Gilbert + Tobin possesses ‘strong acumen, industry knowledge and knowledge of the regulator.' - The Legal 500 Asia-Pacific, 2015

Clients choose our IP group because they want lawyers who are commercial and deliver consistently high levels of expertise and service. Our partners and lawyers are rated amongst the best in the market at devising and delivering novel strategies or responding to new environments and threats. Gilbert + Tobin’s specialist trade marks team handles a broad range of trade mark, trading name, domain name and product design advice, registration and disputes. The team adopts an integrated approach, addressing the registration and enforcement of IP rights as part of overall business and marketing goals.

We often undertake urgent trade mark searching and advice, including full availability searches and IP due diligence searches and reporting for business sales, mergers and acquisitions, corporate restructures and IPOs. Thanks to our extensive network of overseas associates we can also co-ordinate trade mark and common law searches in foreign countries. We also provide advice on unusual trade marks, preparing applications and advice for matters that include 3-D shapes, packaging and colours. We have advised on and filed defensive trade mark applications, formulating market surveys and preparing detailed submissions.

Our firm also offers a comprehensive range of design registration services. We advise numerous clients on total design protection strategies, including clients in design-rich industries like fashion, food and beverage and homewares. Our firm has particular expertise in the area of copyright/design overlap, which can effectively extinguish all product appearance protection in Australia for unwary companies.

Our lawyers also have deep experience handling all aspects of domain names, including obtaining registration, enforcing domain name rights, advising on a variety of top level domains and advising on and managing numerous domain name disputes.

Our services

  • Clearance searches, due diligence and risk minimisation: We provide brand clearance searching (using short form reports), advertising clearance and labelling advice, strategic filing advice, IP audits and due diligence and reporting for business sales, mergers and acquisitions, corporate restructures and IPOs.
  • Brand and product protection services (Australia and overseas): We offer a full range of trade mark, industrial design, domain name, company and business name registration services. We are able to directly assist with trade mark and industrial design registration in Australia and New Zealand and internationally for trade marks under the Madrid Protocol. We manage a number of significant Australian and international brand and design portfolios either directly under Madrid or through our extensive network of overseas associates.
  • Portfolio management: Our tailored practice management software (Inprotech) enables us to monitor and manage large registered IP portfolios. We offer clients secure online web-based access to portfolio information and specialised reporting so you can monitor the progress of your registered IP and produce internal line reports.
  • IP enforcement: Our trade marks team is part of our broader IP litigation group, so we handle a wide range of pre-litigation IP disputes, providing infringement advice and running cease and desist campaigns. Our team has an excellent track record of securing successful, timely and commercially satisfactory resolutions of IP disputes without litigation. In the event that litigation proves necessary, our team provides seamless service from our experienced IP litigators.
  • We also provide assistance on the full range of contentious trade mark and design matters before IP Australia including oppositions and removal actions and certification proceedings. We also have extensive experience in the recovery of domain names through negotiated settlements and under auDRP and UDRP proceedings.
  • Commercial IP: We assist and advise clients on a broad range of issues concerning the commercialisation of their IP, licensing, sponsorships, joint ventures and documenting these arrangements.