Trade Mark and Brand Management

Our trade mark services include:

• Conducting detailed searches of the Australian Trade Marks Register to determine the availability of the trade mark for registration, to ascertain if there are prior applications or registrations for any marks which are not only identical, but confusingly similar
• Conducting searches for ‘common law’ trade marks, to ascertain the availability of a proposed new trade mark in the broader marketplace, including searches of the ASIC company and business name database and domain name registers, to identify any registered or unregistered trade marks currently in use which may be a barrier to the intended use of the proposed trade mark
• Preparing applications for registration, including consideration of appropriate class specifications and tailoring goods and services according to the industry and intended use of the trade mark by the applicant
• Reviewing grounds of rejection contained in any examiner’s reports, and tailoring a strategy for response to secure acceptance of the trade mark, with regard to the overall branding strategy of the client
• Preparing submissions for initiating opposition proceedings, and providing advice on and responding to any third party oppositions Securing registration of accepted marks
• Providing advice on compliance, once registration is obtained
• Providing services for trade mark protection (including watching services and preparation of oppositions where required)
• Enforcement of trade mark rights, from letters of demand, through to hearings before IP Australia officers and if necessary court proceedings (for both applicants and respondents).

Holding Redlich’s litigators are experienced in complex intellectual property litigation, so that each client can pursue full protection of its brands where alternative dispute resolution has not been successful.

Our further experience in internet-based disputes, including those relating to cybersquatting, means that we can ensure comprehensive protection of valuable brands.

We also work regularly with overseas agents (including to make Paris Convention and/or Madrid Protocol applications), enabling clients to establish an international trade mark portfolio based, where preferred, in Australia as the ‘home’ jurisdiction.

We frequently prepare and negotiate licensing, transfer, and other commercial agreements concerning intellectual property, and we can also ensure full exploitation of a client’s trade mark with appropriate controls and safeguards.