Trade Mark Selection

Choose branding which works.

Trade Mark Selection 101
Trade marks convey both obvious and subliminal messages and set the scene for how products and services will be perceived and remembered. They can send the wrong messages. They can say something to one person and something else to another. They need to be chosen with sensitivity to cultural differences and need to take into account possible changes in the market and/or the direction of the business.

Trade Mark Legal Clearance

Minimise infringement risk and registration failure.

Trade Mark Legal Clearance 101
Choosing a new trade mark is difficult. It not only has to work from the marketing perspective but for legal purposes it has to be sufficiently different from all the rest. The challenge is that there are literally millions of trade marks out there. When selecting trade marks, identifying risks which could lead to expensive rebranding and/or litigation is key. Legal clearance to minimise risks requires expert research and legal analysis.

Trade Mark Registration

Trade Mark Ownership is critical.

Trade Mark Registration 101
Ownership means control. Valid registration provides the right to use, license and sell a trade mark and to stop others from blatantly or inadvertently copying it. Registration can be simple or complex and the rules and procedures need to be carefully navigated.

TRADE MARK ENFORCEMENT

Stop trade mark infringement and misleading conduct.

Trade Mark Enforcement 101
Exercising the enforcement provisions of the Trade Marks Act 1995 becomes an option once registration has been obtained. The reputation generated by using a trade mark can also be protected at common law and under the consumer protection provisions of Australian Consumer Law. Stopping third party copying removes the risk of brand damage in the market and devaluation of legal rights. Proactive strategies for identifying and eliminating infringements and misleading conduct should be established.

TRADE MARK maintenance

Trade marks should be used and identified correctly and registrations are subject to renewal deadlines.

Trade Mark Maintenance 101
Incorrect trade mark use can lead to loss of rights. Just a few examples of the many trade marks which have become generic and open for all to use are escalator, linoleum and laundromat.

Intellectual property rights are subject to deadlines and trade mark registrations typically run for 10 years and are renewable for consecutive 10 year periods. Deadlines need to be monitored to avoid loss of rights.

TRADE MARK DEFENCE

Fight allegations made by third parties.

Trade Mark Defence 101
Many allegations of infringement and misleading conduct are ill-founded. Attacks on registrations can be refuted and rights retained. Effective strategies for resisting aggressive action by third parties can see disputes resolved before they escalate into litigation.

During the registration process, trade mark applications can be opposed by interested parties. This triggers an evidentiary procedure which needs to be worked through if the opposition is to be resisted and registration pursued. 

After registration has been granted rights can be lost by third party attacks. Trade mark registrations can be attacked on various grounds, most commonly on the basis that the trade mark has not been used.  

Defending trade mark rights involves deadline-driven procedures and requires creative thinking and an understanding of the complexities of trade mark law and practice.