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What do Trade Mark Attorneys Do?

Our services

  • Investigating the availability of trade marks for use and registration
  • Filing and prosecuting trade mark applications before IP Australia
  • Filing and prosecuting international trade mark applications via the Madrid protocol
  • Trade mark searching to locate trade marks registered in Australia or overseas
  • Renewal, assignment, opposition, non-use and all other related trade mark matters
  • With a network of trusted associates and colleagues if we can’t assist you personally we will connect you with the right people in Australia and overseas. 

Why use an experienced and registered trade mark attorney?

Australian registered trade mark attorneys are regulated by the Trans-Tasman IP Attorneys Board.  All trade mark attorneys have passed knowledge requirements usually attained by completing post graduate law qualifications in intellectual property and trade mark law and practice.   Trade mark attorneys meet continuing education requirements each year in order to maintain registration.    

An experienced trade mark attorney will;

  •  almost certainly save you time and money as opposed to attempting protection yourself
  • assist you with identifying the trade marks your business is using
  • correctly identify the goods and services your trade mark is used on
  • warn you of scams 
  • make sure your deadlines are met and your rights are maintained
  • keep you advised of changes to the law relating to your trade marks and the countries you are protected in

If you are unsure if we can help please make contact with Kate to discuss your business more. 

Trade mark filing and prosecution in Australia and Overseas

If you want to stop another business from using your trade mark or something similar registering a trade mark will give you the strongest case to do so.

It is always a good time to review your trade marks but some obvious times to consider your trade mark protection are;                   

  • When registering a business name
  • When designing a new product or service name or its packaging and presentation
  • Periodically as the use of the business’ key identifiers (aka trade marks) change such as taking a multipart name and converting it to an acronym or developing a new logo and using it in place of the written words
  • Before entering overseas markets. This includes entering products in competitions or commencing discussions with distributors or agents

Foreign trade mark applications

If your business is planning on exporting its goods or services, manufacturing overseas, exhibiting at trade fairs or entering competitions or negotiating with an agent or distributor it is time to discuss protection in these jurisdictions.

Regions outside Australia may be approached either by direct filing of applications in the countries of interest or by a regional application including via the World Intellectual Property Office (WIPO).

There are benefits and disadvantages of either approach. Please contact us to discuss your business needs.

As an attorney who has qualified and worked in Ireland, Europe and Australia we love working with all jurisdictions.

Clearance and availability

When choosing a brand or business identity it’s important to check if anyone else is using similar words, logos, signs etc in relation to the same or similar goods or services.

It is generally advisable to conduct a search of the Australian Trade Mark Register.

This is important because if someone else already uses or has registered the same or substantially similar trade mark in respect of the same or similar goods or services you could have a costly problem.

It is best to engage a qualified and experience trade mark attorney for this task as searching the Trade Marks Register is a skilled task and requires both an understanding of trade marks and their components but also how they are compared and assessed by IP Australia.

Checking if a mark is available before use will always save money.   Some of the ways you will save money are;

  • Avoiding unnecessary and costly conflict
  • Choosing an available trade mark with as much space around it as possible
  • Informing strategies for successful registration both now and in the future
  • Knowing your market

If you are not sure if it will help you and your business please contact us for an initial consult.

Protect your Intellectual Property.

Let us tell you how.

P.O. Box 132, North Hobart, Tasmania
0417 238 969
We acknowledge and pay respect to the traditional and original owners of this land the muwinina people. We pay respect to those that have passed before us and we acknowledge today’s Tasmanian Aboriginal people who are the custodians of the land on which we work.
Copyright © Kate Kelly 2024. All Rights Reserved.
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