IP Services

We provide our clients with specialist Intellectual property legal services. These are tailored to protect their intellectual property and to succeed in any dispute to enforce their intellectual property rights.

We work across the full range of intellectual property rights – from creative works requiring protection by copyright, designs and trade marks, to technology depending on patents and confidentiality for protection.

For each enforcement matter, we develop a strategy with our client. We aim to get to the crux of the dispute quickly and cost-effectively. To achieve this aim, we work with experts and source specialist technology. We favor negotiated resolutions over drawn-out Court battles but use Court processes to arrive at the best result for our client.

On this page you can also read about our monitoring and surveillance services and the various intellectual property rights that we can enforce.

Monitoring & Market Surveillance

Currently searching for similar signs and designs on the trade mark and design registries maintained by IP Australia depend heavily upon the use of correct descriptions. Image recognition software permits far greater accuracy in the identification of relevant signs and designs.

In May 2014 the World Intellectual Property Office released its Global Brand Database which allows image-based searching of a variety of trade mark registries including those in Australia, North America and Singapore.

In addition to the Global Brand Database, we have access to advanced Australian software that can search by text, image and foreign characters for matches within:

• the IP Australia Trade Mark Registry; and

• images on the internet – currently the Google image database.

A report of relevant matches is generated by the software and assessed by an experienced intellectual property lawyer who provides clients with legal advice upon the search results.

Registered Trade Mark

What is a registered trade mark?

As the name suggests, a trade mark is a mark (that can be a symbol, word, color, shape or a smell) that distinguishes the goods or services of a trader from the goods or services of other traders.

A trade mark identifies the source of goods or services. For example, McDonalds, iTunes, the colour green used by BP, the shape of the Coca-Cola bottle, the Hi-Fi (live music venue) and Powderfinger (band name) are all registered trade marks – only the owners or licensees of these registered trade marks can use and exploit them for the goods or services in respect of which they are registered.

It is a common misconception that registration of a business or company name gives proprietary rights in that name. This is not the case. Registration of a business or company name does not confer positive rights to exclusively trade under that name. It is a registered trade mark that secures the proprietary rights in a name, sign or logo (or other unique identifier of your good or service). Furthermore, the searches undertaken in the course of seeking registration will alert a trader to the existence of a similar trade mark that is registered or in the process of registration. It is far preferable for the trader to be aware of this possible threat at an early stage.

Must a trade mark be registered?

A trader is free to use a trade mark without seeking its registration. If a reputation is developed in a trade mark as a result of its use or promotion, then rights in the mark will arise at common law. However, proof of a reputation in Australia is a precondition to enforcing such rights. Obtaining the evidence to prove your reputation in Australia can be timely and costly. A registered trade mark owner does not need to prove its reputation to have protection for its trade mark across Australia. This is the most significant benefit provided by registration of a trade mark.

Traders operating with an unregistered trade mark sometimes choose to identify their mark with the ‘unregistered trade mark’™ symbol. This symbol places others on notice that the mark is being used as a trade mark.

What are the benefits of registration?

Brand owners indicate that their trade mark is registered by using the ‘registered’® symbol. Use of the symbol puts others on notice that the trade mark owner is aware of its trade mark rights and is active in protecting them.

By registering your trade mark you obtain positive statutory rights, including the following:

• • Automatic rights under the Trade Marks Act 1995, including the right to prohibit others from unauthorised use of your trade mark or a trade mark that is substantially identical or deceptively similar to your mark;
• • A tangible right that can be assigned or licensed for value; and
• • The marketing advantage of indicating that the trade mark is protected by registered rights.

Is my trade mark able to be registered?

A trade mark can be a word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging or a combination of these.

To be registrable, the trade mark must be inherently adapted to distinguish your goods or services from those of others. For this reason, you will find it very difficult to register a trade mark that denotes the kind, quality, intended purpose or value of the goods or services; or comprises a common surname or is a geographical name.

What can I do if my registered trade mark is used without permission?

The owner and exclusive licensees of a registered trade mark have a variety of remedies available to them under the Trade Marks Act 1995 including the following:

• • restraining orders;
• • compensatory damages including for loss of profits and loss of reputation;
• • additional damages for flagrant infringement; or
• • an account of the infringer’s profits.

Copyright

How does copyright operate in Australia?

Copyright protection is automatic once the criteria set out in the Copyright Act are met. There is no requirement to register copies of the work to obtain copyright protection. While it is not mandatory to include a copyright notice comprising the symbol ©, the name of copyright owner and year of publication of a work, it is advisable as it can create a presumption of ownership.

A copyright work (literary, dramatic, artistic and musical works which are known as “Works”) must be "original"; it must be a product of the creator's own skill and labour and not copied from another's work. Originality in works is closely related to authorship. A person who carries out the process of reducing the work to a tangible form is the author of the work even if the idea for the work originated from another person. Other subject matter (“subject-matter other than Works”) such as sound and television broadcasts on the other hand need not be original but must not be copied.

What does copyright protect?

A good starting point is to note what copyright does not protect. It is not possible to copyright the "idea" behind Works. Copyright protects the author's particular way of expressing an idea. Works of joint ownership may also arise when a work has been produced by the collaboration of two or more authors and the contributions of each author is not separate from the contributions of the other author.

Copyright gives its owner the exclusive right to do certain acts in relation to Works, their adaptations or other subject matter. The exclusive rights which enable copyright owners to control the commercial exploitation of their materials differ with the categories of copyright material. In general the copyright owner has the exclusive right to do, or authorise, any of the following acts in relation to their work:

• • reproduce the work;
• • publish the work;
• • perform the work in public;
• • sell or distribute the work;
• • broadcast the work; or
• • make an adaptation or translation of the work.

What can I do if my copyright is used without permission?

The owner and exclusive licensees of a copyright have a variety of remedies available to them under the Copyright Act 1968 including the following:

• • restraining orders;
• • compensatory damages;
• • additional damages for flagrant infringement; or
• • an account of the infringer’s profits.

Patents

What protection do Patents provide?

A patent is granted for an invention. The invention must be new and non-obvious. The invention can be a device, substance, method or process or a combination of any of these. A patent granted under the Patents Act 1990 (Cth) gives its holder the exclusive right to commercially exploit the invention.

Are there different types of Patents

Patents are granted for specified terms. Standard patents are granted for twenty (20) years and innovation patents which are intended for less complex inventions, have a term of eight (8) years. Both types of patents require the payment of renewal fees for the maintenance of their registration.

What are the exclusive rights of a Patent Owner

The exclusive rights of the patent owner of an invention that is a product are:

• • to use or import it;
• • to do, offer to do or to keep a product for the purpose of doing any of the following: make, hire, sell or otherwise dispose of the product.

In the case of an invention which is a method or process, the exclusive right is to use the method or process or do any of the acts mentioned above in respect of a product resulting from the use.

What can be done when a Patent is Infringed

Proceedings for infringement of standard patents can be commenced upon grant of the patent and can include infringements prior to grant but after the date that the complete patent specification was published. Innovation patents may be granted without examination but must be examined and certified before enforcement proceedings may be commenced. The proprietor of the registered patent or its exclusive licensee may take infringement proceedings.

Relief for infringement of a patent can include the following:

• • Restraining orders;
• • Compensatory damages;
• • Additional damages for flagrant infringement; or
• • An account of the infringer’s profits.

For infringement to be proven, the applicant must show that the respondent has taken all of the essential integers of the patentee’s claimed invention. The limitation period for the commencement of infringement proceedings is either three (3) years from the date of grant of the patent or six (6) years from the date of the infringing act, whichever period ends later.

Registered Designs

What is the procedure for registration of a design?

The Designs Act 2003 established a system for the registration of new and distinctive designs for the appearance of articles. Design is defined, in relation to a product, as the overall appearance of the product resulting from one or more visual features. The visual features may be represented in two or three dimensions and include the shape, configuration, pattern and ornamentation of the product. The visual feature can serve a function or purpose but it is not required to do so.

The design must be both new and distinctive when compared with the prior art base. A new design is one that is not identical to a design that forms part of the prior art base and a design will be distinctive if it is not substantially similar in overall impression to a design that forms part of the prior art base.

How long is the protection for a registered design?

Protection under the Designs Act is for a period of five years from the filing date of the design application but it can be renewed so as to last a maximum period of 10 years. As with the innovation patent system, the Designs Act introduced a post-registration examination system which allowed for registration of a design without substantive examination. However, infringement proceedings may not be brought until the design has been substantively examined and a certificate of examination has been issued.

What rights are provided by registration?

The registered owner of a registered design has the exclusive right during the period of registration to:

• • make or offer to make a product in relation to which the design is registered;
• • import the product into Australia for sale, or for use for the purposes of any trade or business;
• • sell, hire or otherwise dispose of or offer to sell, hire or otherwise dispose of such a product;
• • use such a product in any way for the purposes of any trade or business;
• • keep the product for any of the above actions or authorise another person to do any of these things.

How is a registered design infringed?

A registered design will be infringed if the exclusive rights of the registered owner are exercised in respect of a product that embodies the registered design, or a design that is substantially similar to it. Substantial similarity is determined by the overall impression of the product to the registered design and greater weight is given to the similarities between the designs than to their differences. Infringement proceedings must be commenced within six years from the date of the alleged infringement.

Can artistic works be protected by copyright and the Designs Act?

Complexity exists in the manner that copyright law overlaps with the Designs Act. The overlap occurs as a result of artistic works being capable of protection by copyright in their two dimensional and three dimensional form and also being capable of registration under the Designs Act. In those circumstances the issue arises as to whether a copyright owner should be entitled to rely upon the longer term of copyright protection (70 years) rather than being limited to the protection of registration of the design for a period of up to 10 years. Generally speaking, copyright protection ceases to be available when a product is capable of design registration but specific advice should be obtained.