Trade marks guidance

Clear, obtain and enforce trade marks directly in Australia and NZ, and through a global network of trusted agents

Uncommon experience at the intersection of IP and business

Nicholas Weston provides exceptional guidance on trade marks, helping our clients select, build, protect, enforce, and monetise their brands and trade marks portfolios in Australia and overseas. Named alongside much larger forms by Managing IP Magazine for Trade Marks Contentious and Trade Marks Non-Contentious several times over the years, we focus on helping our clients strategically develop, maintain, enforce, and grow their worldwide brand portfolios by providing them with patent, trademark, copyright, and domain protection and strategic counselling.

Firm founder, Nick Weston, has more than two decades of experience managing trade mark portfolios for some of Australia’s most well-known brands and worked on virtually every trade mark issue imaginable, for established and emerging businesses of every size, with the aim of increasing balance sheet value and return on investment.

  • Conduct and advise on hundreds of preliminary, full, and design trade mark searches every year
  • Advice on merchandising clearance programs, band trade marks – the curious afterlife of old bands is a particular specialism of the firm, having acted in many of these cases involving household name acts
  • Handle complex clearance and infringement opinions
  • Resolve most matters with letter of demand/cease and desist letters
  • Enforce trade marks, passing off cases and misleading and deceptive conduct cases as well as design enforcement programs for brand owners with infringement issues in Australia
  • Draft and negotiate documents that involve trade mark rights and copyright works, including co-existence agreements, licence agreements, deeds of assignment and settlement deeds.

Clearance and Advice

  • International trade marks clearance reports
  • Clearance reports for book titles and band names
  • Character names, likeness and rights
  • IP security interests
  • Lodging Notice of Objections with the Department of Immigration and Border Protection (customs notices) so that infringers can be stopped at the border
  • Design registrations and advices
  • Fair use advices for copyright works and trade marks

Prosecution and Registration

  • Drafting, filing and prosecution of trade mark applications
  • Responding to adverse examination reports from IP Australia
  • Managing international trade mark portfolios
  • Lodging trade marks customs notices with the Australian Department of Immigration and Border Protection
  • Filing and prosecution of post registration documents
  • Objecting to other applicants’ applications for a trade mark
  • Rectification of the register proceedings and removal from the register proceedings for non-use and on other grounds
  • Appearances before the Trade Marks Tribunal
  • Appeals from application refusals before the Administrative Appeals Tribunal
  • Copyright permissions, assignments, licences, and due diligence enquiries

What can we do for you?

Like most M&A lawyers, we offer technical competence in M&A. We combine this with decades of experience on-the-tools, gained working inside and acting for mid-market tech companies (listed, unlisted and owner operated), giving us an ability to anticipate menaces to navigation and guide you through the options on the path to closing, as we have for others, many, many times previously.