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What is a trade mark attorney?

Trade mark attorneys advise clients and represent them in relation to trade mark matters, such as trade mark searches, filing and prosecuting trade mark applications (including selection of appropriate goods and services and advising on ownership issues), management of trade mark portfolios and enforcement of rights in Australia and overseas.

Our trade mark attorneys can provide advice regarding the registrability of trade marks, prepare and file trade mark applications, respond to objections raised by the Trade Mark Office, represent trade mark applicants or opponents in contentious proceedings before the Registrar of Trade Marks and in negotiations with other rights holders, develop risk management strategies regarding the use of trade marks and advise on infringement issues.

All our trade mark attorneys work with carefully-selected attorneys in other countries to ensure that your trade marks are safeguarded on a global basis. This often involves engaging an attorney in a relevant country to file documents with the Trade Mark Office in that jurisdiction as many overseas offices will not accept communication from a foreign attorney.

A trade mark attorney has a tertiary qualification and has undertaken further specialised study in the field of intellectual property law to enable them to provide legal advice in relation to trade marks. Trade marks attorneys are not necessarily lawyers, unless they have undertaken further legal studies or previously obtained the relevant qualifications. Many of the trade mark attorneys in our firm have law degrees and have previous experience working in corporate law firms.

Many of the patent attorneys at Madderns are also registered trade mark attorneys and they can assist you initially with trade mark matters or ensure that a member of our specialised Trade Marks team assists you.

Similarly to Patent attorneys, trade mark attorneys in Australia are governed by a Professional Code of Conduct administered by the Trans-Tasman IP Attorneys Board.

Please contact a member of our team to discuss your particular trade mark issues and plans.