It can be a word, phrase, image (such as a logo), smell, number, sound, colour, movement, packaging or another symbol.  Protection may be best achieved with a combination of these. The law of trade marks has developed to assist organisations in communicating a badge of origin and allow for some exclusivity to ensure consumers know the source of goods or services. The law helps businesses to protect their unique branding and their hard-earned reputation.

The Australian Register of Trade Marks is operated by IP Australia, an agency of the Commonwealth Government. Registration allows you to assert exclusive rights over your trade mark and gives you the legal right to use the reserved ‘®’ symbol. Using the ® symbol without having registered your trade mark is unlawful.

Your business name can be a trade mark, but merely registering the business name on ASIC’s Business Names Register will not give you trade mark protection.  To ensure adequate protection, it is worth seeking advice as to whether to register your business name as a trade mark with IP Australia.

If you haven’t yet applied for registration, or your application has not been approved, you can still use the ‘^TM’ symbol as a way of warning competitors that you assert your rights over the trade mark. If a competitor tries to use an unregistered trade mark, you may in some cases be able to sue them for ‘passing off’ (i.e. for falsely pretending that there is a connection between their business and yours) or seek remedies under the Australian Consumer Law (schedule 2 of the Competition & Consumer Act 2010 (Cth)) for misleading and deceptive conduct in trade or commerce.

What can’t be a Trade Mark?

Generally, a trade mark won’t be accepted for registration if it is scandalous or illegal, or if it has any connotations that might deceive or cause confusion. It also can’t be substantially identical or deceptively similar to someone else’s trade mark.  A trade mark also needs to be inherently distinguishing, and not be a descriptor (for example a lawn mower supplier called “The Law Mower Company” would be not capable of trade mark protection due to it describing the goods being offered).

In fairness to competitors, your trade mark must also be sufficiently specific to your business. For instance, you generally can’t register trade marks that are geographical names, as that would prevent other local businesses from using the name of the location on their products. You also generally can’t register trade marks that are common surnames, or that are commonly used to describe the type of goods or services that you provide.

Benefits and Limitations of Trade Marks

A trade mark is a valuable business asset; and registering it can bring added value should you ever choose to sell your business. You are also entitled to sell or licence the trade mark to another person.  There are numerous ways to value trade marks and accounting standards can apply to how to identify and value the goodwill attached to a trade mark.

If a competitor uses a trade mark that is too similar to a trade mark that you have registered, you may be able to get a court order that prevents the competitor from using that trade mark and/or requires them to pay you compensation.

Unlike copyright, trade marks can last indefinitely, but must be renewed every ten years. You may lose the rights to the trade mark if you cease to use it.

Ordinarily, registering your trade mark only gives you exclusive rights within Australia. However, you may be eligible to register and protect your trade mark in up to 130 countries under the subsequent designation via the Madrid System administered by the World Intellectual Property Organization using IP Australia as an office of origin.  You may also consider applying directly within a country not otherwise covered under the Madrid System, or there may be practical considerations regarding whether or not to utilise the Madrid System.

You should also be aware that countries have either a ‘first to use’ system or a ‘first to file’ system.  In first to file countries, it is vital you protect your brand through trade mark protection if you wish to operate your business in that country.  In Australia, we have a ‘first to use’ system which means if someone else registers your unregistered trade mark, you can make an application for being the predecessor in title.  It is vital that you seek legal advice in this regard to ensure you can monitor applications and meet the timeline requirements for providing opposition to the registration of a trade mark.

Applying for a Trade Mark

The process of registering a trade mark generally takes at least six months. Once you have completed your initial application, a registrar will examine it to see whether your proposed trade mark complies with the Trade Mark Act 1995, Trade Mark Regulation 1995 and any other relevant legislation.

If your application receives an adverse examination, you will be given an opportunity to be heard and to have the matter reassessed.

If your application is accepted, it will be advertised in the Official Journal of Trade Marks. Anyone else who thinks that your trade mark ought not to have been accepted, or who claims that your trade mark is too similar to theirs, will generally have two months to submit an application to oppose the registration of your trade mark. The dispute will be heard by a registrar who will decide whether or not to register your trade mark.

For more information regarding trade marks, please contact our Commercial Team or call us on 1300 862 529 to book an appointment with one of our specialist Commercial Lawyers today.

This article was written by Martin Churchill & Tim Whincop.

Commercialising intellectual property – Assignment and Licensing options for copyright

Are your literary or musical works getting republished or reproduced? Do you need to commercialise your intellectual property? How can you keep your original works safe?

Licensing and Commercialising your Copyright

Choosing the right method of intellectual property commercialisation can often be tricky to navigate, and will wholly depend on a copyright owner’s preference about control and continual ownership.

Under section 196(1) of the Copyright Act 1968 (Cth), copyright is personal property, and under this section can either be assigned or licensed to another person to use in a specific way.

These are the two primary ways copyright can be exploited for financial gain.

Copyright Assignments

Copyright assignments relinquish ownership of the copyright to the other person (the ‘assignee’), often in exchange for a sum of money.

Assignments may not be forever. Instead, they might only be partial (where copyright is assigned only for a limited time, on specific terms).

How do I assign my Copyright?

There are certain formalities that you must comply with should you wish to assign copyright. Under the Act[1] the assignment of copyright (whether full or partial) will not be valid unless the assignment is contained in writing. The Act also provides that the assignment can be limited to a specific region in Australia or for a specific time period.

It is also essential that if you intend to make a partial assignment, the assignment is expressed without unlimited terms or absolutely.

If this happens there will be right to have the copyright reverted to you.[2] If the partial assignment is expressed in unlimited and absolute terms, however, whether or not you intended for the copyright to revert to you after a particular period of time may not matter, and there may be no right of reversion.

In these circumstances it is important to engage a lawyer familiar with drafting.

Copyright Licensing

Copyright licensing is only temporary, and differs from assignments in that copyright owners are allowed some form of control over the intellectual property rights throughout the duration of the license. Licensing does not transfer copyright ownership to the other person (the ‘licensee’), rather it provides the licensee permission to use your intellectual property in a way outlined in its copyright rights.

In this circumstance, you can still sue a third party for copyright infringement as you are still its owner under the Copyright Act.

Normally, permission to use the copyright owner’s work is acquired in exchange for royalties or a lump sum payment. However, the license may exist as a bare license, authorisation or permission where no consideration (money) is exchanged.

Generally, as a copyright owner, you may choose to grant either an exclusive or non-exclusive license.

Exclusive Licenses

An “exclusive licence” is an agreement whereby a copyright owner entitles a licensee to use the owner’s copyright to the exclusion of all others (including the copyright owner him or herself).

Under an exclusive licence agreement, the right of exploitation may be limited to particular timeframes, geographical locations and may only be used for specific purposes. Ownership ultimately remains with the original owner.

Under the Copyright Act 1968 (Cth), licensees under exclusive licence agreements have greater rights than licensees under a non-exclusive licence Agreement. This includes the opportunity to sue a third party for copyright infringement (along with the owner who also retains this right against a third party). In Australia, a licensee of an exclusive license can also sue a copyright owner for copyright infringement should the copyright owner breach the terms of the exclusive licence.

Exclusive licencing arrangements are more suitable for licensees who wish to pay for exclusive exploitation of the copyright of the owner, and do not wish to share it with others.

Non-Exclusive Licenses

Under a “non-exclusive licence” a copyright owner does not have to limit the use of the copyright to one person. That is, under this type of arrangement, the copyright owner can extend the licence to multiple parties at one time. This can be a more effective method of commercialisation of a copyright owner’s intellectual property.

Non-exclusive licence arrangements are more appropriate for copyright owners who wish to retain control over the commercialization of their products and copyright. In this arrangement, distinguishable from the exclusive licence, the copyright owner can continue to use his or her copyright concurrently to use by the licensee.

How do I licence my copyright out to others?

Under section 10 of the Copyright Act, to be valid an exclusive licence must be reduced to writing. Other types of licences should also be reduced to writing in the form of a licensing agreement. Generally, the terms of a licence will be set out in a formal Copyright Licence Agreement.

Have questions about copyright assignment or licence?

We’ve put together more information about the types of copyright licences in our resource centre. For more information on how to commercialise your intellectual property, please contact our Intellectual Property team on (07) 3252 0011.

Additionally, if you are an employee and are unsure of whether you own the work you have created during the course of your working relationship with your employer, contact a member of our Intellectual Property team on the number above. Or, to read about whether you own your copyright as an employee, click here.

Written by Lawyer edited by Jackson Litzow (student placement).

Footnotes

[1] Copyright Act 1968 (Cth) s 196(3).

[2] Sumner v Beyond Properties (2003) 59 IPR 268.