Trade Marks

Your all-in-one solution for seamless brand management and robust trade mark protection, from registration to litigation.

Overview

Our team is a “one-stop shop” for the management and protection of brand portfolios. Our lawyers provide a comprehensive service for major national and international corporations and government departments in relation to their trade marks, from registration through to litigation.

We offer:

  • an efficient, centralised system for providing instructions and receiving advice regarding trade mark matters, saving clients time, money and worry
  • deep experience in all aspects of trade mark management
  • the full resources of one of Australia's biggest intellectual property practices supporting the group.

Our dedicated trade marks group provides a comprehensive service to major national and international corporations and government departments.

As your trade mark portfolio expands, you will spend more time in policing deadlines, preparing necessary forms and responding to letters from the Trade Marks Office. We help our clients manage their brand portfolios by offering an efficient, centralised system for providing instructions and receiving advice regarding trade mark matters, using sophisticated trade-marks database software to monitor deadlines and police our clients' entire catalogue.

Our deep experience in trade mark law includes anti-counterfeiting, contract law, litigation and registration procedures, allowing us to help you through all aspects of trade mark protection, from availability searches through to infringement litigation.

One source called the group “technically superb, also measured, commercial and strategic”, while others reported: “The services delivered by Clayton Utz were of the highest quality, delivered in a timely manner by a dedicated team of professionals. They draw on their extensive experience to provide us with clear guidance, presenting our options in a balanced way, taking into account the limited legal expertise within our organisation, and at all times are sensitive to the need to protect our reputation and be true to our values.” (2023). “The Clayton Utz team are incredibly pragmatic and straight to the point. They distil the key issues swiftly and have a sharp understanding of the law in question.” (World Trademark Review 1000, 2023)

Our professional, co-ordinated, service is tailored to suit your needs, and includes:

  • conducting prompt and thorough trade mark searches;
  • filing and prosecuting trade mark applications, both Australian national applications and international applications under the Madrid Protocol;
  • developing creative strategies to protect valuable new aspects of product packaging and promotion;
  • advising and acting in relation to oppositions and removal actions;
  • developing defensive strategies and conducting infringement actions;
  • preparing trade mark licence and distribution agreements;
  • advising on internal IP protection policies and procedures; and
  • developing branding guidelines and approval processes for all advertising and marketing material, to ensure that your IP is appropriately presented and protected.

Recognition

Managing IP Asia-Pacific Awards: Winner – Trademark Law Firm of the Year (Australia) – 2023 and 2024

Chambers Global:  "The Clayton Utz team drew on their extensive experience to provide us with clear guidance, presenting our options in a balanced way, and at all times remained sensitive to the need to protect our reputation and be true to our values." (2022)

The Legal 500 Asia-Pacific:  Firm Ranking - Band 1 (2019 - 2022)

Australasian Lawyer: Named a 5-Star Intellectual Property Law Firm

Doyle's Guide: Leading Intellectual Property & TMT law firms - WA (2019)

IAM Patent 1000 - IP Litigation Firm - Silver: National law firm Clayton Utz resolves highly complex contentious matters with aplomb. Renowned for its “very good work”, the group dispenses expert advice on Australian aspects of international patent disputes. A superb reputation has earned it the trust of four of the world’s largest pharmaceutical companies. (2021)

Lawyers Weekly Australian Law Awards: Intellectual Property Team of the Year (2018 and 2022)

Managing Intellectual Property IP Stars: 

  • Trade Mark Prosecution: Tier 2 (2022)
  • Trade Mark Contentious: Tier 2 (2022)

World Trademark Review 1000: ranked as "Gold" in Enforcement and Litigation (2023) and ranked as "Silver" in Prosecution and Strategy (2022-2023)

Our team to support you

Toolkits

Insights
Birkenstock shows that it is possible to secure trade mark protection over the shape of popular product designs
25 Sep 2024 | Article
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New test, new doubts on royalty withholding tax and diverted profits tax from Pepsi appeal
27 Jun 2024 | Article
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New WA Government Intellectual Property Policy focuses on responsible management and exploitation of IP assets
24 Jul 2023 | Article
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Media Release: Clayton Utz takes out top awards at 2023 Managing IP Asia Pacific Awards
7 Jul 2023 | Media Release
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Reputation and consumer confusion in trade mark infringement proceedings: the High Court weighs in
16 Mar 2023 | Article
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US Court finds in favour of Hermes in NFT Birkin stoush
2 Mar 2023 | Article
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Fake websites on the rise: what to do when fraudsters imitate your business
21 Dec 2022 | Article
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Two Bored Apes walk into an NFT marketplace… and test the limits of intellectual property rights
15 Nov 2022 | Article
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Miramax and Tarantino settle Pulp Fiction NFT dispute leaving NFT intellectual property issues in the valley of darkness
21 Oct 2022 | Article
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Finished! Somat successful in dishwashing tablet trade mark washup
28 Sep 2022 | Article
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Better be quick! Deadline to make a priority application for a corresponding .au direct domain name is 20 September 2022
31 Aug 2022 | Article
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The war on intellectual property in Russia
24 Jun 2022 | Article
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