0402519010

+61 2 8091 3429

What trade mark services do you offer?

  • Trade mark registration advice

  • Clearance and registrability searches

  • Filing and prosecuting trade mark applications

  • Company name and business name registrations

  • Enforcement of trade mark rights

  • Trade mark oppositions

  • Trade mark litigation

  • Renewing registered trade marks

  • Customs watch notices

What is a trade mark?

A trade mark is a badge of origin.  It represents your identity - the way you show your customers who you are. The more successful your business, the more valuable your trade mark becomes.

Why should I register my trade mark?

If you don't register your trade mark, you will not be able to claim ownership rights to the trade mark.

Many people mistakenly think that registering a business or company name gives them ownership rights.  It does not (see the ASIC website here).  Registering a business name or company name will not give you a defense to a claim of infringement of a registered trade mark. 

The trade mark registration process can clarify your right to use a trade mark.  Deceptively similar marks that present a risk of infringement can be revealed during the process.  If you proceed to use a trade mark without going through the registration process, you run the risk that you will have to change your trade mark in light of the prior rights of someone else.  Changing your trade mark can cause a major disruption to your business.  It confuses your customers.  It resets your reputation and diminishes customer loyalty.

If you do not register you trade mark, enforcement becomes very difficult and in many cases - impossible.  You would have to rely on the tort of passing off or an action for misleading and deceptive conduct under the Australian Consumer Law.  This requires you to prove that (1) you have a significant reputation (in most cases, in the same area in which the infringer operates),  (2) the infringer has passed themselves off as your business, or made some misrepresentation that confuses consumers as to the origin of their products or services, and (3) you have suffered damage (primarily monetary damage) as a result of the misrepresentation.  Such actions are most suited to cases of counterfeiting - not cases where one party adopts a trade mark which is deceptively similar to a pre-existing trade mark.  Such cases are exceedingly difficult to prove in court and are likely to add tens of thousands to your enforcement costs.  That is why the trade mark registration system exists - to simplify disputes and make them cheaper to resolve.    

Why should we choose your firm?

We have filed thousands of trade mark applications.  We know the tricks and traps.  A mistake at the application stage could be fatal when you try to enforce your rights.  You could loose a case because of a simple mistake at filing. 

 

We have prosecuted thousands of trade mark applications through to registration.  Many applications receive objections from an Examiner at the Trade Marks Office.  We know all the tricks to overcome those objections.

 

Our founder Steve Davey developed and patented software called Visimark which will monitor your registration for conflicting trade mark applications day and night.  It functions like a radar so you can see incoming infringers.  If a third party files an application for a deceptively similar mark in your class of goods or services, the software will alert us and we will alert you.  We do not charge our clients for this service.  Costs will only be incurred if you choose to take action against an infringer.  This service will enable you to stop competitors before they confuse your customers, or dilute your brand.  It is an incredibly effective tool which has been used on thousands of occasions for many years.

What happens if my registered trade mark is infringed?

We can send the infringer a cease and desist notice.  In 95% of cases, the matter is quickly and cheaply resolved.  We have resolved hundreds of matters this way.  If negotiations fail, we can initiate litigation (court proceedings) to seek:

 

  • an injunction to stop your opponent from infringing your registered trade mark,

  • an account of their profits or reimbursement for the infringer's damage to your business; and

  • reimbursement for around 60% of your legal costs.

What is the process for registering a trade mark?

The process for registering a trade mark is as follows:

Discuss your trade mark with us

File an expedited

trade mark application

+ 3 days

File a standard

trade mark application

Registrability report

+ 3 months

Abandon application

+ 5 days

Maintain application

+ 2 weeks

Examination

Notice of Acceptance

Advertised for oppositions

Filing date + 5 months

Adverse exam report

Abandon application

Negotiate

with Examiner

+ 2 months

Opposition?

No

Yes

 Trade Mark Registered

+ 10 years

Renewal 

(once every 10 years)

Opponent files a Notice of Intention to Oppose

+ 1 month

Opponent files a Statement of Grounds and Particulars

+ 1 months

Applicant files a Notice of Intention to Defend

+ 3 months

Opponent files Evidence in Support

+ 3 months

Applicant files Evidence in Answer

+ 2 months

Opponent files Evidence in Reply

+ 6 - 9 months

Hearing at Trade Marks Office

+ 6 months

Trade Mark Registered

+ 10 years

Renewal (once every 10 years)

Trade Mark Refused

Appeal

to a court