Trade Marks

Clayton Utz's trade marks 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.

Clayton Utz's 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.

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

  • 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)
    - "They're very, very commercial and the people there are very relaxed and calming, which is certainly helpful." (2018) 
  • The Legal 500 Asia-Pacific:  Firm Ranking - Band 1 (2019 - 2022)
    - Clayton Utz ‘provides a high level of service and is thorough and timely’. Litigation lies at the very core of the practice and Sydney-based practice head John Collins represented Telstra in patent infringement proceedings in the Federal Court against Upaid Systems. Timothy Webb is acting for the SingTel Optus group of companies in the first Australian cases under the new section 115A of the Copyright Act. In another significant matter, the team continues to defend Toyota in global trade mark infringement disputes in relation to counterfeit car parts. Other names to note include Chris McLeod and Richard Hoad, as well as Natalie Shoolman and James Neil, both special counsel. (2019)
    - Clayton Utz’s lawyers ‘distinguish themselves through their understanding of the product and market they operate in and the strength of advice they provide’. (2018) 
  • Asialaw Profiles: Recommended Law Firm - Intellectual Property (2017)
  • 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:  One client commented that “they respond in a timely manner and are always happy to discuss any issues over the phone. Their service is exceptional, they deal with uncomfortable situations in a professional manner; and they always try to resolve any concerns proactively. Their advice is consistently clear and to the point because they understand our business”. Another patron recalled that “the services delivered by Clayton Utz were of the highest quality, delivered in a timely manner by a dedicated team of professionals. The Clayton Utz team drew on extensive their experience to provide us with clear guidance; presenting our options in a balanced way which took into account the limited legal expertise within our organisation. They were sensitive at all times to the need to protect our reputation and be true to our values”. Referees frequently praise the quality of service and dedication. “This is an outstanding team that consistently delivers a quality service. I would highly recommend Clayton Utz to represent your best interests.”  (2022)
    - ranked as "Silver" in Enforcement and Litigation (2019-2022)
    - ranked as "Silver" in Prosecution and Strategy (2022)
    - listed as "Highly recommended" in Prosecution and Strategy (2019)  

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