Mallesons’ trade marks and brands team is renowned in Australia and internationally for its expert and integrated approach to the protection and enforcement of trade marks, brands and mastheads.
Our team provides strategic legal advice to the owners of some of the most valuable Australian and international brands including adidas, AMP, Arnott’s Biscuits, ASX, Bodum, BlueScope Steel, Cadbury, Campbell Soup Company, Lion Nathan, Microsoft, National Australia Bank, Nestlé, nudie, Pacific Magazines, Starbucks, SPI Group (Stolichnaya), Sensis, Tabcorp, Time Inc and Westfield.
An integrated and holistic approach to protection and enforcement
We recognise the significance of trade marks, brands and mastheads as some of the most strategically important assets on the corporate balance sheet. With this in mind, we provide an integrated trade mark management, advisory and litigation practice. This covers pro-active protection (brand clearance, trade mark prosecution, portfolio management) and enforcement (oppositions, disputes and litigation). The elements of our integrated practice include:
Cutting edge advice on new and innovative areas for trade mark protection
In additional to traditional trade mark protection for words, logos and domain names, Mallesons provides cutting edge strategic advice focussing on the emerging areas of COLOUR and SHAPE trade marks and product “look and feel” in passing off cases. Mallesons’ team includes trade mark attorneys with experience in US and international trade mark prosecution, former IP Australia trade marks examiners and arbitrators on the World Intellectual Property Organisation (WIPO) Panel for the resolution of domain name disputes.
Mallesons’ clients are able to take advantage of our leading-edge technology for efficient trade mark portfolio management via Mallesons Trade Marks Online, an innovative web-based tool which enables clients to access up-to-date details of their trade mark portfolios from anywhere in the world.
A winning track record in brand related litigation
Mallesons’ trade mark team includes market leading partners who are among Australia’s pre-eminent IP litigators. We have run many landmark brand-related cases, commonly involving trade mark rights, passing off and misleading and deceptive conduct (s52 of the Trade Practices Act). We have also represented clients in obtaining and executing Anton Piller (search and seizure) orders, Mareva orders, “stop the launch” orders, and other urgent interlocutory orders in trade mark litigation using streamlined procedures which we have developed to enable these applications to be pursued promptly and efficiently.
We advise on and manage enforcement and anti-piracy campaigns for a number of clients including adidas, Bodum, Microsoft, Sony Computer Entertainment, Starbucks and Timberland. Our extensive experience in this area ensures the efficient and effective management of these campaigns, from market monitoring and advice on initial leads, to the conduct of litigation and the provision of advice on related publicity. We also act for a wide range of clients in pursuing legal action in relation to seizures made by the Australian Customs Service under Notices of Objection lodged by our clients under the Trade Marks Act.