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Helping you protect and capitalise the value of your brand

Trade marks

As specialists in trade marks, we advise clients on protecting their brands across all industry sectors. Our work spans the registration of trade marks, trade mark enforcement, licensing and commercialisation. We use our expertise to help clients understand if they can use a brand based on what already exists, navigate disagreements with other brand owners including through opposition proceedings, facilitate trademark licensing, as well as enforcing or defending our client's rights in enforcement proceedings.

We have a proven track record of working closely with brands in the fast moving consumer goods, telecommunications, pharmaceuticals, education, financial services, tourism, fashion and construction sectors for local, multinational and government organisations.

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Knowledge and expertise

We work closely with clients across the full scope of their Intellectual Property requirements:

INTELLECTUAL PROPERTYCOPYRIGHTIP LITIGATIONIP TRANSACTIONSPATENTSPATENT AND DESIGN PROSECUTION

How we can help

Our approach to trade mark portfolio management takes litigation risks and commercial imperatives into account as well as focussing on the most cost effective and efficient path to protecting our clients' marks.

Our multi-disciplinary practice brings together a team of trade mark attorneys who work closely with our trade mark lawyers. We apply this dual perspective in all that we do, with regard to our clients' commercial objectives and with a sophisticated understanding of the importance of brands and trade marks to each client's business.

We leverage our position as one of Australia's leading independent law firms to support our international relationships and clients with their Australian trade mark registration, enforcement and licensing.

Our services include:

  • brand protection strategies and registration of rights for Australian and International brands;
  • enforcing trade marks against infringers or defending enforcement proceedings;
  • assisting to resolve disputes;
  • advising and representing clients on passing off and misleading and deceptive conduct matters;
  • undertaking availability and freedom to operate searches to determine whether a particular brand is available for registration and use, and any likely objections that may be faced in registering the brand prior to it being adopted by the business;
  • undertaking all steps in the trade mark registration process, including filing applications, reporting on and responding to adverse examination reports, responding to oppositions, and attending to renewals to maintain the registration; and
  • providing watching and infringement search services to determine whether competitors are encroaching on trade mark rights or creating additional infringement risks.

Australian trade mark registration process

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  • Must be in approved form in accordance with s.27 of the Trade Marks Act 1995 (Cth)
  • IP Australia issues a Notice of Filing
  • An application number is assigned to the trade mark
  • Standard Trade Mark Application; or
  • Headstart Application.

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  • Pursuant to s.31 of the Trade Marks Act 1995 (Cth), the application will receive formal examination
  • An Adverse Examination Report will be issued if a Trade Mark Examiner finds grounds to reject the application from proceeding to acceptance
  • Acceptance will follow, either by successfully overcoming issues raised in an Adverse Examination Report or clear examination (no issues raised).
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  • IP Australia issues a Notice of Acceptance
  • The trade mark application is advertised in the Official Journal whereby a third party can oppose the application proceeding to registration
  • The timeframe to oppose is 2 months from the date of advertisement

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  • Pursuant to s.71 of the Trade Marks Act 1995 (Cth) IP Australia issues a Certificate of Registration and advertises registration in the Official Journal
  • The initial period of registration for the trade mark is 10 years from the filing date
  • Initiating a trade mark watching service is an efficient way of maintaining and protecting rights which subsist in your trade mark.

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  • A renewal fee is payable to renew the registration period for a further 10 years
  • IP Australia issues a Reminder Notice 2 months prior to the expiry date of the registration period
  • To avoid the risk of the trade mark being expunged, it is important to use the trade mark in connection with the goods/services protected by the registration.

Case studies

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Kreglinger (Australia) and Pipers Brook Vineyard

Successfully defended Federal Court proceedings of misleading and deceptive conduct / passing off regarding wine label/packaging.

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Self Care

Represented Self Care in complex Trade Marks Office and Federal Court proceedings against Allergan in relation to the use of 'Botox' in advertising. The first instance decision was ultimately upheld by the High Court.

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Stadia Turf Technology Pte Ltd.

We are responsible for managing Stadia Turf's global patent and trade mark portfolio - a private company which develops hybrid turf products, primarily for the sporting industry.

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Global brand Giorgio Armani S. p. A

Successfully represented Giorgio Armani S.p.A in a dispute over the use and application to register various trade marks.

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Trade mark portfolios

Various Australian and International corporate and government organisations on the management of their global trademark portfolios.

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https://www.minterellison.com/intellectual-property/trade-marks

Our thinking and experience

Lead contacts

Shyama Jayaswal

Partner, Lawyer and Patent Attorney, Melbourne

John Fairbairn

Partner, Sydney

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