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 not taken the proper steps to secure its intellectual property rights can reduce its value, delay its sale, or delay the transfer of investment funds into the business.
That is why companies (especially franchises) 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. The brand you’ve worked hard to establish needs to 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 key 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.
Please find further information about intellectual property, trade marks, and copyright below.
What is Intellectual Property?
Intellectual property refers to the 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 written down or typed and saved on a computer.
Trade Mark Registration
To protect your trade mark such as a logo, product name, or slogan, it pays to register it. Once registered, it serves as notice to others that you are the legal owner of that mark.
However, before filing your trade mark application (for registration), you must assess whether it is possible that you are infringing on anyone else’s rights and that the mark is otherwise registerable. After a trade mark application with IP Australia, 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 goals and objectives. It is, therefore, best to speak 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 a mark that is not registered with IP Australia. These trade marks have developed a reputation in the marketplace. 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. 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 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 Australian consumer protections, unregistered trade mark owners may rely on the common law in making a claim under the tort of ‘passing off’. 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 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 must collate a significant amount of evidence to show they have rights to the mark.
It is often more straightforward for registered trade mark holders as proof of their rights are through 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. As a result, 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, the party disputing the domain name registration must have a legitimate right to the mark before claiming infringement.
If WIPO finds that the registrant does not have a right to the domain name or has otherwise registered the name in bad faith, it can order to have the domain transferred to the trade mark holder.
Cease and Desist Letter
If an infringing party infringes on another party’s IP, the rights holder will usually be advised to first send a cease and desist letter. This letter ideally should set out exactly what the IP is, how the infringing party has breached the rights of the IP rights holder, the nature of the demand, and when the demand is to be complied by.
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 Statment before commencing litigation. The Genuine Steps Statment must describe the steps that each party has taken 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 demand is not fulfilled by the infringing party.
What is Copyright?
Copyright is the legal right of ownership of literary works, such as books, computer code, and music scores. Copyright also protects photographs and 2D creative designs such as patterns and architectural drawings.
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 the work’s creation.
In Australia, the Copyright Act 1968 (Cth) is the legislation that governs copyright.
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, particularly in the area of registered designs and patents.
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 registered designs only in the predominant target market countries – the United States and Australia. The client decided against registering its designs 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 peace of mind knowing that you have adequately assessed your position with an appropriate 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.
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 contact us by booking a consultation. We can discuss your matter, any concerns you have, and potential steps forward on the call.