifications;
- Trade mark application preparation and lodgement;
- Modifications and amendments;
- Intellectual property licensing documentation; and
- Registered patent and trade mark attorney services.
We are happy to take instructions either directly from clients or from professional firms instructing on their clients’ behalf.
- Trade mark applications
Applications are examined in order of filing. The period of time taken between filing and examination of applications can vary considerably due to significant fluctuations in the number of applications lodged at any given time.
If you believe that you will be seriously disadvantaged because of the time taken between filing and examination, we may request that your application be examined sooner. An application to expedite must be accompanied by a declaration (witnessed) detailing the reasons for the request. Requests are assessed on their individual merit and are more likely to be accepted if any delay examining your mark is likely to result in a particular commercial or other form of disadvantage.
When your application for registration is examined, it will be assessed to see if it meets the requirements of the Trade Marks Act 1995. If your application meets all the requirements, it will be accepted for registration. If not, we will be sent a report setting out any requirements that need to be addressed. We will reply in writing and address any matters which have been raised.
The Trade Marks Act 1995 allows you 15 months from the date of the examiner’s first report in which to meet any requirements identified by the examiner and to have your application accepted by the Registrar. If we need additional time, we may request and pay for extensions of time up to a further six months.
From 15 to 21 months, extensions will be granted on the payment of fees to IP Australia. In additional to providing the appropriate fee, requests for extensions beyond 21 months must be accompanied by a declaration outlining the specific grounds for the desired extension with further fees payable.
AFTER ACCEPTANCE OF YOUR APPLICATION
When your trade mark is accepted for registration, the details of the application will be advertised in the Official Journal of Trade Marks.
For three months after the advertisement date, anyone who believes your trade mark should not be registered may oppose its registration.
If your application is opposed, we will have the opportunity to defend against the action. Only a very small percentage of applications are opposed.
If no opposition is filed against your application, or if opposition is unsuccessful, your trade mark will be registered when we pay the registration fee. The fee should be paid no later than six months from the date acceptance is advertised. Although if you delay payment beyond the end of the opposition period, there is a chance someone can request an extension of time to oppose. This can be avoided by paying the registration fee early.
IP Australia will then send us a Certificate of Registration and record the details of your trade mark in the Register of Trade Marks.
Your trade mark will be registered as from the date of filing the application, rather than from the date of the examination or acceptance.
The earliest date your 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 initial period of registration of your trade mark lasts for ten years from the date your application was filed. Registration of your trade mark can be renewed within six months before or after its expiry date. Late fees apply if the registration is renewed after the expiry date.
Two months before the expiry date, IP Australia will send you a reminder notice to your address for service informing you of the fees and steps required to renew your registration. The Registrar will renew your trade mark registration when the renewal fee is paid.
REQUESTING REGISTRATION OR PUBLICATION
You must request either registration or publication of each design in your application at filing or do so within six months of your application.
If registration is requested, the design application will be subject to a formalities check to make sure the necessary information and representations are present. If the design passes the formalities check, the design will be registered and advertised in the Australian Official Journal of Designs and in the Designs searching database (ADDS).
The publication option does not give any enforceable design rights but, because the design is published, it prevents others from gaining any rights to the design.
If publication is requested, the application will be checked and the design will be published in the Australian Journal of Design and on ADDS.
STATEMENT OF NEWNESS AND DISTINCTIVENESS
The provision of a Statement of Newness and Distinctiveness is optional, however it can be of benefit because particular regard will be had to the features identified in the statement when assessing the newness and distinctiveness of the design.
Registered designs are not automatically examined. Our current records indicate that most designs are not examined as clients do not often need to enforce their rights. However, examination must be completed if you need to enforce your rights in the design or if a third party wants to confirm the validity of the registration.
If you think you may need to have your design examined, our team of solicitors can provide you with in depth legal advice concerning examination and its effect on your prospects in any potential litigious dispute.
To request examination of your design, we can file a Request for Examination on your behalf. After we file the request, IP Australia will then check that your registered design meets all relevant requirements of the Designs Act.
If the design satisfies the requirements under the Act, we will receive a notice informing us that your design has been examined and a certificate of examination has been issued. Once this occurs, we will be able to commence legal action of your behalf to enforce your rights with respect to the design. In addition, a notice advertising that the design has been certified will be published in the Australian Official Journal of Designs.
If the design does not satisfy the requirements under the Act, we will receive an adverse report that will outline the reasons why your registration, in its present form, is unsuccessful. However, we will have the opportunity to make submissions and/or amend the details in the design registration to rectify any issues.
EXAMINATION REQUESTS FROM THIRD PARTIES
Other people can request examination of your registered design. They may also provide information relevant to the newness and distinctiveness of your design to be considered by the Registrar in the examination process.
They will pay half of the examination fee, and then you must pay the balance of this fee, because if your design is certified, you stand to benefit from this action. Once both parties have paid the appropriate fee, examination will commence. If a third party requests examination and you do not pay the balance of the fees, the design registration will cease.
If your design is found NOT to be new and distinctive during examination and you are not able to overcome the objection, your design registration will also cease.
If your registered design is infringed, or you believe it is being infringed, you should immediately request examination. If your registered design is examined and certified, we can then take legal action against the competing party. However, if it is examined and found invalid, your design registration will be revoked and we will not be able to take any action.
The initial period of registration for your design generally lasts for five years from the filing date of your application.
You may choose to renew your design registration for a further five year (to a maximum of ten years). If you do not renew your registration within the required timeframe, your design will cease.
Two months prior to the date of renewal, IP Australia will send us a renewal reminder notice. We can renew your registration for up to six months after the date of renewal, however additional fees will be incurred.