Trade Marks Searches, Filing & Prosecution

Trade mark registration is the backbone of brand protection and an essential cornerstone to any business’ growth strategy. Put simply it is the most effective way to protect your business’ brand.

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Trade Mark Assets

A trade mark registration can act as both a ‘sword’ and a ‘shield’. Sword – it provides your business with a legally enforceable right to stop a competitor that has copied your brand anywhere in Australia. Shield – it is a defence to allegations of trade mark infringement brought against your business by a competitor. A business name registration does not provide these benefits. It is merely a government requirement for trading.

A trade mark registration is also a key asset of your business. It is an intangible asset which can be valued and sold. It can be sold separate to your business or it can sold as part of the sale of your entire business. Because a trade mark registration is an Australia-wide right it can increase the value of your brand as part of any sale. A trade mark registration can also be licensed and become a revenue generating stream for your business.

Trade Mark Registration Strategy

Key to any trade mark registration strategy is conducting searches to ensure your chosen brand can be registered and also is not infringing the rights of another. This involves searches of the trade marks register to determine if another party has prior registered or common law rights to your proposed brand. Investing in a trade mark clearance searches can minimise the unwanted and often costly risk of being sued for trade mark infringement.

The marketplace is now a global marketplace. Trade mark registration can and often should be sought in at least a business’ key markets or future markets. The earlier this is done the better. It potentially avoids the unpalatable scenario where a business is not able to sell in a key market under its brand because another business already has the brand registered in that country. For this reason there are also benefits in conducting a consolidated trade mark clearance search not just in Australia but simultaneously in key markets of interest.

How We Can Help You

Led by Jennifer Driver, our trade team – trade mark lawyers and attorneys – have the technical experience, commercial nous and track record assist your business:

  • Australian and international trade mark protection strategy & advice
  • trade mark clearance searches & advice
  • trade mark filing in Australia & internationally
  • responding to the Trade Marks Office in support of trade mark registration
  • trade mark registrability and infringement advice
  • trade mark watch services
  • Australian and international trade mark portfolio management
  • trade mark use investigations and non-use / removal actions
  • trade mark audits & due diligence
  • IP Australia Trade Marks Office opposition proceedings
  • Assisting Actuate IP’s legal team in preparing commercial agreements, including licensing, related to commercialisation of trade mark registrations
  • Assisting Actuate IP’s legal team in enforcing and defending trade mark infringement proceedings

There is no such thing as a “worldwide trade mark”. Instead a separate application process is required to file trade mark applications in other countries of commercial interest. There are three pathways to do so being (a) via the Madrid Protocol (b) The European Trade Mark System (which is EU specific) and (c) filing directly into another country. When used effectively, the Madrid Protocol (of which there are currently 99 member countries) provides a cost efficient and streamlined way to manage trade mark filing a registration in across multiple countries.

Our Trade Marks Searches, Filing & Prosecution Team

Jennifer Driver
Principal | Trade Mark Attorney @ Actuate IP
Paola Rios
Legal Projects Administrator & Trade Mark Attorney @ Actuate IP
Amy O’Bryan
Associate | Lawyer @ Actuate IP