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This subject builds on the material covered in the Trade Marks and Unfair Competition subject. Trade Mark Practice focusses on the procedures and practices of the Australian Trade Marks Office in obtaining and maintaining registered trademarks, and with the relevant aspects of New Zealand trade mark procedures and practice where these are different from those in Australia. This subject is thus particularly valuable for students wishing to prosecute trade mark applications through those offices. The rights, privileges and responsibilities of a patent attorney and a trade marks attorney are also covered in the wider context of attorneys’ professional conduct. The lecturers in the subject have extensive experience in the obtaining of trade mark registrations and the subject meets the Trans-Tasman IP Attorneys Board (TTIPAB) requirements for ‘Topic Group B’ and ‘Topic Group D’.
The emphasis of this subject is on the documentation, procedures and practice of the Australian Trade Marks Office and the relevant aspects of New Zealand trade marks procedure and practice.
Principal topics include:
- The respective national offices, registers and official journals
- Determining the availability of a trade mark for use and registration, searching the Trade Marks Office database and other search options
- Applications for registration, including Madrid Protocol, Convention, divisional and series applications
- Examination and acceptance of applications
- Opposition to registration
- Initiating and opposing applications to remove a trade mark for non-use
- Amendment of applications and other documents; revocation post-registration
- Obtaining registration and renewal of registration
- Obtaining extensions of time
- New Zealand trade mark practice (relevant issues)
- Exploitation, including assignments and registration of security interests
- Parallel importations and Customs seizure
- International conventions and initiatives, and protecting trade marks in foreign countries
- The rights, privileges and professional responsibilities of a patent or trade mark attorney.
Intended learning outcomes
A student who has successfully completed this subject will:
Have an advanced and integrated understanding of
- the principles and options for obtaining registration of a trade mark overseas; and
- the practices and procedures for obtaining and maintaining the registration of a trade mark in both Australia and New Zealand;
- the rights, privileges and responsibilities of a patent attorney and a trade marks attorney
They further will:
- Be an engaged participant in debate regarding emerging and contemporary issues in this field, such as the effect of recent regulatory amendments in the opposition procedures and the implications of closer cooperation between Australia and New Zealand
- Be able to critically examine, analyse, interpret and assess the effectiveness of these practices, procedures, principles, options, rights, privileges and responsibilities
- Have an advanced understanding of the application of the legal principles and rules of practice in the context of advising and assisting clients with the preparation of their trade mark applications, initiating or defending any opposition or non-use removal applications, and the maintenance and exploitation of their' rights, once granted
- Have a sound appreciation of the factors and processes driving governmental revisions of the legal framework
- Have a sound understanding of practice issues arising in an international and comparative context
- Have the communication skills to clearly articulate and convey complex information regarding practice issues to relevant specialist and non-specialist audiences, including clients
- Have the cognitive and technical skills to generate critical and creative ideas relating to practice issues in this area, and to critically and independently evaluate existing legal theories, principles and practices
- Have the cognitive and technical skills independently to examine, research and analyse existing and emerging issues relating to trade mark practice
- Be able to demonstrate autonomy, sound judgment and responsibility as a practitioner and learner in the field of trade mark practice.
Last updated: 3 November 2022