TRADE MARKS

Executive Overview

Nicholas Weston is retained by local and international clients to help establish strong new brands, and to enhance and protect their existing trade mark assets.

Visit our Trade Marks Microsite for full details of our Trade Marks practice.

Advantages of registration include:
· an exclusive right to use the mark in connection with the listed goods or services;
· the use of an Australian registration (with its wider than USA specifications for goods and services) as a basis to obtain registration internationally; and
· the ability to ask the Australian Customs Service to seize infringing foreign goods.

From the creation stage, the firm assists with brand selection, global clearance searches and reports, trade mark filing strategies, as well as trade mark filing, prosecution and enforcement. We work in a commercially oriented and timely manner with key agents worldwide to identify, evaluate, secure, preserve, protect, enforce and leverage your rightful trade mark property and business interests.

Experience

Nick Weston is a Registered Trade Marks Attorney as well as a lawyer and has experience in all aspects of IP protection from registrations to Court ordered raids on infringers to creating, protecting and licensing trade marks to related areas such as false advertising, trade practices, franchising and litigation. He has been appointed to the International Trademark Association’s (INTA) Law Firm Outreach Subcommittee of the Alternative Dispute Resolution Committee (ADR) for the 2008 – 2009 committee term. He has been published in the Australian Intellectual Property Journal (Australia’s standard IP reference journal) on copyright and trade marks issues and is a regular conference speaker on these topics.

Lea Lewin is registered patent and trade marks attorney with extensive experience in IP related matters. Lea has particularly focused her attention to trade mark related matters since joining Nicholas Weston and continues to publish articles in this area

Methods

· Searching on-line databases for trade mark clearances and investigations.
· Identification of wrongdoers and Investigating or monitoring specific activities.
· Advising on whether protection is available or rights being infringed and your Options.
· Obtaining protection through our network of international correspondent firms.
· Keeping records on our computerized trade mark docketing and tracking system to monitor deadlines, payment of
renewal fees and to provide current lists of registrations.
· Drafting licensing and assignment agreements.
· Preparing analytical reports with respect to trade marks for the purpose of mergers, acquisitions and the transfer of trade mark assets.
· Representing clients in negotiations, at ATMO hearings and in the Federal Court.

Results

· Brand protection at all stages of its life.
· International reach, and a trade mark strategy informed by the laws, policies and cultures of the target countries you plan to enter.
· Comprehensive trade mark portfolio management and strategies.

BUSINESS OBJECTIVES

Selecting A Trade Mark

Trade Mark law creates exclusive rights to use marks that distinguish one's goods or services from the goods and services of others. A trade mark usually comprises one or more words (yes, names too), designs, letters, shapes, aspect of packaging, smells and sounds and must be registerable. We assist clients with the many issues involved in selecting and securing your identity.

Case Study: CrimeNet, an online information service the subject of a national controversy, was threatened with being legislated from existence by a Victorian Attorney General’s proposal for Federal privacy regulation of fast access to previously difficult-to-obtain public information.

In addition, a national intellectual property firm had advised CrimeNet that their trade mark was unregistrable following the rejection of their application to IP Australia.
Nicholas Weston was appointed to act for CrimeNet and immediately responded with a combined strategic and legal approach to both problems. We made policy submissions to a meeting of the Federal Standing Committee of Attorney’s General (“SCAG”) which was considering the issue, having the successful effect that the State Attorney’s General were unable come to an agreement to shut down our client. We also successfully prosecuted the CrimeNet trade mark application through to registration by proving that the mark was well known.

To avoid repeating the experience the client was advised to review its systems to circumscribe highly prejudicial records and to expunge records in accordance with legislative requirements.

Searching

Legal clearance searches are conducted to identify potential conflicts. Before you spend money on an application it is important to see whether other existing marks may present a risk of infringement or bar to registration.

Registration & Maintenance

Our work includes all aspects of Australian and International (Madrid and CTM) applications for registration, challenging refusals, oppositions complemented by renewal reminders and formalities after the first 10 year period is expired and is backed by a global network of agents.

Case Study: A recruitment consultancy specialising in the provision of IT contractors, had failed to register its trade mark and wished to oppose an application by another company specialising in the recruitment of temporary and contract staff. nicholasweston filed an application and opposition proceedings then negotiated a settlement under which the other company abandoned their position, acknowledged that they no longer contested our client’s asserted rights and transferred their trade mark application to our client at no cost. Settlement had the additional benefit of ‘gazumping’ intervening applications for the same trade mark.

Enforcement & Exploitation

So that you maintain and gain revenue from your property, our work includes anti-counterfeiting, infringement and passing off litigation. We document licence and assignment transactions for manufacturing, distribution, marketing and brand exploitation.

Case Study: Acted for importer on a continuing basis, protecting its portfolio of trade marks and copyright from infringement. Client is an international manufacturer and distributor of a certain type of fabric. Protection of its intellectual property portfolio has included obtaining "delivery up" of infringing goods, brochures and marketing material; removal of infringing trade show displays and preventing the manufacture of goods infringing client’s copyright.

Fees

Unlike most other firms, for transparency and ease of reference, we set out our estimated fees in a Fee Schedule. Visit our Trade Marks Attorney website or ask us for a copy.

For further details of our Trade Marks practice visit our Trade Marks Microsite and also The Australian Trade Marks Law Blog of which the firm is publisher