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 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 trade mark 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 in an effort 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 have 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 have the domain transferred 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 steps to resolve the dispute.
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 of ownership of 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 that 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, any concerns, and potential steps forward on the call.