Services

Intellectual Property

Advising new and existing businesses on all aspects of the protection, commercialisation, exploitation and management of intellectual property.

Services Experience People Publications Trade marks

 

We are the market leader for Intellectual Property (IP).

We are one of the only Australian law firms to boast both IP lawyers and Patent attorneys. The advantage that brings to clients is that we can fully service the most complex matters using a multidisciplinary approach. In addition, being a full-service commercial law firm, we are able to draw upon the skills and experience of other experts relevant to your IP matter, including tax, M&A and structuring specialists

When it comes to IP, we provide a full spectrum of expertise spanning trade marks, patents, designs copyright and plant breeder’s rights.

With significant domestic and international experience, HopgoodGanim Lawyers' IP team advises start-ups, large enterprises and government bodies on all aspects of the protection, commercialisation, exploitation and management of IP.

Several of our IP lawyers and patent attorneys also have scientific or technical qualifications, including information technology, engineering and chemistry. Together, we have the capability to:

  • prepare and draft patent, design and trade mark applications and to advise on patent, design and trade mark prosecution, domestically and internationally;
  • assess the validity of intellectual property rights, including advising on patent novelty and inventiveness;
  • commercialise intellectual property, including conducting IP due diligence, licensing transactions and the most complex public/private collaboration and research agreements; and
  • enforce your intellectual property rights or to vigorously defend claims brought against your business.

No matter what the challenge, our award winning IP team is here to work closely with you and guide you through the process. HopgoodGanim Lawyers was recommended in Doyle’s Guide to Queensland’s Leading Intellectual Property and Telecommunications, Media and Technology Law Firms, 2016, 2015 and 2012. Hayden Delaney was also personally recommended as a Leading lawyer in each of these categories. HopgoodGanim Lawyers and Hayden Delaney are also recommended as leaders in Prosecution and Strategy category for trade marks in the WTR 1000, 2016 and 2017 editions.

IP services

IP protection, advisory and management: trade mark, patent and design registration; IP portfolio management; trade mark, patent and design clearance searching and registrability advice; freedom to operate searches and advice; and IP infringement and validity advisory services.

IP commercialisation: We can help you to identify key IP assets in your business in order to leverage those assets for commercial purposes; IP due diligence; drafting and negotiating the most complex licensing and technology-transfer transactions; research commercialisation; R&D service agreements; technology distribution (OEM and consumer based distribution licensing arrangements).

IP enforcement and defence: Acting in IP disputes including cease and desist letters; patent and trade mark oppositions in Australia and New Zealand; patent, trade mark, design and copyright litigation in the Federal Court.

Trade mark services

  • Trade mark clearance searches on a world-wide basis
  • Trade mark registration and prosecution in Australia, New Zealand and internationally
  • Trade mark monitoring and watching services
  • Trade mark oppositions
  • Trade mark licensing arrangements (including franchising)
  • Trade mark litigation

Patent services

  • Patentability advice, including novelty searches and opinions on patentable subject matter and inventiveness
  • Drafting patent specifications and prosecution patent applications in Australia and New Zealand, as well as PCT applications
  • Patent due diligence in commercial transactions, include patent title and the breadth of the patent claims
  • Patent infringement and validity advice
  • Patent oppositions
  • Patent litigation

Copyright services

  • Advice on subsistence and ownership of copyright works and other subject matter
  • Drafting and negotiating copyright transfers and licenses
  • Copyright infringement advice
  • Copyright litigation
  • Advising CQUniversity on a research alliance agreement with University of Queensland, the Queensland University of Technology and Curtin University under the new Collaborative Research Networks program run by the Australian Government’s Department of Innovation, Industry, Science and Research - the first of its kind in Australia. 
  • Advising Indigo Telecom on its national television and viral internet advertising campaign “No More Black Spots”. The matter involved providing advice on compliance with Australian Consumer Law and the Telecommunications Consumer Protection Code. 
  • Advising Village Roadshow Theme Parks and Village Roadshow on a suite of international licensing agreements with MTV Networks in relation to brand and trademark rights related to MTV’s Nickelodeon characters. 
  • Advising Michael Hill Jeweller on a suite of changes to its national and international advertising practices in light of the changes brought in by the Australian Consumer Law. 
  • Advising Brisbane Racing Club on intellectual property and competition issues arising from negotiations with Queensland Racing and Sky Channel for a Media Rights and Broadcasting Agreement. 
  • Managing and advising on the intellectual property aspects of a multi- billion dollar potential acquisition of a large listed Australian coal mining company. 
  • Successfully acting for Digga Australia in the landmark Federal Court appeal against the decision of Greenwood J in Norm Engineering Pty Ltd v Digga Australia Pty Ltd [2007] FCA 761. The decision is one of only two significant decisions in this area of law in the 2007 - 2009 years.
  • Acting for Microsoft Corporation in several dealership test purchase programs in Queensland, South Australia and Western Australia. The matters involved acting against small to medium computer dealerships for providing infringing copies of Microsoft programs to end users. 
  • Acting for Cook Medical on a multitude of technology commercialisation agreements, including licence agreements, prototyping agreements, manufacturing agreements, along with general intellectual property advice. 
  • Acting for Gazal Corporation regarding a trade mark and copyright infringement proceedings brought in the Federal Magistrates Court by Hells Angels Motorcycle Corporation (Australia), arising out of various advertising and clothing artwork used by Gazal in relation to its former brand, Mambo. 
  • Advising on music licensing arrangements for Michael Hill Jeweller, including the coordination and management of licences to publically perform and reproduce music tracks as background music in stores in Australia, New Zealand, the United States and Canada. 
  • Advising One Harvest on plant breeders’ rights and their enforceability against various parties involved in mango farming operations in Queensland and the Northern Territory, in the wake of the Timbercorp collapse.

 

Trade marks come in a range of different forms which can be made up of several different elements such as plain words, stylised words and logos (or a combination of all three known as “composite marks”). A registered trade mark provides the owner with protection for the trade mark in respect of the goods and/or services specified.

Some of the key benefits obtained from registering a trade mark in Australia include that:

  • you have exclusive rights across Australia to use your registered trade mark as a brand name for the specified goods and/or services;
  • you have the exclusive right to authorise others to use your registered trade mark for the specified goods and/or services;
  • you have proprietary rights in your registered trade mark – it is personal property which can be sold or licensed;
  • you can give Australian Customs a notice of objection against the importation of infringing goods;
  • you are in a much stronger position to stop others from using your trade mark as their brand name in relation to the same or similar goods and/or services – a trade mark registration serves as a direct ticket to take legal action against others who infringe your brand in respect of the same or similar goods/services; and
  • you can use the ® symbol on your goods and/or in promotion of your services. 

Filing your trade mark

We offer a range of our trade mark filing work on a fixed fee basis. This helps give certainty as to what the main stages of the application process will cost. Please contact us for a copy of our current trade mark fee schedule.

When filing a trade mark application, the owner must specify what goods and services it is seeking protection for, and the costs depend largely on the number of Classes applied for. Your trade mark application may include claims in one or multiple Classes, depending on the extent of protection required and the range of goods and/or services that you provide to the market under the trade mark.

If you decide to apply for registration, our experts will draft a comprehensive specification designed to capture all of the goods and services that you want to protect your trade mark for in Australia.

Timing

It is important to note that, to get the most out of your eventual trade mark registration, it is imperative that we carefully draft the specification to cover off your current and future business activities. The pre-filing process can take some time to ensure we file the best application for your trade mark and commercial intentions. Investing in your brand at the beginning is as important as post-registration enforcement.

Sometimes if trade mark applications are met with challenges, the process may take longer which potentially results in additional costs.

However, one way to get a good idea of any potential problems (before you incur filing costs) is to conduct searches prior to filing your application to find out whether or not there are identical or similar trademarks already registered or applied for by third parties.

Did you know?

Registration of a trade mark in Australia gives the owner exclusive rights to use that trade mark in Australia in relation to the goods and/or services claimed. The only way to obtain these special exclusive rights is through trade mark registration. A trade mark registration is distinct from a business or company name registration which does not grant the holder any proprietary rights.

Your brand

Before filing a trade mark application for a new or currently unprotected trade mark, we suggest having searches conducted of the Trade Marks Register for identical and similar trade marks in the same or similar Classes. Searching gives you an idea of your application’s predicted costs, prospects of success in terms of achieving registration, how easy or difficult the road to registration will be and whether use of your trade mark in Australia infringes third party rights.

Our team

Whatever your intellectual property or trade mark protection needs, whether you’re looking to consolidate your portfolio, leverage its value for growth and expansion or protect your rights, we have the intellectual property specialists and experience to help you make the right commercial decisions.

Our intellectual property specialists have significant international experience working with brands of all types and sizes. This experience, together with HopgoodGanim’s full-service offering, enables us to provide a broad range of solutions, tailored to meet your business needs and deadline demands.

Clients choose HopgoodGanim because we provide strategic, cost-effective and commercial IP solutions.

No matter what the challenge, our award winning Intellectual Property team is here to work closely with you and guide you through the process. HopgoodGanim Lawyers was recommended in Doyle’s Guide to Queensland’s Leading Intellectual Property and Telecommunications, Media and Technology Law Firms, 2016, 2015 and 2012. Hayden Delaney was also personally recommended as a Leading lawyer in each of these categories. HopgoodGanim Lawyers and Hayden Delaney are also recommended as leaders in Prosecution and Strategy category for trade marks in the WTR 1000 - 2016 and 2017 editions.