Trade Marks
A comprehensive and practical guide which allows a legal practitioner who may not specialise in this area to confidently advise and represent clients who wish to register a trade mark or who have infringement or compliance issues. Use our comprehensive Retainer Instructions and To Do List to ensure that all information is collected and the client is properly advised.
The clear and comprehensive commentary assists practitioners to navigate the registration process and deal with IP Australia including lodging applications on line, from pre-application requirements, determining the right class of trade mark and objections, through to actions for infringement and possible alternate actions for passing-off or misleading and deceptive conduct.
Some of the most popular precedents in this publication include:
- Letter to client re search results and advice
- Letter to client in anticipation no objection
- Letter to client application accepted for publication
- Letter to IP Australia if lodging hardcopy application
- Intellectual property licence
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“ Commentaries ”
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“ In the legal profession the term ‘costs’ refers to the fees and other expenses a solicitor charges a client for their professional services and other payments that arise out of the provision of legal services, including disbursements such as court fees. Costs are one of the most heavily regulated ... ”
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“ Nature of disclosure1 Timing of disclosure2 ”
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“ Costs disclosure is not required in relation to certain clients, described in the legislation as ‘sophisticated clients’ or ‘government or commercial clients’ as defined by the relevant legislation to include clients such as lawyers, law firms, public companies, liquidators and government entities. ... ”
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“ Cost agreements are not always required although clearly as between the practitioner and their client there will be disclosure but without the need for formal compliance with the regulation. The limits are: ”
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“ In NSW & VIC there is a standard costs disclosure for fees under $3,000 which is included in the precedents. If the total legal costs in a matter (excluding GST and disbursements) are not likely to exceed $3,000 (the higher threshold), a law practice may, instead of making a disclosure under ... ”
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“ Knowing that clients are disinclined to read, sign and return cost agreements, the letter sending them usually provides that unless heard to the contrary the practice will assume agreement. There will almost always be a later opportunity to have the agreement signed. Of course, many practitioners ... ”
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“ Costs are remuneration for professional work when acting in the capacity of a barrister or solicitor. Payments to a practitioner for work which is not professional work, are not costs. Disbursements are payments made, or liabilities incurred in the course of practice and which the practitioner is ... ”
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“ Firms are required to provide an estimate of the total of costs, excluding GST and disbursements, and information on the impact of any significant change to these costs. A law practice must take all reasonable steps to satisfy itself that the client has understood and consented to the proposed ... ”
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“ What is a disbursement Disbursements are payments made, or liabilities incurred in the course of practice, and which the practitioner is bound to pay whether put in funds by the client or not; or payments which, by established custom and practice of the profession, the practitioner is bound to pay. ... ”
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“ A lawyer may request money on account of fees be paid into a trust account before the commencement of work. This is particularly so in criminal and other court matters where the inclination to pay may wane with an unwanted outcome. The funds may cover legal fees as well as disbursements and the ... ”
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“ The costs agreement will set out the billing cycle. Commonly a regular monthly billing cycle is adopted covering work undertaken during the previous month. ”
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“ A lump sum invoice is one which sets out a recital describing the legal service provided and a total amount. An itemised invoice is one which sets out in detail each of the legal services provided, the date they were provided, and the cost for each service. An itemised invoice allows for an invoice ... ”
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“ A law practice cannot charge for the time spent in preparing an invoice. A law practice cannot charge for the time spent in preparing an itemised invoice for a client who has already received a lump sum invoice. ”
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“ All bills should be accompanied by a written statement setting out the avenues that are open to the client in the event of a dispute and any time limits that apply to the taking of such action. Under the uniform law in NSW and VIC each bill or covering letter must be signed by a principal of the ... ”
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“ In 1991 the Australian Competition and Consumer Commission released guidelines to assist businesses in the withdrawal on one and two cent pieces. In the purchase of goods or services for cash, businesses were advised to round the final payment: ”
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“ – When to charge and how to charge Goods and Services Tax (GST) is a broad-based tax of 10% applied to most goods and services, including legal services. Businesses are required to register for GST if their turnover exceeds the $75,000 threshold. If turnover is less than $75,000 than registration ... ”
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“ Reducing fees can create good will but needs to be handled with care as some take offence to the implication that they cannot afford to pay for the work they have retained. It is also a hard won reality that comes from experience that people are inclined not to value any advice given for free. ”
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“ Credit terms are quite common and need to be clearly documented and administered. ”
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“ Notification of rights is a requirement in all states and is found in all example invoice precedents. If the client has not been advised of their rights in a costs agreement, then practitioners must advise the client of their rights at the time of issuing the invoice. ”
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“ Monthly accounting for work in progress is recommended in order to achieve target lockup days. If debtors are not followed up promptly cash flow reduces making it imperative to adopt a debtor’s policy for effective debtor control. All overdue accounts must be followed up promptly and repeatedly. ”
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“ When a retainer is terminated before completion, a practitioner may claim costs for the work done to the date of termination on a quantum meruit basis if: The client terminates the entire retainer; ”
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“ When there are costs owing to the practitioner from the client, the lawyer may retain possession of the client’s documents which are legitimately in the practitioner’s possession. However, the Australian Solicitors’ Rules specify that when a practitioner claims to exercise a lien for unpaid legal ... ”
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“ If a practitioner has an equitable charge over the client’s property incorporated into the costs agreement, ordinarily the practitioner could exercise that power in seeking payment of costs. However, general charges such as a charge over ‘all my estate, rights, title and interest in and to any real ... ”
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“ Sound financial management is absolutely critical to the success of the law practice. There is a high correlation between practices with poor financial management and increased probability of experiencing professional negligence claims. The link is clear. Principals, who do not manage their ... ”
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“ Methods of payment include: Credit card; ”
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“ All By Lawyers cost agreements include the following authority to transfer money to pay their invoices: Trust money ”
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“ Lawcover recommends that practitioners use the costs assessment scheme to recover costs. Instituting proceedings against a disgruntled client who refuses to pay an outstanding bill exposes practitioners to the risk of a cross-claim in negligence being filed. The advantage of the cost assessment ... ”
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“ The following outline of costs assessment was written for NSW but the procedure is similar in the other states. This publication will be expanded to cover cost assessment in the other states in due course. In the interim refer to the relevant State Supreme Court. NSW Procedure ”
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“ A client may be entitled to complain to the Legal Services Commissioner about a costs dispute. If the complaint is made after the law practice or client has already applied for assessment of such costs, the assessment will ordinarily be stayed until the complaint has been determined. Similarly, if ... ”
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“ ASIC Registers Australian trade mark search - Australian Trade Mark Online Database ”
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“ Business and Franchise Personal Property Securities ”
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“ Legislation governing trade marks The principal pieces of legislation in this area are: ”
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“ Taking good instructions The use of precedent Retainer Instructions ensures that all important issues are considered, instructions which cannot be contradicted later are recorded, costs discussed and the scope of the retainer clearly defined. ”
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“ A preliminary ‘availability’ search at the stage where the client is contemplating registration or when they are deciding on a new brand, name or logo is strongly recommended. Preliminary searches should include as a minimum: ”
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“ When a party applies to register a trade mark that party must provide a description of the goods or services it intends to use the trade mark on. These goods and services need to be identified into one or more classes. Schedule 1 of the Trade Marks Regulations 1995 prescribes the available classes ... ”
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“ An electronic search is available for appropriate classes. Note the search tips as, for example, using the search term 'wedding photography' will return no result, however the search terms ‘wedding’ and ‘photography’ will. The more diverse the client’s range of goods and/or services, the more ... ”
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“ Regulation 4.1 of the Trade Mark Regulations provides that applications must be in an ‘approved form’. To prepare and file the client’s application the following information is required: applicant’s legal name, description and principal place of business; ”
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“ Once the examiner’s objections have been overcome, or in the absence of any objections, the application will be published in the Australian Official Journal of Trade Marks as ‘accepted’. For two months after publication, the application may be opposed. ”
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“ Administrative changes to a trade marks registration, such as change of address details, are made via eSERVICES or by using the form Request for Amendment Name/Address/Address for Service. ”
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“ In 2001 Australia became a signatory to the Madrid Protocol which covers international registration of trade marks. This protocol provides Australian applicants with several advantages when seeking protection for trade marks in any of the approximately 90 signatory countries. An Application for ... ”
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“ The initial registration period is 10 years from the date the application was filed. It is useful to note this date in the client's IP register. Registered trade marks can be renewed, indefinitely, for 10 year periods. ”
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“ Assignment or transmission of a trade mark is the process by which the ownership of a registered trade mark or a trade mark whose registration is being sought is passed from one party to another. Section 6 of the Act distinguishes between assignment and transmission. Assignment is a voluntary act ... ”
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“ The client may as part of their overall asset protection strategy, which separates business assets from trading risk, wish to licence the use of the trade mark owned by an asset-holding entity to a trading entity. Licensing involves granting another party permission to use the mark in compliance ... ”
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“ It is important to take quick and decisive action if it is suspected that the client's rights in the intellectual property connected with their business is being, or is in danger of being, infringed. If intellectual property rights are not enforced then their commercial value is quickly eroded. ... ”
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