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 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.