Trade Mark & Branding Registration, Strategy & Enforcement

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Our lawyers advise Australian and international businesses on trade mark and branding strategies and protection, locally and internationally. 

Our expertise includes:

  • Brand clearance work for advertising and promotional campaigns and advising on branding strategies in both Australia and overseas
  • Trade mark registration, filing and prosecution of trade marks in Australia and overseas
  • Monitoring trade mark watching services in Australia and internationally
  • Advising on trade mark infringement and passing off matters
  • Trade mark portfolio management including streamlining trade mark registrations
  • Trade mark renewals – in addition to renewing Australian registrations, we also have a well-established network of associates to assist with renewals in overseas jurisdictions
  • Trade mark portfolio reviews – Annual reviews to ensure that  our client's portfolios remain strategically relevant in light of anticipated business objectives
  • Drafting evidence of use in support of trade mark applications where applications have been refused and in support of and defending opposition matters
  • Preparing submissions in support of trade mark applications and oppositions
  • Advising on and applying for certification trade marks in Australia
  • Providing advice on actions to recover domain names
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Our relevant experience includes:

  • Acting for a well-known Australian wine manufacturer regarding a strategy for protecting wine labels internationally where a competitor had registered a similar trade mark in certain countries
  • Acting for a WA based producer of food products defending oppositions to its trade marks
  • Representing client in an appeal to the Federal Court involving an opposition to its trade mark application
  • Advising an applicant on process required to obtain approval of a Certification Mark for services relating to persons with hearing impairments
  • Acting for a world famous street artist in relation to opposing misleading trade marks sought in Australia
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The Concept of “Careful Purchasers” Strikes Again: Basler Electric Company v BOGE Elastmetall GmbH [2017] ATMO 64 (30 June 2017)

On 17 November 2014, motor and vehicle parts manufacturer BOGE Elastmetall GmbH (the Holder) applied...

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The European Union Intellectual Property Office (EUIPO) and the Organisation for Economic Co-operati...

Curvy Edges and a Credible Expert Witness: Apple Inc [2017] ADO 4 (16 May 2017)

On 8 March 2013, Apple, Inc (the Owner) filed a registration application under the Designs Act 2003 ...

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