How can you protect your brands and ideas?

Australia has extensive intellectual property laws that can protect the branding and ideas associated with most business ventures. Forms of intellectual property protected in Australia include trade marks, copyright, patents, and designs. The system is administered by IP Australia, a Commonwealth government agency.

Trade marks

Trade marks are protected under the Trade Marks Act 1995 (Cth) and associated regulations. They can be registered for names, logos, aspects of packaging, shapes, colours, sounds and scents.

As the application process can take between 6 to 12 months, traders should consider applying to register trade marks as far in advance of starting to trade in Australia as possible.

Trade marks provide 10 years of protection which is renewable for a further 10 year term.

Australia is a signatory to a number of international trade mark conventions. This means that if an application for registration of a trade mark is made in Australia within 6 months of an application by the same person in a convention country, the applicant can claim the convention country filing date as the priority date.

Passing off and misleading or deceptive conduct

Trade marks, names and brands may also be protected under “passing off” and the Australian Consumer Law that prohibits corporations from engaging in misleading or deceptive conduct in trade or commerce. In both cases, it is necessary to establish a reputation for the trade mark, name or brand. Legal advice should be sought if a product new to the Australian market is coming close to an existing product design, whether registered or unregistered in the Australian market.

In 2017 an Australian court found an infringement where a company copied the colours, size, shape, and get-up of another brand’s packaging.

Patents

Patents to protect inventions are granted under the Patents Act 1990 (Cth) (Patents Act) and associated regulations.

A patent confers an exclusive right to exploit the invention claimed during the term of the patent.

A standard patent typically provides 20 years of protection, but may be extended by up to five years in the case of certain patents for pharmaceutical substances.

In order to be valid, the proposed patent-holder must claim an invention which is patentable subject matter. The invention must also be novel, inventive and useful.

Prior to applying to register a patent, existing prior art should be searched. This search should include patents included in IP Australia’s database, AusPat.

The patent application can be made through the online registration system. An application fee is required.

Innovation patents

The Patents Act also recognises innovation patents, which have a term of eight years (which cannot be extended). Inventions claimed in innovation patents are required to be “innovative”. This is a lower threshold for inventiveness than standard patents (which must be inventive).

Copyright

Copyright is protected in Australia under the Copyright Act 1968 (Cth) (Copyright Act) and associated regulations. Amendments to the Copyright Act are currently under consideration, with proposed changes relating to disability access, preservation, licensing for educational institutions, and unpublished material.

In general, copyright subsists until 70 years following the death of the author. Recent changes proposed to the Copyright Act would, if passed, alter the term of protection in respect of unpublished works.

Protection is automatic from the time of creation – registration is not required. Works must be original and sufficiently substantial.

Moral rights protection

In Australia, an author’s “moral rights” are also protected. These rights ensure integrity of authorship and attribution, and protect against false attribution of authorship.

Australia is a signatory to the Berne Convention for the Protection of Literary and Artistic Works. This means that works created in countries which are also signatories will be treated as if they were created in Australia for the purposes of Australian copyright protection.

What is protected under copyright?

  • Literary works (such as articles, emails, copy, lyrics and books)
  • Dramatic works
  • Musical works
  • Artistic works (such as drawings, paintings or photographs)
  • Sound recordings
  • Films and advertisements
  • Radio and television broadcasts
  • Computer programs and databases

Infringement of copyright will occur if a substantial part of a work is reproduced, published or performed in public (among other acts) without the copyright holder’s authorisation. Currently, there are only limited defences to infringement and no broad US-style fair use defence (this is under review).

Attorney-General Department’s Short Guide to Copyright: www.ag.gov.au/pages/copyright

Designs

Designs are protected under the Designs Act 2003 (Cth) and associated regulations.

A design can be registered for a period of five years and can be renewed for a further five years.

Designs protect the overall visual impression of a product including features of shape, configuration, pattern and ornamentation.

In order to register a design in Australia, the design must be new and distinctive when compared to other designs that have been publicly used in Australia or published in a document in or outside Australia before the application date.

Infringement will occur if a product embodies a design that is identical or substantially similar in overall impression to a registered design.

Existing designs are searchable online. Drawings that fully display the design must be included in the application, which can be made online. An application fee is payable.

Convention priority can be claimed for designs filed internationally not more than six months prior to the application date in Australia.

IP Australia: www.ipaustralia.gov.au

Domain names in Australia

Investors intending to use a website with an Australian domain (ending in the .au suffix) can register a domain name with a number of providers. Care should be taken to ensure that the domain name does not infringe the rights of anyone holding a trade mark registered in Australia.

Disputes over domain names in Australia may be addressed through administrative proceedings under the .au Dispute Resolution Policy (auDRP). Commencement of an administrative proceeding does not prevent either party from initiating legal proceedings at any time.

KWM’s IP blog: www.ipwhiteboard.com.au