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78193 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: 8 cp
Result type: Grade and marks

Requisite(s): (78100c Postgraduate Legal Research AND 78192 Trade Marks Law) OR (78192c Trade Marks Law AND (102 credit points of completed study in spk(s): C04236 Juris Doctor OR 102 credit points of completed study in spk(s): C04250 Juris Doctor Master of Business Administration))
The lower case 'c' after the subject code indicates that the subject is a corequisite. See definitions for details.
There are course requisites for this subject. See access conditions.
Anti-requisite(s): 77890 Trade Marks Practice

Recommended studies:

students who have previously not completed a basic intellectual property subject are recommended to enrol in 78185 Intellectual Property: Law and Policy before this subject

Description

This subject gives students an understanding of the practice and procedure in respect of trademarks in Australia and abroad, covering the filing of trademark applications and the examination, opposition and registration of them, as well as removal and cancellation. The subject also provides an overview of international treaties and conventions and of the trademark practice and procedure in foreign jurisdictions such as New Zealand, Canada, the United States, various South Pacific countries, selected countries of Asia and the European Union.

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. This understanding will be further assisted by reference to texts and published articles;
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)
  • Knowledge
    Utilise an advanced and integrated understanding of a complex multidisciplinary body of legal, scientific and technical knowledge and Australasian patent and trade marks law and systems to support innovation in a global context. (1.1)
  • 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)
  • Analytical
    Identify, synthesise and articulate complex legal and technical issues and apply creative analytical skills to identify innovation and generate clear, succinct, novel and distinctive responses. (3.1)
  • 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)
  • Communicate
    Communicate accurately and persuasively in multidisciplinary contexts with a variety of audiences and in a range of specialised and technical formats; including productive collaboration with professional teams and clients. (5.1)

Assessment

Assessment task 1: Online Discussion

Objective(s):

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 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:

1.1, 3.1 and 5.1

Weight: 60%
Length: 3000 words

Required texts

Recommended texts

  • CJ Obering & BJ Fitzpatrick, Practical Guide to Australian Trade Mark Law, Lawbook Co, Sydney, 2004
  • S Ricketson and M Richardson, Intellectual Property, Cases Materials and Commentary, Butterworths, Sydney, 3rd Edition, 2005
  • L Cristal & N Greenfield, Trade Mark Law & The Internet, INTA, 2nd Edition, (2001)
  • FW Mostert (ed), Famous and Well-Known Marks, Law Book Co, 2nd edition, (2004)
  • Annand and Norman, Blackstone's Guide to the Community Trade Mark, (1998)
  • Katzarov, Manual on Industrial Property (loose leaf service)
  • Clark Boardman Callaghan, Trade Marks Throughout the World (loose-leaf service)
  • Trade Marks Act 2002 (New Zealand)
  • Australian Official Journal of Patents, Trade Marks and Designs (AOJP) IP Australia
  • Gundersen, Trade Mark Searching 2nd edition, INTA (NB: this text may be difficult to find. It is not a required text, merely recommended)
  • P Torremans, Intellectual Property Law 4th edition, Oxford (2005)
  • J Lahore Patents, Trade Marks and Related Rights, Butterworths,Sydney (3 Loose Leaf Volumes)
  • J McKeough, A Stewart, Intellectual Property, Cases Materials and Commentary, Butterworths, Sydney, 3rd edition, 2005
  • Australian Intellectual Property, CCH, Sydney, (2 Loose Leaf Volumes)
  • P Sumpter, Trade Marks in Practice, (LexisNexis, 2004)
  • Working Party to Review the 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

Websites