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The Managing IP World Intellectual Property Survey 2008, which publishes detailed rankings of the leading firms practising intellectual property in each country, has listed Nicholas Weston for the first time since the firm was founded in 2005.

The firm is ranked in two categories: for Trade Mark Prosecution in Australia and for Trade Marks Contentious in Australia. Rankings are based on surveys of clients and recommendations from clients and other practitioners.

According to Managing IP magazine:

"The World IP Survey is not simply a list of the biggest firms, or a list of those that have the biggest case load or are the oldest. Instead it is a qualitative ranking of the leading firms in each category and reveals which firms are rated by their peers for the strength of their expertise and the depth of their ability to service clients."

The IP Handbook 2008, published by Managing IP, includes full results of the survey, stating:

"Clients noted the thoroughness of the firm's paperwork and "attention to detail" ".

No firm can vote for its own inclusion or purchase a listing in the MIP World Intellectual Property Survey 2008 or the IP Handbook, which lists the leading firms in trade marks prosecution and contentious work in 65 jurisdictions. The survey is described by its publisher as “the world’s most detailed and authoritative survey of the IP market."

Details of the survey methodology can be found HERE

Survey results for Asia can be found HERE .

About Managing IP

Managing Intellectual Property is the leading international magazine for IP owners, with more than 8,000 readers across the globe. About two-thirds of readers are senior in-house counsel in multinational companies.

Published 10 times a year, Managing IP provides news, comment, data and analysis. Managing IP is part of the Euromoney Legal Media Group, with offices in Hong Kong, London and New York.

About Nicholas Weston

Founded in 2005, Nicholas Weston is small but mighty Australian law firm delivering trade marks and other commercial legal services to clients worldwide in core sectors of disputes, technology, and brands.

Each professional is a dual qualified lawyer and registered trade marks attorney. Nicholas Weston claims practical implementation of thought leadership. The firm is located on Collins Street, Melbourne in the historic Assembly Hall.

For further details contact Nick Weston or Lea Lewin.

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INTA’s 130th Annual Meeting was held between 17 and 21 May 2008 at the ICC in Berlin, Germany. Attended by more than 8,000 trade marks practitioners from around the world, it provided an opportunity for buyers and sellers of trade mark related products and services to meet or catch-up with one another. And to sit in very, very large lecture theatres.

Australians have quietly taken over global IP affairs lately. Australian national, Dr Francis Gurry is the nominee for the position of Director General of WIPO - to be submitted to the General Assemblies of WIPO for final confirmation in September 2008. (Official press release HERE. Salacious gossip HERE and HERE ).

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Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog has moved to so-called 'cloud computing' technology architecture with the adoption of the WebTMS browser-based trade mark management system. According to Nicholas Weston, this infrastructure purchase will significantly strengthen this practice area and prove a real asset to the firm.

WebTMS enables Nicholas Weston to offer clients browser-based trade marks portfolio management applications that utilise the same infrastructure powering major US and UK law firms, and US Fortune 500 corporate IP departments. A list of users can be found HERE.

Key Features of WebTMS

The following key features of WebTMS are set out in detail below and can be summarised as follows:

• the most secure, robust and advanced trade mark management and docketing system available and has been used by the world’s leading firms for over 5 years;
• real time access for Clients to the cases Nicholas Weston is handling for them with 24/7 worldwide secure access to a Client's trade mark portfolio details from any computer with an internet connection;
• foreign Agents can update the cases they are handing for Nicholas Weston;
• a repository for all trade mark and intellectual property data, with images and supporting documents;
• database links to the trade marks offices of 12 jurisdictions, for click throughs, data audits and automatic data loading;
• built in trade mark searching for the 12 online trade marks offices, with search results management;
• workflow wizards to maximize efficiency;
• designed by trade mark attorneys for trade mark attorneys, and supported by extensive user input.

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As of 28 March 2008, the period in which a trade mark can be renewed after its expiry date will be reduced from 12 months to 6 months. This change to the renewal grace period is in accordance with the Trade Marks Amendment Act 2006 (No.114, 2006)

The initial expiry date of all Australian trade mark registrations, including marks claiming convention priority, is 10 years from the original filing date of the application for registration Trade Marks Act 1995 s.72(3)). Requests for renewal of registered trade marks may be made any time within the twelve months prior to the date of expiry (reg. 7.3). For trade marks due to expire on or after 28 March 2008 the grace period for payment of renewal fees is now 6 months, and is not extendible.  When renewing a trade mark during the 6 month grace period:

• a monthly late fee is payable (in addition to the renewal fee); and
• requests for renewal must be in an approved form (Trade Marks Act 1995 s.79).

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Australian applicants for United States trademarks should note a recent decision in the US: Rosenruist-Gestao E Servicos LDA, v. Virgin Enterprises Ltd., No. 06-1588 (4th Cir. Dec. 27, 2007) which held that a foreign company that has no US employees, locations, or business activities must produce a designee to testify at a deposition in the Eastern District of Virginia just because it filed a trademark application with the USPTO, which is located there.

As a result, a litigant in a US trademark dispute can compel an Australian witness (for example) to travel to the USA to give in-person deposition testimony "for use in any contested case" in the USPTO, such as an opposition proceeding to a trademark application.

A Memorandum by Fried Frank, who acted for the successful party in the Rosenruist case, summarises the position. It states:

"Non-U.S. business entities that file applications for United States registration of trademarks or service marks have long been required to “designate” a person “resident in the United States on whom may be served notices or process in proceedings affecting the mark.” If no such designation is made, the Director of Patents and Trademarks, located in Alexandria, Virginia, U.S.A., is deemed by default to be the applicant’s designee for purposes of service of process." . . .

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There are a number of trade marks events coming up early in 2008. The following list is not exhaustive:

19-28 February 2008 IP Passport - Helping your business take off overseas, (Held in various States and centres, see here for dates). Seminars on intellectual property issues when exporting, presented by Australian Chamber of Commerce and Industry (ACCI), and State and Territory Chambers together with IP Australia

20-22 February, 2008 Thomson’s Intellectual Property Strategy Forum 2.0, Sydney. International and local speakers on protecting and leveraging brands.

26-28 February, 2008 IIR’s Branding and Marcomms for Financial Services, Sydney. Puff piece states “Analyse and develop your company's brand positioning, develop winning strategies and instigate future financial success”. Noteable for its lack of a speaker on trade marks issues.

11-12 March, 2008 INTA & IP Australia’s, Trade Mark Regatta - Asia Pacific Conference, Sydney. INTA’s first educational conference in Australia.

13-14 March, 2008 IP Australia’s Senior Trade Mark Officials’ Forum, Sydney. A conference for international trade marks officials and other ‘government stakeholders’.

2-5 April, 2008 IPTA / NZIPA 2008 Joint Annual Conference, Auckland. Includes sessions on harmonisation, U.S. litigation, domain names, trade marks, designs, IP update, oppositions, client relationships and tendering.

17-19 April, 2008 LESANZ Annual Conference - Entrepreneurship and Innovation – Not such risky business, Melbourne.

If there is a conference you think should be listed here, contact us.

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Impact and Virtually Blind blogs report  that “the Second Life Patent and Trademark Office (SLPTO) has opened its doors.” The SLPTO appears to have no connection with the owners of Second Life, Linden Lab.

The SLPTO website states: “We allow you to register, protect, and add value to your Second Life creations to protect your intellectual property rights”. Section 157 of the Trade Marks Act 1995 (Cth) prohibits use of the words "Trade Marks Office" and "words of similar import" in this jurisdiction. It states:

“(1) A person:

(a) must not:

(i) place, or allow to be placed, on the building in which his or her office is situated; or

(ii) use when advertising his or her office or business; or

(iii) place on a document, as a description of his or her office or business;

the words "Trade Marks Office" or "Office for registering trade marks", or words of similar import (whether alone or together with other words); or

(b) must not use in any other way, in connection with his or her business, words that would reasonably lead other persons to believe that his or her office is, or is officially connected with, the Trade Marks Office.

Penalty: 30 penalty units.

(2) An offence under this section is an offence of strict liability.

Similarly, section 177 of the Patents Act 1990 (Cth) prohibits false representations about the Australian Patent Office.

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Nicholas Weston, Lawyers & Trade Marks Attorneys is pleased to announce that Professor Mark Davison has joined the firm as a contributor to the Australian Trade Marks Law Blog.

Mark is currently Associate Dean (Undergraduate Studies) at Australia’s Monash University, and the author of several major works relating to intellectual property and competition law. He is the co-author of the third edition of Shanahan’s Australian Law of Trade Mark and Passing Off, the leading reference work on Australian trade mark law and has written The Legal Protection of Databases, a book published in the intellectual property series of Cambridge University Press. He has also published two casebooks dealing with competition law and aspects of consumer protection. In addition to his doctorate on sui generis protection of databases, he has a diploma in Indonesian language and studies and he is the winner of three Australian Research Council large grants.

Besides teaching Contract Law, Intellectual Property, Trade Marks and Commercial Designations and Copyright in the postgraduate and undergraduate courses at Monash, he has taught in various projects in Thailand, Vietnam and Indonesia.

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On 25 September, 2007, Nicholas Weston Principal Nick Weston was appointed to the International Trademark Association’s (INTA) Law Firm Outreach Sub-Committee of the Alternative Dispute Resolution Committee (ADR) for the 2008 – 2009 committee term.

This year, 2,300 volunteers applied to serve on INTA committees. The INTA Law Firm Outreach Sub-Committee promotes the use of ADR and the INTA Panel of Neutrals to law firms, including INTA Associate member law firms.

INTA describes itself as “a not-for-profit membership association founded in 1878 of more than 5,000 trade mark owners and professionals, from more than 190 countries, dedicated to the support and advancement of trade marks and related intellectual property as elements of fair and effective national and international commerce.”