Matthew Corliss, trade mark solicitor in our Auckland office, has recently received his certificate of registration to practice as a trade mark attorney in Australia. He also holds an LLB, BCom, and a Master of Intellectual Property, qualifications that together provide a strong foundation at the intersection of brand protection, law, and the trade mark process.
This certification recognises Matthew’s knowledge of Australian trade marks law and practice, complementing the expertise of the wider trade mark team who are already well established in the Australian market. As an organisation dedicated to helping clients navigate the trade mark system in Australia, New Zealand and the Pacific Islands, this additional qualification strengthens our capability and further enables Matthew to deliver seamless trans-Tasman brand protection.
We sat down with Matthew to learn more about what’s involved in achieving this registration.
I completed my law degree in 2021 and was fiercely interested in IP and technology law, having had a taste of these in my undergraduate courses. Whilst pondering the possibility of further study in the field of intellectual property I was pointed toward the Australian Trade Mark Attorney system. However, Auckland University was still developing the necessary courses to meet accreditation for registration as an Australian Trade Mark Attorney.
I wanted to jump straight into further study after finishing my undergraduate degree and started a Masters of Intellectual Property at the University of Technology Sydney (UTS) in 2022. The masters required completing eight papers across a wide variety of intellectual property fields such as copyright, patent law, designs law, commercialisation of intellectual property, and of course trade marks.
Completing these papers allowed me to meet the accreditation requirements for registration as an Australian trade mark attorney.
With the University of Auckland now offering the courses, registration should be much more accessible. Prior to this the only option was to study for accreditation at Australian Universities, even if you wanted to seek registration as a New Zealand patent attorney. New Zealand law does not have any provision for registration of trade mark attorneys.
Q: You also hold an LLB, BCom, and a Master of Intellectual Property, qualifications that align closely with your trade mark specialisation. How do these studies help you support clients in strengthening their brand position?
My BCom majored in marketing and management, and I began working in marketing whilst completing my undergraduate law degree and masters of intellectual property. I worked with small to medium businesses using a broad holistic approach to digital presence. I was undertaking a variety of tasks from website building, copy writing, social media content management, search engine optimisation and managing google ad accounts. I realised that small to medium businesses are often very descriptive with their branding. My experience in marketing allows me to understand and better explain to clients that unfortunately, being descriptive does not make you stand out or be memorable and your brand is not likely to be registrable if it is descriptive.
There is a time and a place for being descriptive, and that is in search engine optimisation, not in the name of your company or brand.
The last thing you want is to pour your heart and soul into a business and then realise that your business name is not protectable because it is descriptive of the goods or services, allowing other traders to use those words in connection with their business. I now applaud clients that use creative names and branding, as not only will it make their brand more memorable, but it means that their brand may be registrable as a trade mark.
Q: On a personal note, you volunteer as a coach for the Kaipātiki First XV rugby team on Auckland’s North Shore. How did you get involved in that?
After leaving high school I played for several years but had a bad run of injuries from 2015-2019 and decided to hang up the boots. It was tough hanging up the boots as from a young age I aspired to play professional rugby, having played for age grade representative sides over the years. However, the constant injuries were a cause for concern.
When a friend noticed I was no longer playing he asked if I would coach the u15 Kaipātiki side with him.
I saw it as an opportunity to give back to the sport, to pass on the knowledge I gained from my exposure to brilliant coaches such as Tana Umaga, Tai Lavea and Dave Rennie.
Coaching was a great way to be involved in the sport I love without worrying my partner about another injury (or so I thought). Coaching also allows me to teach these young men the importance of teamwork and discipline in a fun, interactive environment. Seeing these young men grow and develop throughout the season, or for some, over the last three years has been very rewarding. In my first season coaching First XV we managed to make semi-finals, unfortunately, this year we just fell short as we struggled to field a team some weeks due to injuries.
See our registered Trade Mark Attorneys here.
