Our Services

We have a dedicated, and sizeable trade marks group experienced in providing the following services:

>   Watching, searching and advising on the registrability of trade marks

>   Preparation and direct lodgement of applications in Australia and New Zealand

>   Applications for International Registrations under the Madrid Protocol

>   Lodgement through trusted associate firms in other countries, including China and India

>   Responding to examiners’ objections

>   Advising on validity and infringement, and conducting and defending opposition proceedings

>   Advising on, preparing and lodging assignments and licence agreements

>   Keeping clients informed of Australian and international trade marks law developments

>   Managing IP portfolios

For more generic information on Trade Marks, please visit About IP.
 

Searching and watches

Our associated IP research company, IP Organisers conducts trade mark searches directly in Australia and New Zealand. These include comprehensive registrability and infringement searches (including for common law marks) and can include a detailed review and opinion provided by an experienced attorney.

IPO utilises the services of foreign search firms, including Avantiq, a global IP search specialist to arrange searches in other countries. This ensures each search is conducted by an agent with an understanding of local laws and practices in the relevant country. The resulting search reports are reviewed by an experienced Australian attorney and advice sought from foreign associates where potential conflict exists, to enable us to provide a comprehensive and detailed opinion.

Typically, Australian and New Zealand searches would be conducted and reported by phone or email within 48 hours. Urgent searches can be undertaken and reported faster, even same-day (in Australia and New Zealand), where necessary.

IPO conducts regular watches for a number of clients. Our watch reports are provided in electronic form as either a Word or PDF document. Depending on the nature of the watch, our reports may also be provided on a secure password protected website that allows the client direct access. As part of our Portfolio Management Service we offer general watching services for accepted Australian marks which may conflict client’s marks.

For more information on our searching services, please click here.

Australian advice and filings

We act for some of Australia’s largest companies, as well as large foreign multi-nationals. We conduct the full range of trade mark work, from straight-forward filings, to the most complex opinion, opposition and litigation work.

We work with our clients in a variety of different styles depending on their own internal structure and the complexity of the issues.

Urgent matters are treated urgently! We can file an application for a trade mark in Australia and New Zealand on the day of receipt of instructions.

We take the management of conflicts of interest seriously. A review of all professional staff is conducted before new work is accepted to make sure we do not have any conflict. When conflicts arise, we work to protect the interests of our clients.

We do not charge for brief, ad hoc or incidental telephone advice. We don’t want you to avoid phoning us for fear of being billed for minor matters. We generally have no difficulty in distinguishing between this type of ad hoc advice from more substantial advice where a fair charge is appropriate.

Foreign advice and filings

Foreign applications are filed through experienced and reputable associate firms in relevant countries. We have developed excellent working relationships with firms in all countries. These firms handle prosecution, registration and subsequent renewal of a client’s trade marks in their country under our direct supervision and with our reputation at stake.

Prosecution

Our trade marks professionals are experienced at dealing with adverse examination reports and presenting reasoned arguments to examiners in a timely and cost effective manner. Our strategy for dealing with such objections often commences well before filing new applications, even at the preliminary search stage. In this way, potential problems can be avoided from the start, or we can position ourselves better to deal with likely objections.

Opposition/ Non-Use

We work with clients who seek to oppose the registration of trade marks to others, or whose own applications have been opposed by third parties. Similarly we initiate and defend non-use removal actions, a well as providing reminders in relation to non-use vulnerability of registered marks.

Many of our professionals are experienced in preparing argument and appearing before IP Australia and the Intellectual Property Office of New Zealand.

Business Names registration and advice

We assist our clients to register and maintain business names and manage overlap issues with trade marks.
 

Renewals

All properties (trade marks and business names) are entered into our proprietary computer database (POFDocs), that generates reminders well in advance of due dates.

We work with clients to consider which, if any, marks may not require renewal and seek to handle renewals well in advance of deadlines. Many of our clients prefer to receive batchwise renewal reminders, for example for all marks due for renewal over a 3 or 6 month period. For some clients we conduct periodic meetings at their offices to go over the forthcoming renewals, and with them decide the value of maintaining particular properties.