Intellectual property (IP) is perhaps one of the most valuable business assets that your company owns. IP rights can provide your business with a competitive advantage. It is essential that alongside the money and time spent inventing, developing and marketing your IP, you take adequate measures to protect it. Some IP rights require a formal process of application, examination and registration while others come into force without the need for any formal registration.
Like any other asset, IP rights can be bought, owned, sold, licensed, transferred or bequeathed much like a physical piece of property. They offer protection and can act as a deterrent to would be infringers.
Some of the more common intellectual property rights, discussed in further detail below, include trade marks, designs, patents and copyright. Your intellectual property rights may fall into one or more of these categories, and our firm can provide further advice as to which category is most advantageous to your specific situation.
Types of IP rights
|Type of IP Right||What’s protected|
|Trade marks||Letters, numbers, words, colours, a phrase, sound, smell, logo, shape, picture, aspect of packaging or any combination of these.|
|Designs||The way a product looks or a design on a manufactured product|
|Copyright||Art, literature, music, film, broadcasts and computer programs|
A trade mark is a badge of origin that allows you to distinguish your goods and services from those of other traders. They are an important means of maintaining goodwill with your client and forms an integral part of the marketing strategies for your goods and services. Trade marks may take the form of a word, logo, phrase, number, letter, colour or any combination of these.
Whilst it is not necessary to register a trade mark, registration grants the owner the exclusive right to use, license or sell the mark for the goods and services for which it is registered. Registration also provides a trade mark owner with an easier and more cost efficient means to enforce the rights conferred by a trade mark. If a trade mark is registered, there is no need to prove the trade mark has a well known reputation in Australia in order to protect the mark. Trade mark registration gives an automatic right of action to stop other parties infringing registered marks. There is also no need to provide evidence that a substantial number of consumers have been misled or deceived by the use of the mark by the infringing party.
Trade mark registration can be obtained without the trade mark actually being in use, as long as there is a genuine intention to use the mark.
When seeking to register your trade mark, there are various steps involved and things to consider. A trade mark search should always be conducted prior to applying for registration to ensure your intended mark is unlikely to infringe a registered trade mark and to determine whether your trade mark is registrable in Australia in respect of the goods and services you wish to seek registration for. We suggest that a trade mark search be conducted as early as possible prior to substantial expenditure on the mark being made.
An application for the registration of a trade mark in Australia must be filed with IP Australia. You should be aware that once you submit your trade mark application you cannot substantially change the details of your trade mark or add classes of goods or services.
IP Australia will appoint a Trade Mark Examiner to review an application and to ensure the mark meets the requirements of the Trade Marks Act 1995 (Cth). Initial registration of a trade mark is for a period of ten years.
A design refers to the features of shape, configuration, pattern or ornamentation which gives a product a unique appearance, and must be new and distinctive. Designs law is governed by the Designs Act 2003 (Cth) and is exclusively concerned with the protection of the specific details of the appearance of functional or useful articles. A design should be registered if the look of your product gives your business a competitive edge.
As with a registered trade mark, once a design is examined and registered it allows an owner to create, license, sell, or use a product that embodies the design. The length of protection of a design is initially for five years from the date the application was filed. The design registration can be renewed for a further five years. If you do not renew your registration it will cease.
A design can be registered in Australia, on the provision that is both ‘new’, meaning it is not be identical to any design previously disclosed anywhere in the world, and it is ‘distinctive’, that is it must not be substantially similar in overall impression to any design previously published anywhere in the world.
Please be aware that you must apply for design registration before you sell or use your design. If you have already publicly disclosed your design, that is sold copies, reproduced it online or exhibited the design, you may not be able to register it as it may not be considered to be new and distinctive.
Prior to applying for a design it is prudent to conduct a search to ensure there are no similar designs in the marketplace which may affect the likelihood of your design being certified. Design applications can be made through IP Australia. You may request your design application to either be registered or published.
Published designs allow a design owner to establish their design as prior art. It will not give the owner the exclusive right to the design, but it prevents others from gaining exclusive rights to the design.
Registered designs are able to be examined. A design once it has been examined and certified, allows an owner to enforce their exclusive rights over the design. There is no set time in which to request your design be examined and it is an optional process. Design registration is certified once it meets all the requirements under the Designs Act 2003 (Cth). The certified registration is then published in the Official Journal of Designs. Once a design is certified and all associated fees are paid the design will be enforceable.
A patent is a right that is granted for any device, substance, method or process that is new, inventive, and useful. A granted patent gives you the exclusive right to commercially exploit your invention for the life of the patent. In Australia, there are two types of patent protection, namely standard patents and innovation patents. A standard patent will remain in force for up to twenty years. An innovative patent on the other hand, will remain in force for eight years.
In order to constitute a standard patent, patentable subject matter for an invention must be
novel and inventive, that is non-obvious, when compared to the existing prior art in the relevant area. In order to be suitable to be an innovation patent, an invention must be novel and possess an innovative step when compared to the prior art. An innovative step is the difference in comparison to the prior art which makes a substantial contribution to the working of the invention. The threshold for an innovative patent is somewhat lower than a standard patent.
As with designs, it is crucial that you do not demonstrate, sell or discuss your invention in public before you file for a patent. If you want to discuss it with employees or business partners, then it may be necessary to have them sign a confidentiality agreement. Applications for patents are also filed with IP Australia.
It is often necessary to engage the services of a patent attorney to prepare the specification required to accompany the patent application.
Copyright in Australia is a free an automatic right that applies when material is created. Unlike many other intellectual property rights, there is no form of registration of copyright in Australia. In Australia, copyright law is set out in the Copyright Act 1968 (Cth). In many instances other intellectual property rights including design will overlap with copyright.
Copyright protects ‘original’ literary, dramatic, musical or artistic works. To be original in terms of copyright means simply that the work isn’t a copy of something else. Copyright does not protect an idea or concept, title, slogan, title, technique or information.
There is no requirement for the copyright symbol © to be included on works for copyright protection to subsist. However the symbol does alert people that the work may be protected.
Generally, copyright protection lasts for the life of the creator plus seventy years. Copyright owners have a number of exclusive rights in respect of their works including the right to reproduce the work, make the work public, and communicate the work to people.
Permission must be sought from the copyright owner if a third party wishes to reproduce the work, even if someone only wishes to use part of a work.
As with other intellectual property rights, copyright can be assigned, sold or licensed. Copyright is an important asset of a business and should be treated accordingly.
If you would like further details of the application process or applicable government fees, or if you have any queries regarding these matters or protecting intellectual property rights generally then please contact David Mazzeo of our office on 03 9614 7707.