Trade Mark Practice

This subject has the following teaching availabilities in 2016:

This subject has a quota of 30 students. Please refer to the Melbourne Law Masters website for further information about the management of subject quotas and waitlists.

136-150 hours

The pre-teaching period commences four weeks before the subject commencement date. From this time, students are expected to access and review the Reading Guide that will be available from the LMS subject page and the subject materials provided by the subject coordinator, which will be available from Melbourne Law School. Refer to the Reading Guide for confirmation of which resources need to be read and what other preparation is required before the teaching period commences.

Successful completion of the below subject, or an equivalent subject, or appropriate practical experience:

Applicants without legal qualifications should note that subjects are offered in the discipline of law at an advanced graduate level. While every effort will be made to meet the needs of students trained in other fields, concessions will not be made in the general level of instruction or assessment. Most subjects assume the knowledge usually acquired in a degree in law (LLB, JD or equivalent). Applicants should note that admission to some subjects in the Melbourne Law Masters will be dependent upon the individual applicant’s educational background and professional experience.

The Melbourne Law Masters welcomes applications from students with disabilities. The inherent academic requirements for study in the Melbourne Law Masters are:

• The ability to attend a minimum of 75% of classes and actively engage in the analysis and critique of complex materials and debate;
• The ability to read, analyse and comprehend complex written legal materials and complex interdisciplinary materials;
• The ability to clearly and independently communicate in writing a knowledge and application of legal principles and interdisciplinary materials and to critically evaluate these;
• The ability to clearly and independently communicate orally a knowledge and application of legal principles and interdisciplinary materials and critically evaluate these;
• The ability to work independently and as a part of a group;
• The ability to present orally and in writing legal analysis to a professional standard.

Students who feel their disability will inhibit them from meeting these inherent academic requirements are encouraged to contact Student Equity and Disability Support.

This subject builds on the material covered in the Trade Marks and Unfair Competition subject. Trade Mark Practice is primarily concerned with the procedures and practices of the Australian Trade Marks Office in obtaining and maintaining registered trade marks. This subject is thus particularly valuable for students wishing to prosecute trade mark applications through the Australian Trade Marks Office. The rights, privileges and responsibilities of a patent or trade mark attorney are also covered. The lecturers in the subject have extensive experience in the practices and procedures of the Trade Marks Office. The subject meets the PSB requirements for ‘Topic Groups’ B and D.

The emphasis of this subject is on the documentation and procedures involved and the relevant practice of the Australian Trade Marks Office.

Principal topics include:

• The Trade Marks Office, the Trade Marks Register and the Australian Official Journal of Trade Marks
• Determining the availability of a trade mark for use and registration, searching the Trade Marks Office database and other search options
• Applications for registration, including Madrid Protocol, Convention, divisional and series applications
• Examination and acceptance of applications
• Opposition to registration
• Initiating and opposing applications to remove a trade mark for non-use
• Amendment of applications and other documents
• Obtaining registration and renewal of registration
• Obtaining extensions of time
• International conventions and initiatives, and protecting trade marks in foreign countries
• The rights, privileges and responsibilities of a patent or trade mark attorney.

A student who has successfully completed this subject will:

• Have an advanced and integrated understanding of
  • the practices and procedures for obtaining and maintaining the registration of a trade mark under the Trade Marks Act 1995 (Cth);
  • the principles and options for obtaining registration of a trade mark overseas; and
  • the rights, privileges and responsibilities of a patent or trade marks attorney
• Be able to critically examine, analyse, interpret and assess the effectiveness of these practices, procedures, principles, options, rights, privileges and responsibilities
• Be an engaged participant in debate regarding emerging and contemporary issues in this field, such as the effect of recent regulatory amendments in the opposition procedures and the implications of closer cooperation with New Zealand
• Have a sound appreciation of the factors and processes driving governmental revisions of the legal framework
• Have an advanced understanding of the application of the legal principles and rules of practice in the context of advising and assisting clients with the preparation of their trade mark applications, initiating or defending any opposition or non-use removal applications, and the maintenance and exploitation of their’ rights, once granted
• Have a sound understanding of practice issues arising in an international and comparative context
• Have the cognitive and technical skills to generate critical and creative ideas relating to practice issues in this area, and to critically and independently evaluate existing legal theories, principles and practices
• Have the cognitive and technical skills independently to examine, research and analyse existing and emerging issues relating to trade mark practice
• Have the communication skills to clearly articulate and convey complex information regarding practice issues to relevant specialist and non-specialist audiences, including clients
• Be able to demonstrate autonomy, sound judgment and responsibility as a practitioner and learner in the field of trade mark practice.

Take-home examination (5,000-6,000 words as specified in the subject reading guide) (100%) (27 July - 1 August)

A minimum of 75% attendance is a hurdle requirement.

Specialist printed materials will be made available free of charge from the Melbourne Law School prior to the pre-teaching period.

This subject is not available as a breadth subject.