SPL Services

Intellectual Property

Surry Partners Lawyers clients invest significant amounts in their intellectual property (IP) assets.

Those IP assets and our related services include:

  • Copyright in film, television, music, book publishing and computer software – together with the licensing and distribution agreement that go with them.
  • Trade Marks for names, brands and logos, including searching, registration, management and advice, licensing and commercialisation, oppositions and infringement.
  • Confidential Information comprised in business manuals, client lists, price lists, budgets, business plans and supply chain information that requires protection by means of confidentiality.
  • Internet and Domain Names that may include trade marks, but that requires Registration and advice on disputes like cyber squatting  and add word infringements.
  • Advertising and Packaging including protection of packaging, labelling and get-up advice on passing-off and misleading and deceptive conduct where infringements occur.
  • Designs for commercial use, including advice and registration.

Director Peter English works predominantly in this area, assisted by Angus Ferguson. Peter has lectured design students across Australia via the Springboard Project funded by the Australia Council, on the topics of IP identification and commercialisation.

Experience:

  • Advised a graphic design  client in relation to copyright retention in packaging designs and  graphics commissioned by a third party which was acquired by a public company on the purchase of the graphic designer. Our involvement resulted in our client being paid a substantial sum for the transfer of their IP rights to the purchaser.
  • Advised on a domain name parking business model and allegations of IP infringement arising from the registration of similar domain names
  • Negotiated and drafted a trade marks licence agreement, extended to cover a range of domain names, in relation to a well known beer brand, including relevant commercial terms concerning sales, marketing and product liability issues
  • Negotiated and drafted IP assignment agreements for a suite of trade marks and patents, including attending to IP Australia registration procedures
  • Represented a UK client in a major trade mark infringement dispute concerning use of registered trade marks on the internet heard in the Federal Court in Queensland, including the preparation of an Appeal which was settled in favour of our client on the day before the hearing.
  • Prosecuted a trade mark application before an Examiner at IP Australia, to overcome objections concerning lack of reputation and descriptiveness for a client in the textile and home furnishings industry.
  • Prepared statutory declarations to show Evidence of Use in response to an Adverse Report  received in relation to a trade mark within the business consulting industry.
  • Advising on, preparing and  lodging Non Use Applications in relation to conflicting trade marks.
  • Advising on, preparing and  lodging successful commercial Design Registrations.
  • Commenced proceedings on behalf of a client in the executive recruitment industry against a former employee for breach of confidentiality provisions in an employment agreement, which included removing manuals, research folders, client lists, document templates and hundreds of emails with clients. The matter was resolved by recovering the offending material and obtaining  enforceable undertakings from the former employee and their new employer

Contact:
Peter English
Tony Brooks

Angus Ferguson
Clement Lo

For Intellectual Property Case Studies – please click here