Ben Waldeck provides legal advice to companies who wish to protect their intellectual property (IP) and those who wish to enforce their intellectual property rights.
People often underestimate the value of their intellectual property, despite it often being among the most valuable assets of a business. In fact, IP rights are almost always reflected in the company’s valuation. Selling or exiting a business that has not taken the proper steps to secure its intellectual property rights can reduce the company’s value, delay its sale, or delay the transfer of investment funds into the business. That is why large companies and franchises alike take strict action to protect their brands’ reputation 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. It is your brand that you’ve worked hard to establish and not taking the proper preventative steps can lead to significant problems and costs.
Contact Ben today to discuss your intellectual property requirements.
As a technology lawyer and intellectual property lawyer, I assist companies with trade mark advice regarding the protection of logos, brands, and design. I also assist companies with matters relating to copyright – for example ownership of computer code, literary works, and photographs.
Please find further information about intellectual property, trade marks, and copyright below.
What is Intellectual Property?
Intellectual property refers to creations of the mind. There are various forms of intellectual property including trade marks, copyright, patents, designs and more. As is the case with most forms of IP, it is unable to gain protection until that idea is expressed in a tangible form. For example, a literary work cannot gain protection until it is actually written or typed and saved on a computer.
Trade Mark Registration
To best protect your trade mark, it is usually advisable to register the mark such as a logo or slogan. Once registered on the IP Australia trade mark register, it serves as notice to others that you are the legal owner of the trade mark.
However, before filing your trade mark for registration you must do due diligence to assess whether it is possible that you are infringing on anyone else’s trade marks and that the mark is otherwise registerable. Once you file a trade mark registration application, those with registered trade marks and unregistered trade mark may oppose the application. We discuss unregistered trade marks below.
You also must be aware of the various products and services classes in which you may register your trade mark. This will depend on your business’ goals and objectives. It is therefore best to speak to your intellectual property lawyer about your business goals and help you 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 one that is not registered on the IP Australia database. These types of trade marks may have developed a reputation in the marketplace for a long time and have therefore can be protected. While unregistered trade marks are not specifically protected by the Trade Marks Act 1995 (Cth) they are protected at common law and under the Australian Consumer Law.
Australian Consumer Law
Those wishing to enforce their unregistered trade mark rights may rely on the Australian Consumer Law contained in Schedule 2 of the Competition and Consumer Act 2010 (Cth). Specifically, section 18 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.
Common-Law – Passing-Off
Aside from the Australian Consumer protections available, unregistered trade mark owners may also rely on the common law in making a claim under the tort of ‘passing off’. Passing off occurs where a party uses a mark that is the same or substantially similar to another party’s trade mark and is effectively ‘trading off’ on the reputation of another’s brand.
You might be thinking “Why should I bother registering a trade mark?”
The answer primarily relates to the cost to defend and the evidence required. Unregistered trade mark holders who want to enforce their trade mark rights are required to collate a significant amount of evidence to show they have rights to the mark. It is often more straight forward for registered trade mark holders as proof of their trade mark rights are predominantly contained on the IP Australia database, as proof of registration.
Therefore, unregistered trade marks can be protected. However, those wishing to enforce their rights under this provision should be prepared for the additional costs.
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 generally connected to one’s trade mark. It is common for domain squatters to purchase domains in the effort to resell them to the rightful trade mark owner, or “squat’ on the domain name until someone decides they want to purchase it for their new venture.
Whenever a domain name is purchased, the purchaser consents to the Uniform Domain Dispute Resolution Policy (UDRP). The UDRP requires disputes to be filed with the World Intellectual Property Organization (WIPO).
It has been established that 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 be found to have registered the domain in ‘bad faith’.
However, it must be kept in mind that the party disputing the domain name registration must have a legitimate right to the mark.
If WIPO finds that the registrant does not have a right to the domain name, or has otherwise registered the name in bad faith, then it can order to have the domain transferred to the trade mark holder.
Cease and Desist Letter
If there is a dispute, usually the first place to start is by sending the infringing party a cease and desist letter. This letter should be specific and set out how the infringing party has breached the IP owner’s intellectual property rights. It should also set out the grounds for requesting the infringing party to stop using the trade mark, or selling a product, etc. For example, the letter should set out whether the infringing party has engaged in misleading and deceptive conduct or passing off at common law. Alternatively, whether it has breached the Trade Marks Act, the Copyright Act, the Designs Act, or the Patents Act.
Ideally, the letter should also specify the consequences if the alleged infringing party fails to comply with the cease and desist letter.
What is Copyright?
Copyright is the legal right to own intellectual property that is subject to the Copyright Act. This relates to literary works, such as books, softare code and music scores. Copyright also protects photographs and 2D creative designs such as patterns and architectural drawings. In Australia, the Copyright Act 1968 (Cth) is the legislation which governs copyright.
How Copyright is Protected in Australia?
Unlike trade marks and designs, there is no method of registration of copyrighted works. The IP rights in copyright are created upon the work’s creation.
Intellectual Property Risk
However, not everyone rushes to register their intellectual property right away. Some assess the cost and opportunity risk of registration and decide to take a ‘first to market’ approach. While this approach has worked well for some, it pays to get specific advice from an intellectual property lawyer to properly assess the risk. This will allow you to make an informed decision to move forward with the intellectual property strategy that you choose.
For example, one of Ben’s consulting clients decided to register his company’s designs only in the predominant target market countries – United States and Australia. He decided against registering in other countries, as the costs of enforcing his intellectual property rights globally were not commercially realistic. Once you get proper advice and become aware of the risk, you will have the peace of mind knowing that you have properly assessed your position with a proper IP strategy that you’re comfortable with.
If you would like to speak to an IP lawyer who has a background in tech, software and startup companies feel free to reach out and arrange a consultation.
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 technology, software and startup companies. These types of companies often understand the value of their intellectual property. Our team at Coast to Coast Legal operate in Brisbane, Gold Coast and Sunshine Coast.
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, feel free to contact us by booking a consultation. On the call, we can discuss your matter, any concerns you have and potential steps forward.