Novel IP

Trade Mark Use

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“Trade Mark Investigations can be complicated.  It is not enough to merely establish use: matters pivot on priority dates, nature of use, identity of the user and how and who applied the trade marks to the goods or services.”

NovelIP Trade Mark Use Investigations give you the information you need to be able to advise your client’s confidently in a range of circumstances and contexts including: 

  • Trade Marks Act 1995 Section 92 Removal Applications
  • Opposition to Registration
  • Defending Rights
  • Confirming/discrediting competitors’ evidence e.g. earlier use of similar trade mark, reputation, etc.
  • Identifying common law trade marks
  • Identifying generic use of your client’s trade mark or that of their competitor
  • Bad faith arguments
  • Trade Practices Act 1974 Section 52 misleading and deceptive conduct claims
  • Generic use undermining trade mark strength

A fully qualified and experience Registered Trade Marks Attorney, who understands the complexity and nuance of trade mark use, will conduct the investigation and prepare a report that is presented in a way that is easily transferable to Statutory Declaration or Affidavit format.

We have been engaged by trade marks attorneys, patent attorneys, barristers, firm-based lawyers and in-house counsel.

We begin our process with a common law trade mark search and our investigations and subsequent reports respond to a frame of reference that includes:

  • Date ranges of use
  • Whether any elements of the mark are being used together or separately
  • The exact nature of goods and/or services that mark is being used for
  • The geographic scope of the trade mark use
  • How the mark is applied to the goods and/or services for example the goods themselves, packaging, merchandising materials, etc.
  • The scale of the use and/or the organisation using the mark
  • The identity of the user – whether it is the owner, a related company or third party under a potential licensing agreement
  • Whether the mark is being used to distinguish the origin of the goods or services dealt or a badge of allegiance
  • How the mark is applied to the goods or services
  • The trade channels through which the goods/services are offered

As an experienced Registered Trade Marks Attorney in Australia NovelIP is also experienced in investigating the use of non-traditional trade marks such as colours, figurative marks, sounds and shapes.  We have provided evidence in a number of high profile trade mark cases including Coca Cola Company v PepsiCo Inc (No 2) [2014] FCA 1287 (28 November 2014).

Through our trade mark investigation services we determine:

  • Period of time a trade mark has been (or was) in use
  • The specific goods and/or services being offered under a trade mark
  • How the trade mark is used (i.e. logo only, words only or additional words)
  • Who is using the trade mark
  • The scale of the operations offered under the trade mark
  • Any geographic limitations to use

NovelIP’s trade mark expertise is not limited to just brand names and logos. We are experienced across a number of different types of signs including:

  • letter
  • word
  • name
  • signature
  • numeral
  • device
  • brand
  • heading
  • label
  • ticket
  • aspect of packaging
  • shape
  • colour
  • sound
  • scent

Our trade mark investigation reports are provided in a format that can be easily transferred into a Statutory Declaration or Affidavit for use by our clients moving forward.

If you would like advice or help on trade mark infringement, please contact us and a trade mark consultant will be in contact to discuss a strategy that meets your objectives and budget.

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Novel IP acknowledges the Gunaikurnai people as the traditional owners of the land on which we are located. We recognise and respect their cultural heritage, beliefs and relationship with the lands. We pay our respects to elders past, present and emerging and thank them for their contributions.

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