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 the relationships we have with overseas associates we can also co-ordinate trade mark and common law searches in most major 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 prepared detailed submissions.
We also offer a comprehensive range of design registration services. We advise clients on total design protection strategies, including clients in design-rich industries like fashion, food and beverage and homewares. We have particular expertise in the overlap of copyright and designs, which can effectively extinguish all product appearance protection in Australia for unwary companies.
We have a deep understanding of all aspects of domain names and management, including obtaining registration, enforcing domain name rights, advising on a variety of top level domains and advising on and managing numerous domain name disputes.
- 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.
- 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.
- 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.
Awards + Recognition
Ranked Highly Recommended for Prosecution and strategy and Silver for Enforcement and Litigation
"Anybody familiar with the legal landscape in Australia will know the name Gilbert + Tobin – the full-service powerhouse lights up every instruction in which it is involved."
Ranked for Trade Mark contentious and Trade Mark prosecution
Intellectual Property Team of the Year