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Trade Mark Law & Practice

by Philip Macken

Trade marks are an integral component of today’s competitive business environment. The Publication includes a comprehensive and highly practical guide on trade mark law and practice in Australia with helpful information on selecting a suitable trade mark, applying to register a trade mark, dealing with the Trade Marks Office and maintaining a trade mark registration. The Publication includes detailed commentary, cases links, legislation links and precedents covering numerous topics including: What is a Trade Mark?; Before Filing a Trade Mark Application; The Application Process; Examination and Prosecution of Trade Mark Applications; Acceptance & Registration of Trade Mark Applications; and Renewal of Trade Mark Registrations.

ENTIRE COMMENTARY

Overview

What is a Trade Mark?
Unregistered (Common Law) Trade Marks
Benefits of Trade Mark Registration
Registered Trade Marks

Before Filing a Trade Mark Application

Selecting a Trade Mark
Searches

The Application Process - Summary

Filing a Trade Mark Application
- The Application
- The Applicant
- The Trade Mark
- Prohibited Signs
- Graphical Representation of Trade Mark
- Formalities
- Other Considerations
- Series Applications
- Goods and Services
- Minimum Filing Requirements
Divisional Trade Mark Applications
Non-standard Trade Mark Applications
Collective Trade Marks
Certification Trade Marks
Defensive Trade Marks
Considerations for Foreign Trade Marks

Examination and Prosecution of Trade Mark Applications

Overview
- Period for Placing the Application in Order for Acceptance
- Extensions of Time for Prosecution of Applications
- Belated Applications for Extensions of Time
- Deferment of Acceptance
- Expedited Examination

Substantive Examination

Trade mark containing etc. certain signs (s.39)
Trade mark that cannot be represented graphically (s.40)
Trade mark not distinguishing applicant's goods or services (s.41)
- Inherent Distinctiveness
- Acquired Distinctiveness
- Letters and Numerals
- Foreign Language Words
- Geographical Names
- Surnames and Personal Names
- Names of Pharmaceutical Preparations, Veterinary Preparations and Pesticides
- Shapes of Products
Trade Mark Scandalous or its Use is Contrary to Law (s.42)
Trade Mark Likely to Deceive or Cause Confusion (s.43)
Identical etc. Trade Marks
- Comparison of Trade Marks
Comparison of Goods/Services
- Similar Goods; Similar Services
- Closely Related Goods (or Services)
Citation Objections and Infringement
Examination in Relation to Plants, Wines etc
Responding to an Examiner's Report

Honest Concurrent Use, Prior Continuous Use, or Other Circumstances

s.44(3)(a), (b) - Honest Concurrent Use and Other Circumstances
- Honest Concurrent Use - Subsection (3)(a)
- Honesty of the Concurrent Use
- The Extent of the Use
- Other Circumstances - Subsection (3)(a)
- Conditions or Limitations
s.44(4) - Prior Continuous Use
- Evidence of Use Under s.44(3) or (4)
- Notification to Owner of Cited Trade Mark

Decisions and Hearings

Appeal Against Adverse Decision of Registrar

Acceptance of Applications and Registration

Revocation of Acceptance

Term of Registration

Renewal of Trade Mark Registrations

Trade Mark Protection in Foreign Countries

Direct Foreign Filings
Madrid Protocol Applications

Opposition to Trade Mark Applications

Overview
Notice of Opposition
Grounds of Opposition
Extensions of Time in Opposition Matters
Extensions of Time for Serving Evidence in Opposition Proceedings

Further Assistance

Precedents

Last Updated: 03/04/2009

Disclaimer
This Work is a precedent or guide prepared by the Author and is not legal advice. The facts of each case w?ll be different and Users must satisfy themselves that this Work is appropriate for the particular case or circumstances for which they intend to use the Work. Neither the Author nor Smokeball is providing legal advice nor do they warrant that this Work is entirely free of defects or fit for any specific purpose and neither the Author nor Smokeball accept any liability for any errors or omissions in the Work and any loss or damages resulting from or connected with the use of the Work. The Author and Smokeball recommend that Users be familiar with the applicable laws and legal procedures relating to the use of the Work, or otherwise should seek legal advice, before using the Work. Smokeball accepts no liability for the publication of the Work by the Author on the Smokeball System.

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Trade Mark Law & Practice

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