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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 2017 is available in the Archives.

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

Requisite(s): ( 77889c Trade Marks Law OR (70106c Principles of Public International Law AND 70107c Principles of Company Law AND 77889c 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): C04320 Juris Doctor Graduate Certificate Professional Legal Practice AND 70106 Principles of Public International 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. See access conditions.
Anti-requisite(s): 78193 Trade Marks Practice

Description

This subject concentrates on the ability to advise and to handle the interests of a client in prosecution and maintenance of trademark applications, including advice on the desirability of seeking trademark protection and provision of alternative protection in Australia and 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. understand trade mark practice by reading and analysing judgements of the Trade Marks Office and Australian Federal Court related to trade marks, passing off and unfair competition;
2. understand and begin to develop good practice methods for working as a trade mark practitioner;
3. understand trade mark practice and procedure in Australia and in foreign jurisdictions ;
4. understand the client and client objectives and to apply practice and procedure to a given situation for a preferred client outcome.

Course intended learning outcomes (CILOs)

This subject also contributes specifically to the development of the following graduate attributes:

  • Legal Knowledge
    An advanced and integrated understanding of a complex body of legal knowledge including the Australian legal system, social justice, cultural and international contexts, the principles and values of ethical practice, and contemporary developments in law and its professional practice (1.0)
  • Critical Analysis and Evaluation
    A capacity to think critically, strategically and creatively including an ability to identify and articulate complex legal issues, apply reasoning and research to generate appropriate theoretical and practical responses, and, demonstrate sophisticated cognitive and creative skills in approaching complex legal issues and generating appropriate responses (3.0)
  • Communication and Collaboration
    Effective and appropriate professional communication skills including highly effective use of the English language, an ability to inform, analyse, report and persuade using an appropriate medium and message and an ability to respond appropriately (5.0)

Teaching and learning strategies

Strategy 1 Online teaching and participation
Strategy 2 Completion of assessments including problem and multiple choice questions, research essay and take-home exam
Strategy 3 Testing of comprehension and understanding of materials through discussion online

Subject Delivery
Lecturers will be provided online, including reading guides, lecture outlines, online commentary and discussion

Lecture Format
Lectures will be provided online. Please refer to lecture outlines for further details.

Tutorial Format and Expectation of Student Participation
UTSOnline provides a Discussion Board, which students are expected to utilise for all questions and guidance needs. There are no formal tutorials for this subject. However, discussion questions may be uploaded from time to time for students to respond to on a voluntary basis.

Assessment

Assessment task 1: Online Discussion

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:

1.0, 3.0 and 5.0

Weight: 10%

Assessment task 2: Problem Questions

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:

1.0, 3.0 and 5.0

Weight: 20%

Assessment task 3: Professional Conduct

Objective(s):

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

3.0 and 5.0

Weight: 10%
Length:

500 Words

Assessment task 4: Take Home Exam

Objective(s):

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

1.0 and 3.0

Weight: 60%
Length: 3000 words

Required texts

Recommended texts

  • C J Oberin and B J Fitzpatrick, Practical Guide to Australian Trade Mark Law (Lawbook Co, 2004)
  • S RIcketson, M Davison and M Richardson, Intellectual Property, Cases, Materials and Commentary (LexisNexis Butterworths, 2012)
  • L Cristal and N Greenfield (eds), Trademark Law and the Internet: Issues, case law and practice tips (INTA, 2nd ed, 2001)
  • F W Mostert (ed), Famous and Well-Known Marks: An International Analysis (2nd ed, 2004)
  • R Annand and H Norman, Blackstone’s Guide to the Community Trade Mark (Blackstone Press, 1998)
  • Katzarov’s Manual on Industrial Property (loose leaf service)
  • Clark Boardman Callaghan, Trademarks Throughout the World (Thomson Reuters, loose leaf service)
  • Trade Marks Legislation, Recommended Changes to the Australian Trade Marks Legislation, AGPS, Canberra, 1992

Treaties and Related Publications:

Paris Convention (1883-1967)

Madrid Agreement (1891)

Madrid Protocol (1989)

TRIPs (Trade Related Aspects of Intellectual Property) Trade Mark Law Treaty (1994)

International Classification of Goods and Services (9th Edition), 2007, WIPO

Periodicals

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

"Trade Mark World"

"Intellectual Property Forum" (IPSANZ)

Other resources

Other resources

Websites