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IP Insights

What Value Can a Trade Mark Attorney add to Your Business and Intellectual Property


James Leslie-Watt

Are you trying to go it alone on registering trademarks or dealing with a trade mark opposition? if it's due to trying to save on costs without professional advice it will cost you more in the long run. In this article, I highlight six key areas a Trade Mark attorney can add value to your intellectual property.

Many business owners will go it alone on managing and protecting their intellectual property, just like trying to do your own accounting and tax this can be fraught with issues, as there are some important things you may miss that can later become big issues.

So as a professional Intellectual Property Attorney what value can I add to your business?

Undertake an IP audit looking for gaps in the IP that you may have covered and some areas you are not. For example, as a beverage manufacturer are you covered in all aspects of your trademark? This includes not just the name and logo but also the shape of the packaging and even the color.

How are you structured with your IP? Do you have an IP holding company, is all your IP held within your trading company? do you have the correctly drafted and executed license agreement to protect the IP should the trading entity hit a headwind? For example, a fashion retailer I worked with had all their eggs in one basket by restructuring the business into a trading entity and a separate IP entity, the IP remained protected and also facilitated new licensing opportunities.

Deal with an opposition, do you have an opposition to a trade mark application? Do you know how to overcome the opposition? This is something you should never try and handle yourself as you don’t have the protection of professional legal privilege in self-representation, nor do most people understand how to strategically approach opposition proceedings. As attorneys, we spend many hours reviewing oppositions, there may be various avenues under the Trade Marks Act where you can provide an adequate defense based on the facts.

Keep watch of your trade mark and brand portfolio. This is a highly valuable service using AI technology that we offer clients to watch their trade marks and identify any attempt by competitors to register conflicting marks. Without a trade mark watch, you would be surprised just how many conflicting trade marks do slip through the system with no opposition, which later becomes costly.

Clearing a trade mark before registration, whilst you may check the trade marks register, have you considered any common law searches of a conflicting trade mark? Not all trade mark use is listed online and a deep dive is required to know that you are in the clear. This also is a preventative measure to take so you do not end up with IP Australia rejecting your trade mark or face opposition from a third party.

Registering a Trade Mark, have you considered what actual goods or services you re seeking protection? As street wear designer might think Class 25 Clothing, Headgear, and footwear is adequate when they could better structure the application to reflect protection for their actual goods like Printed T Shirts, Printed Hoodies under Class 25.

If you need help and guidance on a new brand or product launch simply reach out via info@legum.auall questions remain in confidence.

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