Novel IP

Trade Mark Use

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Trade mark registration in Australia gives business and trade mark owners peace of mind that their brand assets are protected from being copied or otherwise infringed upon in their market.

However trade marking your assets is not the end of the story when it comes to protecting your brand and business owners sometimes find themselves in a situation where your assets: be they physical goods and the way they are designed; your brand, brand name and brand assets including your logo; domain name, social media representation, and other online assets; or colours, shapes, sounds and other ways your brand is represented, are infringed upon, putting your brand integrity at risk.

Trade mark for business is a complex and often overwhelming element of trade mark use for business owners. Infringement of a trade mark can occur in many different and complex circumstances and that’s where our trade mark investigation services come in.

As a Trade Mark Attorney with more than 20 years’ experience in intellectual property and trade mark law, NovelIP can help you with trade mark use and trade mark infringement every step of the way.

Our Trade Mark use investigations are conducted by a fully qualified and experienced Registered Trade Marks Attorney to obtain insight and evidence for any number of reasons such as:

  • 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

All Novel IP investigations are conducted by a Registered Australian Trade Marks Attorney and who understands the complexity and nuance of trade mark use.

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.

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

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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