Trade Mark & Branding Registration, Strategy & Enforcement

Intellectual Property, Information Technology & Software
Trade Mark & Branding Registration, Strategy & Enforcement IP Contracts Software Licensing, Support & Maintenance IT Contracts & Procurement Mergers & Acquisitions – IP & IT IP Portfolio Management, Strategies & Audits Copyright Commercialisation Advice – IP & IT
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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

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
Williams + Hughes Earns Recertification in Meritas, the Leading Global Alliance of Independent Business Law Firms
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Meritas Welcomes DMAW Lawyers, Adelaide, to the Membership
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Privacy policies and procedures: Australian businesses may have to comply with European GDPR laws
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Peanut Butter Battle of Jars and Trade Marks
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Sabacc Strikes Back: Disney’s Latest Star Wars Dispute
US entertainment monolith Disney is once again flexing its legal muscle in order to protect its evergreen Star Wars brand. ...

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“Made in…?”: Country of Origin Labelling Reforms in Australia
Recent changes to the Australian Country of Origin Food Labelling Information Standard 2016 (“CoOL”) was no doubt influenced by the ...

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Limitations on the Prior Use Defence: Cabcharge Australia Limited v E2 Interactive [2017] ATMO 76 (28 July 2017)
On 30 August 2011, e2Interactive Inc. (the Applicant) filed a trade mark registration application for the following logo (the Trade ...

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Like a Boss: Crossfit Inc v Bossfit Pty Ltd [2017] ATMO 74 (24 July 2017)
CrossFit, an entirely too vigorous regime of exercise as far as we are concerned, is an international fitness business with ...

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Bye, Innovation Patents (and other news): Australian Productivity Commission – The Federal Government Response
The Australian Federal Government’s response to the controversial Productivity Commission’s Inquiry into Intellectual Property Arrangements was released on Friday. It ...

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The Core of the Pink Lady Trade Mark Dispute: High Court of Australia refuses to revisit Apple and Pear Australia Ltd v Pink Lady America LLC [2016] VSCA 280 (23 November 2016)
In April 2017, the High Court of Australia refused special leave to appeal the decision of the Court of Appeal ...

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Fishing for Phishers: Recent UDRPs brought by the UK Commissioners for HM Revenue and Customs
Phishing, the fraudulent act of soliciting money from members of the public through emailed demands, is a scourge, in which ...

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Snakes and No Ladders: Hoser v Bunnings Group Ltd & Anor [2017] FCCA 1624 (13 July 2017)
Mr Raymond Hoser describes himself as a “globally recognised reptile expert” and is a government-licensed wildlife demonstrator. Mr Hoser owns ...

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Who owns Neptune’s fork?: Trident Seafoods Corporation v Trident Foods Pty Limited [2017] ATMO 39 (3 May 2017)
A trident, the indicia of the Poseidon, Greek god of the sea (or Neptune for those of a preference for ...

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Trade marks and graphic design: the bear trap of industry themes
One consideration for graphic designers upon receipt of a brief to design a new brand identity is to mitigate the ...

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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 (Cth) (“the Act”) ...

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OECD/EUIPO Report Reveals Important Details About Most Common Counterfeit Trade Routes
The European Union Intellectual Property Office (EUIPO) and the Organisation for Economic Co-operation and Development (OECD) has recently published a ...

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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 for a trade mark in ...

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Philip Morris Ordered to Pay Australia’s Legal Costs After Failing to Challenge Plain Packaging Laws
The Permanent Court of Arbitration has recently ordered tobacco company Philip Morris to pay the Australian government’s costs, after Philip ...

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The
Team

Dominique Engelter

Principal
08 9481 2040

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