Some of the best known companies and household brands can attribute their success to the protection of their trade marks. When used effectively, trade marks powerfully communicate ideas and information and help build loyalty and value for a business. Businesses can gain substantial commercial advantage by registering their brands and other marketing tools.

Griffith Hack's professional staff understand the importance of trade marks and take the time and effort to understand our clients' businesses, their marketing strategies and the markets in which they compete. Our trade mark specialists are a national, integrated team of trade mark attorneys, intellectual property lawyers and licensing consultants who know how to protect and build business assets through the trade mark system.

We match the right people within Griffith Hack to ensure that we deliver the highest calibre and most cost-effective services. Our trade mark expertise covers a broad range of industries including food, beverages, entertainment, media, telecommunications, IT, electronics, textiles, fashion, automotive, finance, chemicals, pharmaceuticals, mining, manufacturing and retail.

Griffith Hack offers services that are commercially focused and pro-active. We provide clients with timely and clear advice which sets out options and alternatives, to allow clients to make the right commercial decisions in managing their trade marks. Our professionals anticipate opportunities and problems and help clients position themselves favourably against competitors. We are at the forefront of the significant developments in trade mark law and practice, and can find creative ways to exploit these developments for the commercial benefit of clients.

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Our services include:

• Registrability and infringement searches
• Filing and prosecuting Australian and foreign trade marks
• Investigating and advising on infringement and the validity of registrations
• Trade mark oppositions, non-use and revocation actions
• Dispute resolution and litigation
• Trade mark watching, monitoring and surveillance
• Defending trade mark registrations
• Trade mark management and strategising
• Trade mark due diligence and audits
• Trade mark licensing and commercialisation

Many Griffith Hack clients operate global businesses. We are able to service our clients' trade mark needs around the world through our established network of associates. The special relationships developed by Griffith Hack with many attorney firms in key foreign markets provide ongoing, substantial benefits to our internationally focused trade mark clients.

Trade Mark Searching and Watching

Griffith Hack is often called upon to advise on the registrability of proposed trade marks and to screen such trade marks for conflicts with existing trade marks. Our professional staff work closely with our clients and their marketing agencies on the creation and adoption of new trade marks.

Searches are necessary to ensure that a new trade mark does not infringe the rights of another person and to ensure no prior trade marks exist that could prevent registration. A search detects conflicting trade marks before costs are incurred in packaging, labelling or promotional materials. An early search may save a client the considerable expense of having to withdraw and modify such material, not to mention the costs involved in a possible infringement action.

Griffith Hack's team of specialist trade mark searchers work closely with our professional staff to ensure clearance searches are carried out and reported promptly and cost-effectively. Our in-house searchers are skilled at searching Australian and international trade mark databases. Griffith Hack can also call upon our network of foreign associates to carry out detailed searches in all foreign markets.

One of the key aspects of effective trade mark management is knowing what competitors are doing and where brands are being infringed or diluted. Griffith Hack provides a full range of Australian and international watching services for clients, including watches of particular competitors, of classes of goods/services and of trade marks. We work with clients to devise watching strategies that provide suitable protection for key brands at a modest cost.

Infringement

The growth in the value of trade marks creates an increasing demand for the protection of these valuable assets in the market place. Businesses that value their trade mark assets are increasingly sensitive to the damage caused by unchecked infringements.

Griffith Hack is active in protecting clients' trade marks through immediate action, including issuing cease and desist letters and taking court proceedings if necessary. Our litigation lawyers are experienced in seeking relief from the Courts for trade mark infringement and for the related actions of passing off and contravention of the consumer protection provisions of the Trade Practices Act. Our focus is on expeditious and cost-effective resolution of disputes, including the use of mediation to settle disputes where suitable.

In order to combat trade mark piracy and counterfeiting for our clients, Griffith Hack lodges trade mark and copyright seizure notices with the Australian Customs Service. We then provide a full range of services in managing the seizure notices, conducting inspections of seized goods, and issuing court proceedings where an importer fails to forfeit the infringing goods.

Our litigators are also skilled at defending trade mark infringement proceedings and in negotiating favourable settlements of claims against our clients.

Trade Mark Audits and Due Diligence

An IP audit/due diligence is a comprehensive analysis of a company's IP assets, including its trade marks, which identifies and documents those assets for future use. Often, businesses fail to recognise, identify or protect their less obvious trade marks and other marketing tools such as shapes, aspects of packaging, colours, sounds and scents. IP and trade mark assets can be put to work for the ultimate success of a business. This analysis enables the implementation of long-term IP management which ensures that IP assets are:

• Protected to ensure future value as an asset and safeguarded as a valuable revenue stream and provide a competitive edge.
• Brought to account on a balance sheet, thereby boosting the net worth of a business.
• Increasing a business' profitability through licensing, selling or raising finance against them.

Our experienced team interviews and works with the appropriate people in a client's organisation and examines key documentation before compiling a report on the current state of the IP and trade mark assets and a list of recommended actions. The review is framed within the context of the client's industry and the commercial environment in which it operates.

Trade Mark Licensing/Transfer

The increasing emphasis on the attractive force of trade marks has fuelled an explosion in licensing and franchising. Companies whose brands are used by licensees and franchisees turn to Griffith Hack for the negotiation and drafting of clear, effective and workable agreements and for advice in relation to licensing issues and disputes. A well-drafted license agreement is a pre-requisite to a successful licensing programme.

Griffith Hack's transactional lawyers advise on all aspects of the commercialisation and transfer of trade marks, including competition law (anti-trust) issues and the impact of the Franchising Code.

Trade Mark Renewals

Intellectual property offices in most countries, including Australia, charge periodic fees to keep trade marks in force.

In Australia, the renewal fees for a registered trade mark are payable every 10 years, with the first renewal being due 10 years from the filing date of the trade mark.

It is imperative that deadlines for paying renewal fees are closely monitored. Failure to pay a renewal fee by the required deadline may result in loss of intellectual property rights.

Griffith Hack can refer the details of clients' applications to our associate firm, Computer Patent Annuities Limited Partnership (CPA). CPA is a specialist renewals organisation which attends to renewal matters for clients throughout the world. CPA sends reminders and quotations to clients, takes instructions from them, and attends to the payment of their renewal fees.

Filing Trade Marks within Australia

A trade mark may comprise words, letters, digits, logos and devices, or any combination of these. In Australia, as well as in many other countries, it is now also possible to register as trade marks other marketing tools, such as shapes, aspects of packaging, colours, sounds and scents. Indeed, any sign that distinguishes one trader's goods or services from those of another can be registered as a trade mark.

Griffith Hack offers a full range of services relating to the filing, prosecution and registration of trade marks. We work with clients to devise cost-effective strategies for protecting their trade marks in the markets in which they operate around the world.

Griffith Hack has a proven track record in the successful prosecution of complex and difficult trade mark prosecution cases, such as the registration of shapes, aspects of packaging, colours and descriptive word marks.

Trade Mark Oppositions, Non-use and Revocation Actions

The effective management of trade mark oppositions is vital to achieve and maintain a competitive advantage through trade marks. Opposition proceedings can be taken against applications to register trade marks that are the same or similar to an existing trade mark, whose use may cause confusion or which are otherwise contrary to law. Oppositions are necessary to prevent the registration of trade marks which may confuse the public, dilute the distinctiveness of an existing mark, or adversely impact on the business of an existing trade mark owner.

Once registered, a trade mark can also be removed from the Register by a non-use action (if the registered mark has not been used for a continuous period of three years) or by a revocation action (if the trade mark was wrongly registered or wrongly remains on the Register). Such actions often form part of a broader trade mark strategy, for example in assisting another person to secure registration for the same or a similar mark.

Griffith Hack's attorneys have a proven track record in the successful conduct of oppositions, non-use and revocations actions, including complex and difficult matters. Our attorneys have considerable experience in preparing evidence and legal submissions, attending Trade Marks Office hearings and arguing in support of our clients.

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