Ben Waldeck provides legal advice to companies who wish to protect their intellectual property (IP) and those who want to enforce their intellectual property rights.

People often underestimate the value of intellectual property despite it often being a company’s most valuable asset. 

 Selling or exiting a business that has yet to take the proper steps to secure its intellectual property rights can reduce its value, delay its sale, or delay capital transfers from investors. 

That is why companies take strict action to protect their brands’ reputations in the marketplace and go to great lengths to protect their intellectual property rights with a proper IP strategy.

Avoid the mistake of not getting proper advice from an intellectual property lawyer. The brand you’ve worked hard to establish must be protected to prevent problems and costs later.

Contact Ben today to discuss your intellectual property requirements.

As an intellectual property lawyer and technology lawyer, Ben assists companies with IP advice, registration, and dispute resolution in critical areas, including:

  • copyright – computer code, technology, literary works, and photographs
  • trade marks – brand names, logos, and slogans
  • consumer law – misleading and deceptive conduct and passing-off.

Further information about intellectual property, trade marks, and copyright is below.

What is Intellectual Property?

Intellectual property refers to the creations of the mind. Various forms of intellectual property include trade marks, copyright, patents, designs, and more. 

Registered Trade Marks

Registered trade marks appear on the IP Australia trade marks database. Once registered, it serves as notice of the legal owner of that mark.

Trade mark applicants must ensure that the mark they intend to file is unique. IP Australia will not allow registration if the mark appears similar to another party’s registered trade mark. Even if a mark passes the examination phase, those who claim to have similar trade marks may oppose an application.

Depending on your goals and objectives, you can register a trade mark in various goods and services classes. I recommend speaking to your intellectual property lawyer about your business goals to develop an IP strategy for your business.

See this article about the trade mark registration process in Australia.

Unregistered Trade Marks

An unregistered trade mark is an unregistered mark, meaning that it is not registered with IP Australia. While the Trade Marks Act 1995 (Cth) does not protect unregistered marks, remedies are available under the common law and the Australian Consumer Law. We discuss these two legal protections for unregistered trade marks below.

Australian Consumer Law

Those wishing to enforce their unregistered trade mark rights may be able to rely on the Australian Consumer Law (ACL) contained in Schedule 2 of the Competition and Consumer Act 2010 (Cth). Specifically, section 18 provides:

A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

Common-Law – Passing-Off

Aside from the ACL’s consumer protections, unregistered trade mark owners may rely on the common law tort of ‘passing off’ to defend or enforce their rights to an unregistered mark. Passing off occurs when a party uses a mark or ‘get-up’ that is the same or substantially similar to another party’s and effectively ‘trading off’ on the reputation of another’s brand.

You might wonder, “Why should I bother registering a trade mark?”

In contrast to the cost of trade mark registration, legal action can become very costly under the common law and ACL.

Unregistered trade mark holders enforcing their rights must collate evidence to demonstrate they have built significant goodwill in the trade mark. 

IP Litigation and Disputes

Court Jurisdiction of Intellectual Property Matters

Most disputes regarding intellectual property are filed and heard in the Federal Court of Australia. While most State Courts have jurisdiction to hear intellectual property matters, the legislation that governs intellectual property is Federal. 

Therefore, the Federal Court justices are across the legislation and usually have IP-specific experience and are therefore better placed to hear matters on intellectual property.

Domain Names Disputes

Domain name disputes are often associated with one’s trade mark. As a result, it is common for domain squatters to purchase domains to resell them to the rightful trade mark owner or “squat’ on the domain name until someone decides they want to buy it for their new venture.

The purchaser consents to the Uniform Domain Dispute Resolution Policy (UDRP) whenever a domain name is purchased. The UDRP allows disputing parties to file disputes with the World Intellectual Property Organization (WIPO).

Where a domain name registrant is found to be a domain name squatter or otherwise has no rights to the trade mark, they will have likely registered the domain in ‘bad faith’.

However, the party disputing the domain name registration must have a legitimate right to the mark before claiming infringement.

If WIPO finds that the registrant has no right to the domain name or has otherwise registered it in bad faith, it can order to transfer the domain to the trade mark holder.

Cease and Desist Letter

IP rights holders usually send cease and desist letters to those who infringe on their intellectual property rights, setting out details of the intellectual property, the breach, the demand, and the consequences of not complying with the demand.

IP disputes are usually litigated through the Federal Court of Australia, which has specific rules. Among those rules is the requirement for the parties to complete a Genuine Steps Statement before commencing litigation. The Genuine Steps Statment must describe each party’s dispute resolution steps.

Therefore, the cease and desist letter is a crucial first step of potential litigation, as litigants rely on this letter in completing the Genuine Steps Statement if the infringing party does not fulfil the demand.


What is Copyright?

Copyright is the legal right to own literary works, such as books, computer code, photographs, videos, paintings, drawings, and music.

How is Copyright Protected in Australia?

Unlike trade marks and designs, copyrighted works do not have to be registered to be legally protected. Instead, the IP rights in copyright are created upon creation. 

In Australia, the Copyright Act 1968 (Cth) is the legislation that governs copyright.

IP Lawyer Brisbane and Gold Coast

Ben is an IP Litigation lawyer who can assist with dispute resolution and intellectual property litigation advice. Intellectual property often represents significant value – especially in technology, software and startup companies.

Specific Areas of Intellectual Property Law

Given my background in technology, software (including SaaS) and startup companies, I am well placed to help with intellectual property within the tech-related (IT) sector, in particular:

– Intellectual property dispute resolution and litigation

– IP licensing, software licensing and brand licensing

– Intellectual property assignment deeds and advice

– Trade marks advice, registration and objections

– Copyright advice – software code, literary works and photographs

– Overall IP strategy legal advice

– Domain name disputes and registration advice

– Intellectual property protection and business structuring advice for brand protection

If you’re situated in Brisbane, Gold Coast, or Sunshine Coast, please get in touch by booking a consultation. We can discuss your matter, concerns, and potential steps forward on the call.

Frequently Asked Questions

What is Intellectual Property (IP)?

Intellectual property is a bundle of rights about trade marks, copyright works, designs, patents, circuit layout rights, and plant breeders rights. The property rights that are personal in nature are established under their corresponding legislation. For example, trade marks are protected under the Trade Marks Act. Copyright is Protected under the Copyright Act.

What is Copyright and How does it Apply in Australia?

Copyright is an automatic legal right that protects original creative works, such as books and other literary works, music, films, drawings, and artworks. In Australia, copyright protection arises automatically upon creation and lasts for the life of the creator plus 70 years. However, some copyrighted works are protected for longer.

Can I use Copyrighted Material without Permission if it’s for Educational Purposes?

Australia’s copyright law includes provisions for fair dealing, which allows limited use of copyrighted material for specific purposes, including education. However, the extent of fair dealing depends on the specific circumstances. You should therefore seek legal advice in relation to any potential infringement exceptions.

How do I Register a Trade Mark in Australia?

To register a trade mark in Australia, you need to apply with IP Australia. The application should include a detailed description of the mark, its intended use, and the goods or services it will represent.

How Long does Trade Mark Registration Last?

Once registered, a trade mark in Australia is initially protected for ten years. You can renew the registration indefinitely every ten years, provided that the mark remains in use.

What is the difference between a Registered Trade Mark and an Unregistered Trade Mark?

While registration provides stronger legal protection, unregistered trade marks can still have some protection in Australia based on common law rights and reputation. However, registered trade marks offer greater certainty and exclusive rights.

Can I use the ™ Symbol without Registering a Trade Mark?

Yes, you can use the ™ symbol in Australia even without a registered trade mark, provided that you are using it ‘as a mark’ or ‘badge of origin’ to distinguish your business, goods or services. It signifies that you claim ownership of the mark, but it doesn’t provide the same legal protection as a registered trade mark.What is a Circuit Layout and How is it Protected in Australia?

A circuit layout refers to the three-dimensional configuration of electronic circuits. In Australia, circuit layouts are protected under the Circuit Layouts Act 1989. The protection lasts for ten years from the year of first commercial exploitation or 20 years from the year of creation, whichever is shorter.

Can I use Someone Else’s Copyrighted Work if I Give Them Credit or Attribute the Source?

Giving credit or attribution does not automatically grant you the right to use someone else’s copyrighted work in Australia. Copyright is an exclusive right, and unless the copyright owner grants permission or the use falls within a recognised exception, using someone else’s work without authorisation will likely infringe their rights.

What can I do if Someone is Infringing my Copyright or Trade Mark?

If you believe your copyright or trade mark rights are being infringed in Australia, you should seek legal advice to assess the situation and explore potential remedies. Options may include sending a cease-and-desist letter, negotiating a settlement, or initiating legal proceedings.

Can I Copyright my Business name or Logo in Australia?

Business names and logos are generally protected by trade mark law rather than copyright law in Australia. To gain legal protection, you can register your business name or logo as a trade mark with IP Australia.

How Can I Find out if a Trade Mark is Already Registered in Australia?

IP Australia provides a publicly accessible online database called the Australian Trade Mark Search. You can search the database to check if a trademark is already registered or pending registration in Australia. IP Australia also launched TM Checker, a newer version of the ATMS. Although it is in the Pilot phase, it is certainly worth checking out.

Can I Trade Mark a Domain Name?

Domain names are not automatically protected under trade mark law in Australia. However, suppose your domain name is used in connection with goods or services and meets the requirements for a trade mark. In that case, you can seek trade mark protection for the corresponding name in the domain name.

What are the Benefits of Registering a Trade Mark?

Registering a trade mark provides the registrant exclusive rights to use the mark and legal protection against infringement.

Is it necessary to include a Copyright Symbol © on my Work to be Protected?

No, it is not necessary to include the copyright symbol © on your work for it to be protected in Australia. Copyright protection arises automatically upon creation. However, displaying a copyright notice can serve as a reminder of your rights and deter potential infringers.