Gilbert + Tobin’s specialist trade marks team handle a broad range of trade mark, trading name, domain name and product design advice, registration and disputes. Our knowledgeable trade mark lawyers adopt an integrated approach, addressing the registration and enforcement of IP rights as part of overall business and marketing goals.
We often undertake urgent trade mark searching and advice, including full availability and IP due diligence searches and reporting for business sales, mergers and acquisitions, corporate restructures and IPOs. Thanks to the relationships we have with overseas associates we can also co-ordinate trade mark and common law searches in most major countries. We also provide advice on unusual trade marks, preparing applications and advice for matters that include 3-D shapes, packaging and colours. We have advised on and filed defensive trade mark applications, formulating market surveys, and prepared detailed submissions.
We also offer a comprehensive range of design registration services. We advise clients on total design protection strategies, including clients in design-rich industries like fashion, food and beverage and homewares. We have particular expertise in the overlap of copyright and designs, which can effectively extinguish all product appearance protection in Australia for unwary companies.
Our trade mark experts advise on all aspects of domain names, including obtaining registration, enforcing domain name rights, various top level domains, and the management of domain name disputes.
Our Trade Mark services:
- Clearance searches, due diligence and risk minimisation: We provide brand clearance searching (using short form reports), advertising clearance and labelling advice, strategic filing advice, IP audits and due diligence, and reporting for business sales, mergers and acquisitions, corporate restructures and IPOs.
- Brand and product protection services (Australia and overseas): We offer a full range of trade mark, industrial design, domain name, company and business name registration services. We directly assist with all matters regarding trade mark law and industrial design registration in Australia, New Zealand and internationally for trade marks under the Madrid Protocol. We manage a number of significant Australian and international brand and design portfolios either directly under Madrid or through our extensive network of overseas associates.
- Portfolio management: Our tailored practice management software (Inprotech) enables us to monitor and manage large registered IP portfolios. We offer clients secure online web-based access to portfolio information and specialised reporting so you can monitor the progress of your registered IP and produce internal line reports.
- IP enforcement: Our trade mark lawyers are part of our broader IP litigation group, so we handle a wide range of pre-litigation IP disputes, providing infringement advice and running cease and desist campaigns. Our team has an excellent track record of securing successful, timely and commercially satisfactory resolutions of IP disputes without litigation. In the event that litigation proves necessary, our team provides seamless service from our experienced IP litigators.
- Commercial IP: We advise clients on a broad range of issues concerning the commercialisation of their IP, licensing, sponsorships, joint ventures and documenting these arrangements.
- We also provide assistance on the full range of contentious trade mark and design matters before IP Australia including oppositions and removal actions, and certification proceedings. We also have extensive experience in the recovery of domain names through negotiated settlements and under auDRP and UDRP proceedings.
Our Trade Mark experience includes:
- Ongoing brand counselling, registration and enforcement (in Australia and internationally) for a range of clients including Shopify, Electronic Arts, Bank of America, State Street Global Advisers, Crescent Capital Partners, Eftpos, Expedia, DropBox, Turner Broadcasting, The Guardian, Demand Media, Blackstone, Edwards Lifesciences, NRMA, Barilla, Healius Health Care, iNova, Woolworths Holdings, Allied Pinnacle, The Entertainment and Education Group (TEEG), Novotech Citigroup, National Roads and Motorists’ Association (NRMA) and Campos Coffee.
- State Street Global Advisers (SSGA) on its high-profile case over the promotion in Australia of a replica of SSGA’s Fearless Girl statue that sits outside the New York Stock Exchange.
- Former Indian cricket captain and cricket legend, Sachin Tendulkar, in a false endorsement and sponsorship dispute with global sports equipment and clothing supplier, Spartan.
- Lavazza in complex trade mark infringement proceedings brought by Cantarella Bros regarding the use of “oro”, being the Italian word for “gold”.
- Neutron Holdings, the operators of the global LIME electric bike and scooter micro-mobility service, on contentious trade mark and Australian Consumer Law (ACL) issues at the Australian Trade Mark Office and Federal Court.
- DoorDash on trade mark, misleading and deceptive conduct, and passing off issues in Australia.
- Red Bull on strategic trade mark and brand issues, including complex trade mark revocation proceedings in the Federal Court for the registration of the BULLSONE trade mark and device by a Korean company, Bullsone; and parallel importation issues in Australia.
- NRMA in a dispute against the Maritime Union of Australia, a division of the Construction, Forestry, Maritime, Mining and Energy Union, involving claims of trade mark infringement, misleading or deceptive conduct and injurious falsehood.
- Google in Google LLC v Weeks  FCCA 3150 where we successfully obtained a quia timet injunction for threatened trade mark infringement and contraventions of the Australian Consumer Law. Google was judicially recognised as a well-known trade mark in Australia in this case.
- Providing targeted IP and brand advice on complex commercial transactions, including: the eBay/Gumtree acquisition of e-commerce platforms, carsguide.com.au and autotrader.com; the purchase of Adore Beauty Pty Limited, a leading online beauty retailer, by a private equity client; Mineral Resources’ US$1.3 billion partial sale of its interest in Wodgina Lithium Project to Albemarle; and KKR’s purchase of a majority stakeholding in Colonial First State (valued at approximately $3.1 billion).
Awards + Recognition
Intellectual Property Team of the Year – winners 2020, 2017, 2015
Ranked gold for Prosecution and Strategy, and silver for Enforcement and Litigation
"Distinguished by deep expertise and commerciality, Gilbert + Tobin commands an excellent reputation on par with top-tier international firms but without the big-firm mentality or hefty fees."
Ranked Tier 1 for Trade Mark Contentious and Tier 3 for Trade Mark Prosecution
Finalists - Best trade mark contentious firm and Best IP transactions advisory firm