Blake Knowles is a Principal and Head of Trade Marks at Cullens. He joined Cullens in 2010 and was elevated to partner in 2014. Blake is a specialist in trade mark due diligence, registration, oppositions and dispute resolution. He has acted on behalf of clients in relation to trade mark applications, oppositions and disputes in many countries. Blake currently manages a portfolio of 5,000 trade marks. Blake has spent practically all of his adult working life in the field of trade marks. Prior to joining Cullens in 2010, Blake held a number of positions at the Australian Trade Marks Office. Blake was a Principal Examiner of Trade Marks, and also Assistant Director of the Trade Marks Hearings and Oppositions section. In his role at IP Australia, Blake was responsible for developing practice and procedure, including authoring parts of the Trade Marks Office Examination Manual. Blake has also represented the Australian Government at international conferences in the field of intellectual property. As former Principal Examiner, Blake is an expert in Australian Trade Marks Office practice. Since joining Cullens, Blake has been successful in having over 100 examination decisions successfully reviewed, based on legal argument alone. Blake has acted on behalf of many established brand owners, including ALDI, Teys, Aurizon, Billabong and Daimler. Blake also regularly acts for emerging businesses, particularly those based in Queensland.
We had the pleasure of sitting down with Blake recently to discuss key challenges and opportunities facing the industry today.
You can find the full Q&A below.
What are some of the key trends and developments in the area of IP law that are having an impact right now?
In the area of trade marks, the Federal Court has recently handed down decisions that either adopt a restrictive and technical interpretation of the law, or run counter to commonly understood applications of existing authority. These decisions relate to ownership or ‘proprietorship’ of a trade mark at common law, and can have significant ramifications (including invalidation of trade mark rights based on what may seem to be innocuous errors or choices at the time of filing an application). In this environment, the importance of getting a trade mark application right at the time of filing cannot be overstated.
How do you see technology and innovation shaping IP law in the future?
Much of IP law is devoted to protecting innovation and advances in technology. However, the law itself does not always keep up with the realities of the market. We are likely to need more frequent changes to legislation to correct anomalies that are caused by rapid advances in new products and services.
Is there anything you see some people overlook or underestimate related to managing IP portfolios, or a mistake you commonly see arise?
It is very important to make sure that trade marks are held by the correct entity, particularly within a corporate group, and that IP arrangements within a corporate group are properly documented. Registering a trade mark in the name of an inappropriate entity can result in invalidity and loss of rights.
What’s one tip or strategy you can recommend to best manage an IP portfolio?
Your IP is usually the most valuable asset of your business. Ensure your portfolio is managed and monitored by a reputable firm. Some micro firms or ‘consultants’ may be cheap but if they go belly up, rights can lapse irretrievably. One of my clients recently found this out and the cost for reregistering the trade mark was significant.
What are some early steps to consider when you discover a potential IP infringement?
Do as much research into the alleged infringer as possible, and record everything relating to the infringing activity. Then call your advisor to discuss next steps.
What should practitioners keep in mind when balancing the legal and business considerations involved in deciding whether to prosecute, maintain or abandon IP when infringement occurs?
You need to prioritise. Unless you are Apple or Google, you can’t protect every trade mark in every country. There is also no point in protecting IP if it leaves no funds left to develop and expand the business. My rule of thumb is ‘key marks in key markets’.
Is there a particular consideration practitioners should keep in mind when dealing with global IP issues?
Yes… we live in a globalised market with highly fragmented IP laws. Don’t assume because you have obtained trade mark rights in one country that you are free to use that trade mark elsewhere (including sale of goods of the internet).
You can hear more from Blake at the 5th Annual Intellectual Property Symposium: Updates and Commercialization seminar, being held on Wednesday 14 March at the Mercure Hotel Brisbane, Brisbane.