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For many businesses, intellectual property is their most valuable asset.  Therefore, adequate IP protection safeguards businesses’ value and competitive advantage.

Ben has extensive experience providing intellectual property advice to businesses that want to protect, defend, and enforce their intellectual property (IP) rights.  He also advises on commercialisation strategies to maximise the potential, commercial edge, and longevity of businesses and their products and services.

As a commercial, technology and intellectual property lawyer, Ben assists businesses with:

  • Trade mark advice and registration of brand names, logos, slogans, and packaging.
  • Copyright advice regarding software, source code, technical drawings, literary works, and photographs.
  • Circuit layout rights.
  • Commercialisation strategies for products and services.
  • Dispute resolution and litigation services concerning IP and domain names.
  • IP Frameworks.
  • Although not IP, Ben protects confidential information and trade secrets.

Further information about intellectual property 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, circuit layout rights and plant breeders rights.

I recommend speaking to an intellectual property lawyer about your business goals to develop an IP strategy.

Registered Trade Marks

Registered trade marks are those marks that are registered on the IP Australia trade marks database.

Trade mark applicants must ensure that the mark they intend to file is unique.  IP Australia will not allow registration if the mark appears too similar or identical to another party’s trade mark.

Depending on your goals and objectives, you can register a trade mark in various goods and services classes.

Related: Trade Mark Guide.

Unregistered Trade Marks

An unregistered trade mark is one that 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 seek relief under the Australian Consumer Law ( ACL ) in  Schedule 2 of the Competition and Consumer Act 2010 (Cth).  Section 18 of that Act seeks to prevent those in trade or commerce from engaging in conduct that is misleading or deceptive or is likely to mislead or deceive.

To be successful, plaintiffs must prove that the defendant’s use of the plaintiff’s common law trade mark misled or is likely to mislead the public.

The plaintiff does not need to prove damages to seek relief under this ACL provision.

Common-Law – Passing-Off

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

To be successful under the common law, the plaintiff must prove goodwill or a reputation in the common law trade mark.  The plaintiff must also prove the defendant’s misrepresentation.

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

Pursuing legal action under the common law and ACL can be more expensive than an action under the Trade Marks Act because the plaintiffs must collate evidence to demonstrate the goodwill and reputational requirements.  Whereas under the Trade Marks Act, the plaintiff’s evidence of ownership is on the Trade Marks register.  Having a trade mark on the Trade Marks Register can serve as a deterrent to potential infringement.

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.

Additionally, Federal Court Justices have in-depth knowledge of IP legislation, making them well-placed to hear matters on intellectual property.

Cease and Desist Letter

The first step for those who allege that another party has breached their intellectual property rights is to send the infringing party a cease and desist letter.  The cease and desist letter should set out:

  • The intellectual property that is the subject of the alleged infringement.
  • The IP owner’s rights to the intellectual property.  For example, whether the owner or the exclusive licence holder.
  • The activity that caused the breach.
  • The law that the recipient breached.
  • The nature of the demand.  For example, immediately cease using the trade mark.
  • The consequences of not complying with the demand.  For example,

Federal Court Rules stipulate that an Applicant must file a Genuine Steps Statement with a Statement of Claim (before commencing litigation).  The Genuine Steps Statment must describe the steps the Applicant has taken to resolve the dispute.

The cease and desist letter is a crucial first step of potential litigation because it becomes one of the genuine steps.

Domain Names Disputes

Domain name disputes are often associated with trade mark rights.

Upon registration, domain registrants consent to the Uniform Domain Dispute Resolution Policy (UDRP), which requires trade mark owners to dispute domain ownership by filing a dispute with the World Intellectual Property Organization  (WIPO).

Domain name squatters and other parties with no legitimate interest in a domain that infringes on a party’s trade mark rights may be found to have registered the domain in ‘bad faith’.

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.

Copyright

Copyright protects literary, artistic, dramatic, and musical works and radio broadcasts.

How is Copyright Protected in Australia?

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

Unlike patents, designs, and trade marks, Australia has no method to register copyright.  Instead, rights in copyright are created upon creation.

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 Ben’s 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.

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.

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