Adopting a holistic approach to legal issues and setting out options, strategies and a sensible way forward are the crux of my approach to providing legal advice to clients in the intellectual property and therapeutic goods regulation spaces.
I am an experienced intellectual property (IP) lawyer with a particular focus on all aspects of matters before the Australian and New Zealand IP Offices in respect of trade marks and designs. I specialise in all aspects of trade mark law including Australian, New Zealand and foreign trade mark clearances, filings and prosecutions, filing strategies and trade mark portfolio management. Clients also seek my advice in respect of the creation, adoption, use and enforcement of trade marks and I regularly assist them in respect of dealing with trade mark oppositions, disputes and commercialisation issues. This includes conducting due diligence and advising on assignments, IP ownership and licensing issues. My clients also call on me to assist on industrial design clearance and registration and advising on labelling requirements, business name registrations, domain name disputes and registrations.
In addition to my legal and commerce qualifications, I hold a degree in health science (majoring in complementary medicine) and have experience in advising on the regulatory aspects of complementary medicine. This includes advising in respect of Therapeutic Goods Administration (TGA) listing and registration requirements, product labelling and advertising requirements for the providers of complementary medicines (in addition to advising on IP rights for complementary medicine businesses).
I have worked in the field of intellectual property since 1995, initially as a trade marks examiner with IP Australia, then as a trade marks attorney with two large Australian firms and subsequently as a lawyer with a highly respected leading IP practice before joining Addisons in March 2011.
The Stars Group — provide advice involving all aspects of the intellectual property portfolio of The Stars Group in Australia and New Zealand including brand clearance, prosecution, enforcement, dispute resolution and portfolio management.
Snap Inc — provide advice encompassing various aspects of protecting and enforcing Snap’s trade marks in Australia.
Atlassian — advise on various trade mark matters for this client in Australia.
Lacorium Health — handle all of this client's Australian, New Zealand and foreign trade mark work including brand clearance, filing and registering trade marks, portfolio management and attending to opposition matters and disputes.
Spectrumceuticals — advise on various aspects of intellectual property including brand management and protection as well general business issues.
Abu Garcia (Pure Fishing) — assisting on business collaborations, licensing and general intellectual property work.
World Trademark Review (WTR 1000) — Trademark Prosecution & Strategy, Australia — 2017 - 2021
Committees and memberships
Fellow, Institute of Patent and Trade Mark Attorneys
Member, Intellectual Property Society of Australia and New Zealand
INTA Committee Member, Free Trade Agreements
Member, Australasian Integrative Medicine Association
Banking, Finance and Insurance
Information & Technology
Therapeutic Goods and Cosmetics
Other areas of expertise
Brand protection strategies
Design clearance, registration and portfolio management
Bachelor of Commerce, Australian National University
Graduate Certificate in Trade Mark Law and Practice, University of Technology, Sydney
Juris Doctor, University of Technology, Sydney
Bachelor of Health Science (Complementary Medicine), University of New England
Registered Trade Marks Attorney
“[Tim Clarke] He is particularly experienced with Madrid Protocol matters and handles proceedings before the Australian and New Zealand trademark and designs offices. “His advice is prompt and holistic. He is a well-rounded practitioner who is fantastic at communicating very complex ideas and devising cost-effective solutions. Tim is personable, knowledgeable, thorough and pragmatic.”