Setting up a business, or maintaining a business gives rise to a variety of intellectual property (IP) matters, so it is important to understand what your assets are and to act to protect them, according to REBECCA McKENZIE.
The general position is, unless agreed otherwise, any intellectual property created by the employee, in the course of employment, belongs to the employer.
Any argument in relation to ‘in the course of employment’ will usually depend on what the employee has been hired to do and whether the employee was engaging in ‘private’ work.
Australia has comprehensive laws protecting intellectual property, and our team is available to advise you on your IP assets, rights, and obligations.
Here is a simple checklist you can use to undertake an audit of your IP assets.
Our IP Checklist: Undertake an Intellectual Property ‘Audit’
- Identify and record your IP assets; you cannot protect and manage your IP without first identifying it.
- Assess the extent of your IP assets within your business, including existing and hidden IP acquired or developed by the business.
- Determine the origin and legal ownership of the IP identified.
- Assess the competitive advantage of your IP assets to ensure integration of IP management within the businesses’ overall strategy and operations.
- Create internal policies and practices for the identification, protection and treatment of IP.
- Protect and manage the IP assets in your business: attend to registration where required.
- Consider the ‘value’ of the IP identified – assess the benefits that the IP brings to the business and where appropriate, obtain an economic valuation.
- Minimise risk for legal action for infringing third-party IP.
What are IP assets?
Examples include copyright, patents for inventions, trade marks, registered designs, circuit layouts, trade secrets, confidential information and domain names.
What is Copyright?
Copyright protects the form of expression of an idea and can therefore subsist in a wide variety of common business materials such as:
- Letters and emails;
- Software and computer manuals; and
- Drawings, maps, diagrams and flow charts.
There is no registration requirement for copyright protection in Australia; the copyright to a particular idea arises upon creation of the relevant subject matter or work.
In the usual course a copyright owner has the exclusive right to reproduce, publish, communicate to the public and (with some exceptions) prevent others from doing these things.
What are Patents?
The Patent system in Australia includes coverage of ‘business methods’ or ‘business systems’, which is generally described as a scheme, plan or method of administering, managing or operating an enterprise or organisation.
There are effectively two (2) types of Patents in Australia:
- a standard Patent – protection and control over an invention for up to 20 years; or
- an innovation Patent – protection lasting a maximum of eight (8) years (less expensive and quicker to secure).
You can apply for what is called a ‘provisional’ application, (as opposed to a ‘complete’ application) which will allow you 12 months to consider whether you wish to make a formal application for a Patent (taking into account the financial benefits, business strategy for your idea etc).
Another benefit of a provisional application is that you secure what is called a ‘priority date’, that is, ensuring that you will have priority over any later applications to register your business system.
Once an application for a Patent is lodged through the Australian Patents Office, it then goes through a fairly rigorous examination in relation to the patentability of the product or process so as to ensure its appropriateness for a patent.
What are Trade Marks?
A Trade Mark is a sign such as a brand name or symbol which is used to distinguish the trade source of goods and services provided by one person from another.
Once a Trade Mark is successfully registered through the Australian Trade Marks Office, the owner of the mark has the legal right to use, license or sell the mark. International registration is also available.
1) Definition of Trade Marks (Internal Requirements)
A Trade Mark is described in the Trade Marks Act 1995 (‘the Act’) as a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person (or company) from goods or services dealt with or provided by any other person (or company).
A Trade Mark may consist of any combination of following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
2) Rights Given By Registration
The registration of a Trade Mark under the Act gives the owner of the Trade Mark the exclusive right to:
- use the Trade Mark in relation to the classes of goods or services in respect of which it is registered, and
- authorise other parties to use the Trade Mark.
These exclusive rights exist for the benefit of the owner of the Trade Mark for a period of 10 years from the date of on which a successful application is filed.
Significantly, registration of a Trade Mark may be renewed, upon payment of the prescribed fee, for consecutive periods of 10 years each indefinitely.
A Trade Mark must first satisfy the internal requirements addressed above before it will be considered for registration. That is, the Trade Mark must be a sign used, or intended to be used, to distinguish goods or services in trade from those of others.
A Trade Mark must also be inherently capable of distinguishing the goods or services in respect of which the Trade Mark is to be registered from the goods or services of others.
The use of the Trade Mark in relation to the goods or service for a period prior to the filing of an application to register it may affect the determination of whether the Trade Mark is sufficiently distinctive.
However, even if a Trade Mark meets these initial requirements, it will generally not be registrable if it is ‘substantially identical with, or deceptively similar to’ a registered Trade Mark or a Trade Mark in respect of which registration is pending and which has an earlier priority date (ie. date of filing of application).
Furthermore, a Trade Mark is not registrable if:
- because of some connotation that the Trade Mark or a sign contained in the Trade Mark has, the use of the Trade Mark in relation to the relevant goods or services would be likely to deceive or cause confusion, or
- it is substantially identical with, or deceptively similar to, an unregistered Trade Mark that has acquired a reputation in Australia and because of the reputation of that other Trade Mark, the use of the proposed Trade Mark would be likely to deceive or cause confusion.
4) Protection for Unregistered Marks
A mark that is used as a Trade Mark although not registered is still given some protection under the law, albeit, that infringement may not be as apparent.
The Competition and Consumer Act 2010 (Cth) provides that a person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. A breach of the Act entitles the party who has suffered loss as a result of the breach to recover damages from the infringing party.
The common law also offers some protection under the tort of ‘passing off’. This cause of action will accrue where a party has made a misrepresentation to the public (whether intentional or not), leading or likely to lead, the public to believe that the goods offered by the second party are the first party’s goods and the first party has suffered loss as a result of the same.
Where a Trade Mark has been registered, the remedies addressed under this heading would exist in addition to the specific actions available for infringement of a Trade Mark as set out in the Act.
5) Infringement of Trade Marks
The Act states that a registered Trade Mark is infringed if a person uses as a Trade Mark a sign that is ‘substantially identical with, or deceptively similar to’, the Trade Mark in relation to:
- the goods or services in respect of which the Trade Mark is registered,
- goods of services of the same description as, or that are closely related to, the goods or services in respect of which the Trade Mark is registered.
A person will also infringe a registered Trade Mark if the Trade Mark is well known in Australia and the person uses as a Trade Mark a sign that is substantially identical with, or deceptively similar to, the Trade Mark in relation to goods or services which are not of the same description, nor closely related to, the goods or services in respect of which the Trade Mark is registered. Because the Trade Mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the Trade Mark and, for that reason, the interests of the registered owner are likely to be adversely affected.
What are Designs?
Under the Designs Act 2003 (Cth) a design is defined to mean the overall appearance of a product resulting from one or more visual features of a product.
The registered owner of a registered design has the exclusive right in Australia, during the terms of the registration, to:
- make a product which embodies the design;
- import such a product into Australia for sale or use for the purposes of any trade or business;
- sell, hire or otherwise dispose of such a product; and
- use such a product in any way for the purposes of any trade or business.
A person infringes a registered design if they do any of the above without the licence or authority of the registered owner.