How to protect your intellectual property

Engaging a lawyer to help you protect your Intellectual Property (IP) by registering a trade mark, (or acting for you in a dispute involving your trade mark) is an important step in the protection of your rights as a creator and owner of intellectual property.

By failing to safeguard your creations, you are at risk of being copied and used by someone else for their financial gain! The legal processes necessary to protect IP rights can seem overwhelming, however, protecting your rights and livelihood in the competitive commercial marketplace is an essential step in building your business.

Trade marks are commonly used in association with businesses as they often represent a brand or image. They hold exceptional value to business owners and individuals because they are often a marker of quality and expertise in a particular field. Upholding this reputation is important in gaining and retaining customers and this is why it is so important to protect a marker that identifies a source of goods or services.

The following Frequently Asked Questions provide an overview of your rights in relation to trade marks and how you can ensure your intellectual property is protected.

Overview of trade marks

Q. What can be registered as a trade mark?

• The key to registering a trade mark is to ensure that you are safeguarding any feature, or combination of features, that distinguishes your goods or services from those provided by others.
• Examples include: a letter, number, word, phrase, sound, shape, smell, logo, picture or aspect of packaging – or any combination of these features.

Q. When will I need to register a trade mark?

• When you have created a logo or business name and you want to protect it from being used by other people in the course of their business.

Q. What will a trade mark actually do?

• When you have a registered trade mark under the Trade Marks Act 1995 it means that you have the exclusive legal right to use, license and sell your asset (registered Trade Mark) in Australia.
• A registered trade mark will prevent use of your distinctive mark by others in the same category of classes of goods and services.

Q. How will registering a trade mark benefit my business?

• Having a registered trade mark can provide your business with a competitive edge that provides you with brand identity and security.
• A registered trade mark can add value to your business by providing you with a unique marketing tool whilst at the same time, preventing others from imitating your brand.

Q. How can Streeterlaw help?

• Once you have decided that you want to register your brand identifier as a trade mark, you may have questions about the process of registration via IP Australia.
• Online Registration requires you to have an understanding of the classes of goods and services you believe that your brand attracts. At Streeterlaw, our experienced solicitors can guide you through the stages of registration and will advise you on the scope of protection you require.

Q. What happens if my trade mark application is opposed?

Trade mark opposition may occur for a number of reasons. Some of these reasons may include:

• The applicant is not the owner of the mark;
• There is no intention to use the mark;
• The application is made in bad faith;
• The opponent making the objection has already used this mark at an earlier time;
• The application to register the mark was accepted on the basis of false evidence being provided;
• There is an argument that the mark is likely to deceive or cause confusion; and,
• The mark contains false geographical information.

If you have been served with a “Notice of Intention to Oppose” your trade mark, you may wish to seek legal advice as to how best to respond to this. A Notice of Opposition must be served upon you within three months of the day the application was filed with the Trade Marks Office.

If you receive a Notice of Opposition, you also have three months from the day that you were served with it to provide a response. This involves serving and filing evidence addressing the objections made against your trade mark application. Your opponent then has the opportunity to respond with evidence in reply which must be served on you within three months from the day the opponent was served with your response.

Drafting and compiling your response and supporting evidence can be a daunting task. Streeterlaw’s solicitors are particularly skilled in their attention to fine detail and have a strategic approach to defending trade mark applications against opposition.

Q. What happens if my trade mark application receives an Adverse Trade Mark Examination Report?

It generally takes around 13 weeks for a trade mark application to be considered by IP Australia. Following this, IP Australia may determine that your trade mark does not meet the requirements of the Trade Mark Act 1995.

If you receive an Adverse Trade Mark Examination Report, you must produce a response within 15 months of receiving the report, which includes not only your response but also the time taken by IP Australia to consider your response. If you are almost out of time to respond to an Adverse Trade Mark Examination Report, you have the option of requesting an extension of time for your response to be processed. Your extension of time needs to be within 21 months of receiving the Adverse Trade Mark Examination Report.

Streeterlaw solicitors have particular expertise in assessing Adverse Trade Mark Examination Reports and crafting responses that successfully target the objections made against your trade mark.

If you want to protect your emerging logo, business name or associated designs, or have received opposition to the registration of your trade mark, please contact Streeterlaw on 8197 0105. We can help protect your hard work and ensure the longevity of your business.

Written by Jamal Bakalian

After studying a double degree in Law and International & Global Studies at Sydney University, Jamal completed her GDLP at the College of Law. She is currently undertaking her Masters of Law (majoring in Commercial Litigation). Jamal has been practicing Law for 5 years. With a passion for resolving disputes, Jamal is a valuable member of the Commercial Litigation team at Streeterlaw.

Call us on 02 8197 0105 to book an appointment with Jamal Bakalian!