University of Technology Sydney

77890 Trade Marks Practice

Warning: The information on this page is indicative. The subject outline for a particular session, location and mode of offering is the authoritative source of all information about the subject for that offering. Required texts, recommended texts and references in particular are likely to change. Students will be provided with a subject outline once they enrol in the subject.

Subject handbook information prior to 2025 is available in the Archives.

UTS: Law
Credit points: 6 cp
Result type: Grade and marks

Requisite(s): (77889c Trade Marks Law AND (22 credit points of completed study in spk(s): C07122 Graduate Diploma Legal Studies OR 22 credit points of completed study in spk(s): C04264 Master of Legal Studies)) OR (70106c Principles of Public International Law AND 70107c Principles of Company Law AND 77889 Trade Marks Law AND (94 credit points of completed study in spk(s): C04236 Juris Doctor OR 142 credit points of completed study in spk(s): C04250 Juris Doctor Master of Business Administration OR 94 credit points of completed study in spk(s): C04363 Juris Doctor Master of Intellectual Property OR 94 credit points of completed study in spk(s): C04364 Juris Doctor Graduate Certificate Trade Mark Law and Practice)) OR (94 credit points of completed study in spk(s): C04320 Juris Doctor Graduate Certificate Professional Legal Practice AND 70106 Principles of Public International Law AND 77889c Trade Marks Law)
The lower case 'c' after the subject code indicates that the subject is a corequisite. See definitions for details.
These requisites may not apply to students in certain courses.
There are course requisites for this subject. See access conditions.
Anti-requisite(s): 76085 Intellectual Property: Trade Marks and Patents AND 78193 Trade Marks Practice

Description

Trade marks practice deals with the prosecution of trade mark applications, the maintenance and management of trade mark registrations and enforcement of rights in various words, symbols, shapes, colours and other signs used to distinguish the goods or services of one entity from those of another.

This subject provides a critical, analytical, ethical and practical understanding of trade marks practice in Australia and New Zealand. Students develop the ability to advise and to handle the interests of a client in prosecution and maintenance of trade mark applications, including advice on the desirability of seeking trade mark protection and provision of alternative protection in Australia and New Zealand as well in other countries. Topics covered include classification systems, searching, types of application and registration, Trade Marks Office practice and procedure, removal for non-use, rectification, registration of security interests, border controls, exploitation, misuse and criminal sanctions, and international issues.

Subject learning objectives (SLOs)

Upon successful completion of this subject students should be able to:

1. Identify, understand and apply specialised knowledge of trade marks practice and procedure in Australia and New Zealand and in the foreign trade mark law jurisdictions of Australia and New Zealand’s major trading partners;
2. Critically analyse, evaluate and compare the legal framework and the legal process of trade marks practice and procedure, in Australia and New Zealand;
3. Construct and articulate logical, reasoned, persuasive and justifiable legal and scholarly arguments, supported by accurate and authentic references to authority to resolve practical problems and issues in the process of registration and enforcement of rights in registered trade marks, brands and unregistered trade marks under trade marks practice and procedure in Australia and New Zealand;
4. Think critically, ethically and strategically on behalf of the client and the client’s objectives, including the appropriate and ethical use of generative AI tools and AI powered trade mark search, classification and trade mark specification drafting tools in advising on a given situation for a preferred client outcome in a given situation under trade marks practice and procedure in Australia and New Zealand;

Course intended learning outcomes (CILOs)

This subject also contributes specifically to the development of the following graduate attributes which reflect the course intended learning outcomes:

  • Legal Knowledge
    An advanced and integrated understanding of a complex body of legal knowledge including:
    a. The Australian colonial and post-colonial legal system, international and comparative contexts, theoretical and technical knowledge;
    b. The broader contexts within which legal issues arise and the law operates including cultural awareness, social justice and policy;
    c. The principles and values of justice and ethical practices in lawyers' roles;
    d. The impact of Anglo-Australian laws on Indigenous peoples, including their historical origins in the process of colonisation and ongoing impact; and
    e. Contemporary developments in law and its professional practice. (1.1)
  • Ethics and Professional Responsibility
    An advanced and integrated capacity to value and promote honesty, integrity, cultural respect, accountability, public service and ethical standards including:
    a. An understanding of approaches to ethical decision making;
    b. An understanding of the rules of professional responsibility;
    c. An ability to reflect upon and respond to ethical challenges in practice;
    d. A developing ability to engage in the profession of law and to exercise professional judgment; and
    e. An ability to reflect on and engage constructively with diversity in practice. (2.1)
  • Critical Analysis and Evaluation
    A capacity to think critically, strategically and creatively, including an ability to:
    a. Identify and articulate complex legal issues in context, including the skill of critical reading and writing;
    b. Apply reasoning and research to generate appropriate theoretical and practical responses; and
    c. Demonstrate sophisticated cognitive and creative skills in approaching complex legal issues and generating appropriate responses. (3.1)
  • Communication
    Well-developed professional and appropriate communication skills including:
    a. Highly effective use of the English language to convey legal ideas and views to different and diverse audiences and environments;
    b. An ability to inform, analyse, report and persuade;
    c. An ability to strategically select an appropriate medium and message;
    d. A cognisance of advanced communication technologies and willingness to adopt where appropriate; and
    e. An ability to respond respectfully. (5.1)

Teaching and learning strategies

Strategy 1: Learning through engagement with each module

Preparation and reflection on the material presented in each online module is central to the learning in this subject. Each module contains key resources, including reading lists for text book reading, cases and short videos or podcasts as well as guided activities and exercise designed to apply and consolidate understanding of key concepts and cases taught in the course.

Strategy 2: Learning through discussion

Students will use the discussion area in each module to ask questions or share ideas. Students will engage in collaborative discussion and evaluation of the materials in each module, which will assist them in developing new perspectives, testing their ideas and understanding, and identifying areas for clarification. Students will have the opportunity to ask questions of their peers and of the teacher to assist them in consolidating their own learning.

Strategy 3: Engaging in lectures and guest presentations in each module

The teacher and guest speakers will provide perspectives on the recommended readings and clarification of the law through videos and audio material. The ability to listen and think at the same time is a crucial skill for a lawyer or legal adviser, who will often need to master new information delivered orally and/or in writing and provide an intelligent response immediately.

Students also engage in the lecture by asking and responding to questions. Discussion and various activities in each module will extend the ideas of the lecture in new directions or in greater depth. It is therefore important to participate actively and engage with the lecture material to clarify understanding and challenge ideas.

Strategy 4: Learning legal skills: further development of legal analysis and problem solving skills

The ability to solve legal problems is an essential skill for a legal adviser. This legal skill was introduced in 77889 Trade Marks Law and is further developed in this subject. Problem-solving involves interpreting and analysing legislation and cases, and applying the legislation and principles developed through the case law and practice decision of IP Australia and IPONZ to novel and difficult factual situations in trade marks practice. All students will participate in two legal skills units. Legal Analysis and Problem Solving contains a guided analytical approach to legal analysis and problem solving, with activities based on a sample problem in trade marks law to give individual feedback on legal problem solving skills, followed by a video giving an expert presentation on the problem. This allows students to improve their skills of legal analysis as well as their ability to construct reasoned legal arguments supported by accurate and authentic references to authority and offer commercially-viable and ethical solutions to the problems of hypothetical clients, before attempting Assessment Task 1 trade mark search and classification problem and eventually the problems in Assessment Task 4 the final exam in this course.

Strategy 5: Learning legal skills: effective written communication skills by critical evaluation, preparation and discussion of written submissions

The ability to communicate the thrust of a legal argument through effective written advocacy is an essential skill for a legal adviser. Increasingly legal advisers are asked to prepare written submissions setting out and arguing for a client’s position, supported by accurate and authentic references to authority, whether this is part of the process of obtaining effective protection for trade marks by registration or in Court or in proceedings before the Registrar. All students will participate in the legal skills unit Guide to Effective Submissions. This legal skills unit contains a guided analytical approach to effective and ethical communication of written legal arguments, with activities illustrating effective and ineffective examples of written communication including of critical evaluation of a trade marks examination report from IP Australia and from IPONZ. This allows students to improve their skills of written communication, critical evaluation and preparation of written submissions in trade marks practice and procedure before attempting Assessment Task 2 Written submissions.

Strategy 6: Applying effective written communication skills by critical evaluation, preparation and discussion of submissions in response to a trade mark examination report or a notice of opposition

Students undertake independent research relevant to class discussion and assessment tasks using the UTS Library and databases. This will require students to identify relevant case law and secondary material on their own to provide accurate and authentic references to authority in legal argument before a Court, IP Australia or IPONZ. Being able to use the library and legal databases to find relevant material is a key skill for a lawyer. Critical reading and analysis of judicial and scholarly material are also crucial skills in law.


Subject Delivery: Online in distance mode in Canvas.

Assessment

Assessment task 1: Trade mark search, classification and preparing a trade mark specification

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 4

This task contributes specifically to the development of the following graduate attributes:

1.1, 3.1 and 5.1

Weight: 20%
Length:

Notional word length: 800 words plus 80 words leeway for the entire paper
Criteria:

Your assessment mark for this item is measured against a set of criteria, not against the performance of other groups. In each assessment task we will be looking for evidence that you have achieved the learning objectives set out in the Subject Outline as well as:

  • understood the subject content in relation to aspects of trade marks practice and can apply that content appropriately to the assessment task at hand;
  • demonstrated an ability to think critically and analytically when addressing the problem;
  • used relevant wider reading to enhance and comment on the issues under consideration;
  • addressed the assessment task succinctly, clearly and with relevance and insight

Assessment task 2: Written Submissions on hearing

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 4

This task contributes specifically to the development of the following graduate attributes:

1.1, 2.1, 3.1 and 5.1

Weight: 20%
Length:

Notional word length: 1500 words plus 150 words leeway for the entire paper
Criteria:

Your assessment mark for this item is measured against a set of criteria, not against the performance of other students. In each assessment task we will be looking for evidence that you have achieved the learning objectives set out in the Subject Outline as well as:

  • understood the subject content in relation to aspects of trade marks practice and can apply that content appropriately to the assessment task at hand;
  • demonstrated an ability to think critically and analytically when addressing the problem;
  • used relevant wider reading to enhance and comment on the issues under consideration;
  • addressed the assessment task succinctly, clearly and with relevance and insight

Assessment task 3: Professional Conduct

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 4

This task contributes specifically to the development of the following graduate attributes:

1.1, 2.1, 3.1 and 5.1

Weight: 10%
Length:

500 Words plus 50 words leeway for the entire paper

Assessment task 4: Take Home Exam

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 4

This task contributes specifically to the development of the following graduate attributes:

1.1, 3.1 and 5.1

Weight: 50%
Length:

3000 words plus 300 words leeway for the entire paper
Criteria:

Your assessment mark for this item is measured against a set of criteria, not against the performance of other students. In each assessment task we will be looking for evidence that you have achieved the learning objectives set out in the Subject Outline as well as:

  • understood the subject content in relation to aspects of trade marks practice and can apply that content appropriately to the assessment task at hand;
  • demonstrated an ability to think critically and analytically when addressing the problem;
  • used relevant wider reading to enhance and comment on the issues under consideration;
  • addressed the assessment task succinctly, clearly and with relevance and insight

Required texts

Australia

  • M Davison & I Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (Thomson, 7th ed, 2022). Also available online through the Westlaw AU database that can be accessed via the UTS Library website. Go UTS Library, then Find Databases, then Law. Select ‘Westlaw AU’, then ‘Legislation and Commentary’, then ‘Australian Law of Trade Marks and Passing Off’.
  • Trade Marks Act 1995 (CTH)
  • Trade Marks Regulations 1995 (CTH)
  • IP Australia, Australian Trade Marks Office Manual of Practice and Procedure
  • Explanatory Memorandum Trade Marks Amendment Bill 2006
  • Intellectual Property Laws Amendment (Raising the Bar) Act 2012
  • Explanatory Memorandum Intellectual Property Laws Amendment (Raising the Bar) Bill 2011
  • Australian Trade Mark Search (IP Australia website, and associated user help materials)

New Zealand

  • P Sumpter, Trade Marks in Practice (LexisNexis NZ, 4th ed, 2019-2022). Also available online on Lexis Advance Pacific through the UTS Library Law Databases. To access: click on the “View all Publications” link on bottom right of the Lexis Advance Pacific home page, under the list of resources. Then in the “Narrow by” section on left of your screen, choose NZ Secondary materials. A module Intellectual Property Law (NZ) will come up. Click on its linked title to access the module. The text of Sumpter : Trade Marks in Practice appears as the annotation to the Trade Marks Act 2002 (NZ).
  • Trade Marks Act 2002 (NZ)
  • Trade Marks Regulations 2003 (NZ)
  • IPONZ Trade Marks Act 2002 Practice Guidelines
  • IPONZ Search Trade Marks Cases (IPONZ website and associated user help materials)

Note: Full instructions for accessing the textbooks online appear in Module 0 Get started under "What resources will I need?"

Recommended texts

  • S RIcketson, M Davison and M Richardson, Intellectual Property, Cases, Materials and Commentary (LexisNexis Butterworths, 2012)
  • R Reynolds, N Stoianoff, A Adrian and A Roy, Intellectual Property: Text and Essential Cases (5th ed, 2015)
  • J Lahore, Patents, Trade Marks and Related rights (3 Loose Leaf Volumes), also available online on Lexis Advance Pacific through UTS Library databases
  • Clark Boardman Callaghan, Trademarks Throughout the World (Thomson Reuters, loose leaf service)

Treaties

1. WIPO

Paris Convention for the Protection of Industrial Property (1883-1967) - WIPO

Madrid Agreement concerning the International Registration of Marks (1891)

Madrid Protocol (1989)

Trademark Law Treaty (1994)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks; 11th Edition (1 January 2017)

2. World Trade Organization

TRIPs (Trade Related Aspects of Intellectual Property)

Periodicals

"Trade Mark Reporter", International Trademark Association United States. "European Intellectual Property Review" (EIPR)

"Trade Mark World"

"Intellectual Property Forum" (IPSANZ)

Other resources

Websites