Intellectual Property Protection

A Trade Mark is a sign used, or intended to be used, to distinguish your goods or services from the goods or services of others.

The sign can be your business or brand name, logo, slogan, icon, shape, scent, sound or even a colour. More often than not, a Trade Mark will be a brand name and/or logo.

Trade Mark registration under the Trade Marks Act 1995 (Cth) grants an owner the exclusive right to use the Trade Mark in relation to the corresponding classes of goods or services for a period of 10 years.

A sign or mark will be eligible for registration as a Trade Mark if it inherently capable of distinguishing your goods or services from those of others and would not infringe any existing Trade Mark.

A Trade Mark is infringed if a person uses as a trade mark a sign or mark that is substantially identical with, or deceptively similar to, the registered Trade Mark in relation to goods or services in respect of which the Trade Mark is registered (some exceptions apply).

When a brand or logo is not registered as a Trade Mark under the Trade Marks Act, protection of a business’ brand or name is usually dependant on whether a third party is:

• using a mark or sign in a manner that is misleading or deceptive under The Australian Consumer Law, or
• falsely represents their goods or services are those of another, or that their business is somehow associated with the business harmed, such that an action lies under the common law off passing off.

Registration of a Trade Mark is highly recommended as the preferred option for protecting business names, logos and reputations as:

• Conduct by a competitor that merely causes customers confusion and does not in fact mislead or deceive them will likely not otherwise be actionable, and
• Conduct that it is aimed at customers who are unfamiliar with a business’ reputation will not be actionable as the business will not have suffered any loss or damage.

Confidential Information and Trade Secrets may include Client Lists, new ideas and inventions, unpublished literary or other work, business practices, plans and strategies, business records, business contracts, research and development information, employee and contractor information, and other information not available to the public.

The common law action for breach of confidence exists to address the misuse or misappropriation of Confidential Information, however, the action is only available if:

• The information was imparted in circumstances expressly or impliedly importing an obligation of confidence,
• The information is inherently confidential, or
• The use of the information was unauthorised.

Copyright is an unregistered intellectual property right that arises under the Copyright Act 1968 (Cth) when a person publishes an original work expressing an idea or information founded on the person’s creative skill and labour.

Copyright material includes literary works such as books and articles, artworks, software, film and sound recordings.

If the work is sufficiently original, there is no registration requirement; Copyright will subsist in the work from the date of first publication.

Copyright generally gives the owner the exclusive right to reproduce, publish, perform, communicate to the public, adapt, the Copyright protected work for a period of 70 years after the year of first publication.

Whilst there is no need for registration for Copyright to subsist, it should be noted that:

• Copyright in relation to an artistic work will not be infringed if a corresponding design has been applied industrially and products made to the corresponding design have been sold, hired or offered or exposed for sale or hire. Where a design corresponding to an artistic work is intended to be applied industrially an application should be made to register the Design under the Designs Act.
• Copyright in a work may only be assigned or exclusively licensed pursuant to a written instrument signed by the Copyright owner.

Moral Rights also arise under the Copyright Act and are conferred on individual authors or makers of works. Moral Rights include a right to be identified as the author of copyright protected work.

Moral Rights are not, however, infringed if an act is done, or not done, within the scope of a written consent genuinely given by the author.

To manage risks of infringing employees’ or contractors’ Moral Rights in relation to work created in the course of employment or engagement, businesses should make contracts that include appropriate Moral Rights consent clauses.

A Design is a feature of shape, pattern or configuration applicable to an article.

A Design is registrable under the Designs Act 2003 (Cth) if it is new and distinctive when compared with the applicable prior art base for the design.

Generally, a Design will be considered new and distinctive unless it is identical, or substantially similar in overall impression, to a design that forms part of the applicable prior art base.

Design Rights under the Designs Act protect the overall visual appearance of new and distinctive of products.

Registration of a Design gives the owner the exclusive right to make, import for sale or use, sell, hire or otherwise dispose of or use a product which embodies the Design; or to offer to do any of the foregoing.

Nevertheless, until a registered Design is examined and certified by IP Australian the Design Right is not enforceable.

A Design Right can be registered for 5 years and renewed once for a further period of 5 years.

A registered Patent is a right enforceable under the Patents Act 1900 (Cth) for the protection of inventions in connection with a device, substance, method or process.

An invention is patentable if it is a new manner of new manufacture, is innovative or involves an inventive step, is useful, and was not secretly used in the patent area prior to the priority date.

A registered Patent gives its owner the exclusive right to exploit the invention and to authorise others to exploit the invention in the patent area. The duration of protection will depend on the type of patent held; up to 20 years for a standard patent.

Patent Applications and the form and detail of Specifications required to support them can be quite complex and the assistance of a Patent Attorney is recommended at any early stage.

We recommend that you consult our IP Lawyers initially to consider with your invention is likely to be patentable and/or what other forms of intellectual property protection should be considered. If a Patent Application is recommended, we can refer you to a Patent Attorney or liaise with a Patent Attorney on your behalf.