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Terms Of Engagement

TERMS OF ENGAGEMENT

1. The terms of our contract

1.1 Your contract for each service provided by us is made up exclusively of:

(a) the Client Agreement; and

(b) these Terms of Engagement.

1.2 This contract supersedes and replaces any and all prior agreements between you and us.

1.3 We reserve the right to unilaterally amend the Terms of Engagement with seven days’ notice if:

(a) the change is required to comply with any law or lawful requirement of any regulatory agency; or

(b) the change is required to maintain any accreditation we are required to have at law to perform particular services;

1.4 The contract commences on the earlier of:

(a) the date on which we begin providing the services to you; and

(b) the date on which the contract is agreed to by you and us.

1.5 Any additional or new trade mark work we do for you will be subject to this contract unless otherwise agreed, under the Schedule of Fees current at the time you instruct us to undertake the matter.

1.6 No breach of the contract will be construed as a consent to, or waiver of, any other breach of the contract or of any other agreement between us and you.

1.7 If any clause or provision of the contract is invalid, void or unenforceable, all other provisions which are capable of separate enforcement will continue to be in force.

2. Definitions

2.1 In these Terms of Engagement:

“Client” and “You” means the client identified in the Client Agreement.

“Company”, “We” and “Us” means Acorn Trade Mark Attorneys Pty Ltd ACN 623 169 148.

“Services” means all or any part of the services to be provided by us under this contract.

3. Services

3.1 The services we are to perform are set out in the Client Agreement. We will not be obliged to undertake tasks unless they are set out in that letter or in subsequent written communications between us.

3.2 The scope of the services may expand beyond Client Agreement at your request. If so, we reserve the right to renegotiate the fees, cost estimates and disbursements (in keeping with the published Schedule of Fees, so far as possible).

3.3 As trade mark attorneys, we do not provide advice on other matters such as patents, finance, general legal issues, taxation or accounting. Our network includes qualified professionals in all of those fields, and we would be very happy to refer you if you require advice on any of those matters.

4. Agency and delegation

4.1 We will undertake the services and perform the powers, duties or authorities conferred on us by you as your agent on the terms stated in our contract.

4.2 We may delegate the performance of any obligation of ours under the contract at our discretion.

5. Hours of business

5.1 Normal hours of business are Monday through Friday from 0900 to 1700.

5.2 We are happy to hold discussions outside of normal business hours, subject to prior arrangement.

6. Our obligations to you

6.1 We will provide the services to you as set out in the Client Agreement.

6.2 We will provide those services in accordance with the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018.

6.3 We will write to you in plain English, to the extent possible.

6.4 We will communicate by email in the first instance, except where hard copies of documents are necessary. This allows both parties to keep track of discussions, and avoid telephone tag or interrupted business meetings.

6.5 As your matter develops, we will keep you regularly informed of progress.

6.6 We will promptly advise of any additional legal work that may be required (or which is advisable), and will explain the related costs, benefits and risks of the main options.

6.7 We will advise you of any changes to the timeline for completing the services.

7. Your obligations to us

7.1 You will provide us with timely and sufficient instructions.

7.2 You will inform us of any changes to your contact details as soon as practicable.

7.3 For services provided on an ongoing (eg monthly) basis, you will ensure your payment details are up to date so we can process payments.

7.4 You will respond promptly and accurately to our communications, particularly our requests for information or documentation.
7.5 You will advise us promptly of any relevant information that needs to be updated.

7.6 You will fully and carefully consider the advice and documents we provide.

7.7 You will advise us if you attend to any matters yourself without instructing us.

7.8 You will consider seeking a second opinion on matters which involve material risk.

7.9 You understand that it is your role to make final decisions in this matter, and will exercise informed judgement taking account of all relevant circumstances.

8. Notices

8.1 All notices under our contract must be in writing and given by email or post at the addresses of the parties included in the Client Agreement.

9. Deadlines

9.1 We will give you as much warning as practicable of any deadlines or changes to deadlines, and we will do our best to be flexible about your needs.

9.2 You must accept that when we do set a deadline for you, failing to meet it may prove fatal to your matter. The Australian Trade Marks Office is constrained by legislation that limits their ability to issue extensions of time, and, depending on the amount of time lost due to a missed deadline, Acorn Trade Mark Attorneys may not have the capacity to make up for it.

9.3 We will consider undertaking urgent work to remedy missed deadlines only if we have a realistic hope of successfully completing the job. Any such work we agree to do will be expressly subject to Clause 13.3 (“Warranties and Indemnity”) below, and will attract our standard “urgent task” surcharge.

10. Fees, disbursements, rescheduling, cancellations and refunds

10.1 Fees are payable in advance.

10.2 Our fees are listed in the Schedule of Fees which is published on our website and updated from time to time.

10.3 We prefer wherever possible to undertake work on a fixed fee basis. We will undertake work at an hourly rate only after prior discussion of the likely time and cost involved.

10.4 Consultations may be rescheduled (to a mutually-acceptable date and time) up to 72 hours in advance for an in-person meeting, or 24 hours in advance for other meetings.

10.5 Fees will be refundable if:

(a) we have not yet made any irreversible government payments; and

(b) we have not yet done any substantial work on your matter; and

(c) we have not engaged another party to assist us with work on your behalf;

(d) or, in the case of consultation meetings, you have provided 72 hours’ warning for cancelling an in-person appointment, or 24 hours’ warning for other appointments.

10.6 If we agree that a refund is due, we will provide the refund within 14 days.

10.7 Any additional expenses you require us to incur for this matter (such as express post or courier service) will be added to your account at cost.

10.8 If we issue an invoice, you must pay within 14 days of issue, otherwise we may charge interest on the unpaid amount at the rate of 10% per annum.

10.9 If your invoice remains unpaid after 30 days, we may suspend performance of our services until the invoice is paid.

10.10 The person signing this contract on behalf of a company agrees to be personally liable for any unpaid debt to Acorn Trade Mark Attorneys.

11. Cost estimates

11.1 In any matter where we lack the certainty to provide a fixed-fee quote, we provide a cost estimate in the attached Client Agreement.

11.2 By its nature, a cost estimate is subject to change if the scope or nature of the services changes, or if unforeseen circumstances arise. Consequently the final costs may differ from the estimate. You should therefore view the estimate as our best guess of the cost of our services based on the information given us to date.

12. Storage of data / data security

12.1 We will retain a copy of your file for seven years, after which we may destroy the file if it is no longer active.

12.2 We will take reasonable measures to ensure that your personal information is stored securely and is protected from unauthorised access, modification or disclosure. This includes 24/7 physical security at our premises; modern professional IT security on office computers and third-party servers; and SSL encryption from browser to server.

12.3 We do not see, handle or store any of your credit card information. Although payments are made via our website, the credit card is actually processed by a separate, secure third-party payment gateway which is compliant with the PCI DSS (Payment Card Industry Data Security Standard). The PCI DSS is a set of international security standards designed to ensure all companies that accept, process, store or transmit credit card information maintain a secure environment.

13. Warranties and indemnity

13.1 You warrant to us that you have the right to instruct us in matters related to the trade mark(s) in question.

13.2 You are responsible for ensuring that the services and any application lodged are suitable for the purpose for which you are purchasing them. We issue no warranty as to the suitability of the services, and no guarantee that any application filed on your behalf will succeed at the relevant Trade Marks Office.

13.3 You shall indemnify and keep indemnified our company, its directors, attorneys, employees, related parties and successors, and assign from and against all actions, suits, claim, loss, damage, expense and demands and costs, arising out of or in relation to the actions or omissions of you or your servants, agents and/or employees.

14. Contractual limit of liability

14.1 To the extent permitted by law, our liability to you in respect of any cost, damage, liability, expense or loss including those caused or contributed to by our negligence is limited to the provision of further or replacement services or $5,000 in our discretion.

14.2 The extent to which any cost, damage, liability, expense or loss will be recoverable by you from us will be limited in proportion to our contribution to the overall fault for such loss or damage.

14.3 The provisions of this section shall continue to apply notwithstanding termination of our engagement for any reason.

15. Conflict of interest

15.1 We reserve the right to withdraw from acting on your behalf, if a conflict of interest develops between you and a third party and/or us.

16. Confidentiality

16.1 You understand that the information we file in a trade mark application – even information you may consider sensitive or confidential – will be published in the public domain by the relevant Trade Marks Office.

16.2 You agree to keep all correspondence between us confidential and not disclose it to any third party, except to the extent required by a court of competent jurisdiction, a government body or an applicable regulatory authority.

17. Jurisdiction

17.1 This contract shall be governed and construed in accordance with the laws of the state of Victoria, Australia, and the parties shall submit to the jurisdiction of the courts of Victoria.

18. Disputes and arbitration

18.1 Any disputes or differences which arise between us and you with respect to the contract will be referred to a single arbitrator in accordance with the provisions of the Commercial Arbitration Act 2011 (VIC) or any re-enactment or statutory modification of that law in force.

19. Termination

19.1 This contract may be terminated by either party providing 7 days written notice to the other.

19.2 On termination, any outstanding costs and disbursements that we have incurred on your behalf will become due and payable within 14 days.

ONLY FOR THE TRADE MARK DOCTOR™ INITIAL LEGAL ANALYSIS

CLIENT AGREEMENT

Thank you for deciding to engage us for an Initial Legal Analysis. We will be providing this as part of our TRADE MARK DOCTOR™ service, which helps clients who have run into an obstacle with the Australian Trade Marks Office at IP Australia.

To that end, this Client Agreement sets out certain formalities such as the work you are instructing us to do, the estimated timing, and the costs. This Client Agreement and the Terms of Engagement above will formally outline the terms on which we agree to act on your behalf, and define important aspects of the relationship between us.

About Acorn Trade Mark Attorneys

Acorn Trade Mark Attorneys Pty Ltd ACN 623 169 148 is a privately-held trade mark law firm registered in Victoria, Australia. Unless otherwise indicated, under this Client Agreement your representative will be Matthew Ginn, our Principal Trade Mark Attorney. As a trade mark attorney registered both in Australia and New Zealand, he has the appropriate competency to undertake the work you propose, and is bound by the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018.

Your trade mark and the registration process

During the first stage of the registration process, the Australian Trade Marks Office at IP Australia examined your trade mark application and concluded that did did not meet the legal requirements.

The first step in addressing this is to conduct the present Initial Legal Analysis. It involves reviewing your circumstances in light of existing law, considering options, discussing your matter, and coming to an agreement about how to proceed.

If you do decide to contest IP Australia’s opinion, we will need to mount one or more legal arguments aimed at overcoming their objections. We will be happy to consider undertaking that as a separate matter, under a fresh Client Agreement.

If we are successful in overcoming their objections, there will be a further stage during which the public may contest your application. Again, if you require assistance during this phase, we will be happy to consider undertaking it as a separate matter.

The registration process is governed by national legislation and international treaties. As a result, even the quickest Australian registration would take seven and a half months (although the validity of the trade mark is backdated to the day of application). With objections, appeals, extensions and/or government delays, it can take considerably longer.

Your Requirements / Description of Services and Fees

Client objectives / desired outcomes

We understand that your present underlying business need is to establish whether you have a reasonable chance of overcoming IP Australia’s objections to your trade mark application.

Therefore you require us to conduct an Initial Legal Analysis as follows.

Scope of the Initial Legal Analysis

We will review IP Australia’s decision(s); consider alternative approaches to overcoming their objection; consult you about relevant business history and circumstances; conduct a legal analysis; and provide you with a briefing setting out your options and our assessment of the prospects for your application’s eventual success.

Any additional legal advice, support or action which may prove necessary to proceed to registration (such as responding to further material adverse reports from the Australian Trade Marks Office, or responding to an opposition from a member of the public) would be subject to separate instructions and fees.

Costs

The fees in this Client Agreement total $195.00 (including GST), for each trade mark under consideration.

Our standard terms for fees, disbursements, rescheduling, cancellations and refunds are set out in the Terms of Engagement.

Payment is required in advance, although we are willing to invoice you separately for minor incidentals that you request later, such as express postage or courier costs.

Payment is to be made via the ‘Payments’ page on our website, which leads direct to a separate, secure payment gateway, ensuring that your credit card details are kept private and secure.

Subsequent Steps

  • If you chose to proceed with your trade mark application, the main options are:
    1. Option 01: Acorn Trade Mark Attorneys would be able to provide suitable legal advice and correspondence at additional cost under a new Client Agreement; or
    2. Option 02: you would be within your rights to represent yourself.
  • If you chose not to proceed with your trade mark application(s), the main options are:
    1. Option 01: you could abandon your trade mark application(s), and would then have no further obligations to us or to IP Australia;
    2. Option 02: Acorn Trade Mark Attorneys would be able to provide separate legal advice and assistance with filing a fresh application which has better prospects of success; or
    3. Option 03: you could file an entirely new application by yourself, with no further obligations to us.

Timing

It is important to remember that in most cases a trade mark application will lapse if it is not resolved within 15 months of IP Australia’s first ‘adverse report’.

Timing estimates are subject to your prompt response to requests for information.

The following step-by-step outline is an estimate of the time we will require to attend to your matter.

Review IP Australia’s decision(s)

Five working days.

Consider alternative approaches to overcoming their objection

Five working days.

Consult you about relevant business history and circumstances

Ten working days.

Conduct a legal analysis

Ten working days.

Draft and provide you with the results

Fifteen working days.

Assumptions

In accepting your instructions and making an estimate of costs and timing, we have assumed that:

  1. no work apart from what is described in the Description of Services and Fees will be required;
  2. you have fully informed us of all the relevant facts relating to the matter and the work to be done;
  3. we will promptly receive from you and all other relevant parties any additional information or documents that we request;
  4. any third-party consents and approvals will be given promptly and not involve protracted correspondence or negotiations;
  5. government authorities will not impose unusual delays in the matter; and
  6. no unforeseen circumstances will arise which affect our estimate.

The Agreement

This offer remains in force unless terminated under the Terms of Engagement.

Proceeding with payment confirms that you have read and agree to be bound by this Client Agreement and Terms of Engagement, and authorise us to act on your instructions.