Trade Marks

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

Overview

Our team provides a comprehensive range of services for the management and protection of brand portfolios for both major national and international corporations and government departments and instrumentalities in relation to their trade marks, from brand selection/clearance, through the registration process to enforcement and, if necessary, litigation.

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

One source called Clayton Utz “impeccable, with the utmost quality and consistency”, while another reported: Clayton Utz “can always identify clients’ needs and develop the most pragmatic and cost-effective solutions, just like the perfect grease to make the squeakiest wheels run smoothly!” (World Trademark Review 1000, 2024).

Our professional, co-ordinated services are tailored to suit your needs, and include:

  • developing and advising on brand protection strategies;

  • conducting prompt and thorough trade mark searches;

  • filing and prosecuting national trade mark applications in Australia and New Zealand as well as international applications under the Madrid Protocol for protection of marks in overseas markets;

  • advising and acting in relation to oppositions and non-use removal actions before the Registrar of Trade Marks (IP Australia);

  • developing defensive strategies and conducting infringement actions;

  • drafting, negotiating and advising on trade mark licence and distribution agreements;

  • advising on intra-company 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

  • The Legal 500 Asia-Pacific: Firm Ranking - Band 1 (2019- 2024)

    • "Quick, informative and no-nonsense advice." (2024)

    • "The team at Clayton Utz can certainly handle a large volume of work, and are very responsive whenever we need assistance. Despite this, the team provides a highly specialised and bespoke service. They are very creative and strategic." (2023)

  • Chambers Global: Firm ranking – Band 2 (2019-2024):

    • “Clayton Utz offers broad-based IP expertise including trade mark and copyright protection, with frequent involvement in cases featuring an international element. The team handles complex patent matters for a diverse clientele, most notably in the pharmaceutical, technology and telecom sectors, and is active in both contentious and non-contentious matters, though particularly strong on disputes. The firm offers significant expertise in design infringement, passing off and misleading conduct cases. Notable clients include Novartis, Accent Group and Toyota.” (2024)

  • World Trademark Review 1000: ranked as "Gold" in Enforcement and Litigation and ranked as "Silver" in Prosecution and Strategy

    • 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.”

    • “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.”

    • accorded "luminary" status to two senior trade mark lawyers.

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

  • Doyle's Guide: Leading Intellectual Property & TMT law firms

    • Tier 1 – WA & QLD

  • Lawyers Weekly Australian Law Awards: Intellectual Property Team of the Year

  • Managing IP Asia-Pacific Awards:

    • Winner - Trademark

  • Managing Intellectual Property IP Stars:

    • Trade Mark - Law Firms: Tier 1

    • Trade Mark Prosecution: Tier 2

    • Trade Mark Contentious: Tier 2

  • Lawyer Network Annual Awards: IP Litigation Law Firm of the Year in Australia; Trademark Law Firm of the Year in Australia

Experience

The a2 Milk Company Limited: Acting for The a2 Milk Company Limited (dairy company dual listed on the NZX and ASX) in various IP matters including four Federal Court appeals from decisions of the Trade Marks Office (each successful) and two Federal Court proceedings concerning trade mark infringement and rectification issues (judgment reserved).

Sportsbet: Acting for Sportsbet in a range of very significant matters including the management of Sportsbet's global trade mark portfolio. We successfully acted for Sportsbet in defence of a trade mark opposition concerning Sportsbet’s BET WITH MATES product. We are also currently acting for Sportsbet in more than 20 trade mark oppositions against one of Sportsbet's main competitors.

Accent Group Limited: Accent Group is Australia's largest footwear retailer. It has over 900 retail stores across more than 34 brands, and more than 35 online platforms. Those brands include The Athlete's Foot, Platypus, Hype DC, Nude Lucy and Stylerunner. We have managed Accent Group's very extensive global trade mark portfolio since 2018. We are also currently acting for Accent Group's in Federal Court trade mark proceedings against an alleged infringement of the HYPE trade mark.

Toyota Australia and Toyota Japan: Acting for Toyota against over 150 parties which have been misusing Toyota's trade marks (and often also copyright works). This is undoubtedly one of Australia's most significant trade mark enforcement campaigns and has delivered outstanding outcomes for Toyota. Where an acceptable out-of-court settlement cannot be achieved, we represent Toyota in Federal Court proceedings against such parties. We have secured significant settlements for Toyota in eight such proceedings, and are currently acting for Toyota in three ongoing proceedings.

Clayton Utz is also assisting Toyota as part of its productive relationship with Border Force (the Australian Government customs agency). As a result of those notices, Border Force has intercepted a range of infringing products bound for the Australian market. We also mange Toyota Motor Corporation Australia's trade mark portfolio, which includes disputes and oppositions from time to time.

PDP: Acting for PDP, the leading Australian manufacturer of chilled desserts in Australia and owner of the market leading WICKED SISTER brand. WICKED SISTER is PDP's most valuable intellectual property. We have previously assisted in high profile infringement proceedings on behalf of the company. More recently Clayton Utz has been assisting in prosecution and general IP advice including in relation to a number of high profile collaborations.

Kokopod: We defended the operators of the Kokopod business in Federal Court proceedings commenced by Koko Black. In the proceeding, Koko Black alleged that our clients had infringed their registered trade mark rights, engaged in passing off and contravened the Australian Consumer Law. The matter settled on confidential terms.

Pokemon: We defended Pokemon Pty Ltd (and its sole director) in Federal Court proceedings commenced by The Pokemon Company International Inc. This case was (to our knowledge) the first of its kind in Australia to deal with IP issues in the context of NFTs (non-fungible tokens).

Monash University: Australia’s largest university, operates globally with campuses, centres, and programs across Asia, Europe, and beyond. Clayton Utz supports Monash’s international growth by securing trade mark protection for its core brands, including MONASH, THE ENDANGERED GENERATION, and CLIMATEWORKS CENTRE, as well as initiatives like the World Mosquito Program and the Low FODMAP Diet. We also assist with trade mark disputes and oppositions worldwide, ensuring Monash’s intellectual property is safeguarded.

Cantarella Bros Pty Ltd (Vittoria Food & Beverage): Acting for Cantarella in the Federal Court of Australia in trade mark infringement proceedings against Lavazza Australia Pty Ltd. Cantarella alleges that Lavazza's use of ORO infringes Cantarella registered rights. Lavazza has cross claimed against Cantarella seeking expungement of the ORO marks in issue. Clayton Utz acted in the appeal of Justice Yates' first instance decision in these trade mark infringement proceedings, which was heard before the Full Federal Court in May 2024 and determined in February 2025. Clayton Utz also acted for the company in its bid for special leave to appeal to the highest court in Australia.

Clayton Utz previously acted for Cantarella in each of the proceedings in the lead-up to, and the successful appeal in, the High Court which upheld that ORO was inherently registrable. This remains the most recent trade mark matter to be heard by the High Court and remains a key authority in trade mark proceedings in Australia.

The present proceedings involve a number of novel and complex legal issues relating to not only the High Court's findings, issues surrounding ownership and abandonment of trade marks, substantial identity, and important policy issues relating to how prominent use of a sign must be before it borders an infringement. The current proceedings are likely the longest running and highest profile trade mark infringement proceedings presently being litigated in the Federal Court of Australia.

Clayton Utz is also acting for Cantarella in a related Opposition in the Intellectual Property Office of New Zealand against Luigi Lavazza S.p.A. in which Cantarella is opposing Lavazza's attempt to register a trade mark device that prominently features the sign ORO. Those proceedings were recently heard before the Assistant Commissioner and a decision delivered. The Assistant Commissioner found that the trade mark device Lavazza had sought to register was likely to deceive or confuse, refusing registration as a result. Lavazza have filed an appeal in this matter which was heard in June 2024.

Tourism and Events Queensland (TEQ): Advised TEQ on opposition proceedings commenced by Augusta National Inc (operator of the well-known Masters golf tournament) against TEQ's trade mark application for "Outback Queensland Masters".

The Corner Hotel: acted for Swancom (operator of The Corner Hotel) in Federal Court proceedings against McDonald's alleging trade mark infringement in relation to the use of the "CORNER" trade mark.

Spotless Group: acted for Spotless in Federal Court proceedings alleging trade mark infringement, passing off and misleading conduct against Qantas.

Our team to support you

Insights
Shaping the state of Australian trade mark law: Federal Court finds Cantarella didn’t infringe Moccona’s jar shape mark
20 Mar 2025 | Article
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I Guess It's Never Really Over: Full Court overturns Katy Perry trade mark infringement finding
18 Dec 2024 | Article
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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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