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Practice Spotlight: Trademarks law and practice

Practice Spotlight: Trademarks law and practice

By Suzannah Wood

Young Lawyers 

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Trademarks is an area of intellectual property that protects signs used as a badge of origin (such as Coca Cola or Apple). It is an area that offers variety, interesting matters and legal issues, and the ability to hone your client communication skills from an early stage. At King & Wood Mallesons (KWM), most of our practice is centred around prosecuting trademark applications (that is, responding to examination reports issued by IP Australia), or enforcing our clients' registrations against unauthorised third-party use. It can also sometimes involve transactional work (such as due diligence and IP licencing).

Sarah Goddard is a solicitor in the trademarks team at KWM. Below is a conversation between Sarah and Suzannah Wood, a senior associate in the team, about what that entails.

How did you come into this role?

I was very lucky to have been offered this role while working in general commercial disputes. I developed a keen interest in trademarks during my second year of law school after taking an intellectual property elective. It then became my aim to specialise in this area. Following law school I was a research assistant for my Cyber Law professor, where I conducted research and wrote articles on a range of topics from trademarks to domain names and I carried out my Practical Legal Training work experience in a trademarks team at another top-tier firm.

With this background, I applied for the role at KWM, instantly attracted to the firm’s reputation in this space and the clients that top-tier law firms act for more generally.

What does a standard day in your role look like?

My standard day could involve anything from drafting evidence of use of a trademark, writing letters of demand, liaising with clients or the Trademarks Office of IP Australia, instructing overseas counsel to assist with our clients’ global portfolios, writing legal submissions, preparing filing strategies for new trademarks or conducting legal research. Lawyers working in this practice need to be able to work in a fast-paced environment and adapt to changing situations and often urgent deadlines.

Do you have any advice for any law students or young lawyers wanting to get into this area?

Gain as much knowledge of trademarks law while in law school by taking IP-related electives. I still refer to cases I studied in law school. I would also recommend reaching out to professors for research assistant roles, which could result in your being involved in writing articles or submissions related to trademarks. Showing an interest early on will stand you in good stead.

Tip of the month

Always seek advice prior to launching a brand under a new trademark. You may unknowingly infringe a third-party’s mark if you launch prior to conducting a clearance search, with flow on costs including re-branding and paying costs to the owner with earlier rights.

For law students specifically, keep networking and try to gain as much experience as you can, where you can. Even if you have never practised in a particular area of law before, you will be surprised at the transferrable skills you gain from a variety of experiences, which will help you land your dream role.

Suzannah Wood is a senior associate in the trademarks team at King & Wood Mallesons and Sarah Goddard is a solicitor in the same team.

 


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