BLOGS

Olaf Kretzschmar/ Steven Chow

With diminishing growth in most Western countries, many businesses are seeking to expand to other regions to capitalise on growth elsewhere. Amongst many countries, Australia counts as one of the favourite destinations. Despite having a developed economy, Australia continues to experience strong growth. In 2016, Australia entered into its 26th year of uninterrupted annual economic growth. This record is unmatched by any other developed country. So, one could still call it the “Lucky Country”.

Underpinning Australia’s strong economy is its open and transparent trade and investment environment, business-friendly regulatory approach and its trade and economic links with emerging economies, particularly in Asia. With a robust financial market and legal system, Australia plays a key role in the Asia-Pacific region.

Despite attractive business prospects, venturing into unfamiliar territory may still seem overwhelming at first. So, what should you consider when your business hits Australian ground?

Initial Registrations

Companies that are registered outside Australia must register with the Australian Securities & Investments Commission (ASIC) to carry on business in Australia. Your company name must not be identical to another company or business in Australia. Alternatively, you may choose to register a new Australian company to carry on business in Australia.

Along with your company registration with ASIC, you may also register for an Australian Business Number (ABN) and a business name.

It is important to note, however, that company registration and business name registration are separate from trade mark registration. Even though your company name may be available on the ASIC register, it may nevertheless be similar to an existing trade mark in Australia. As such, using your company name in the course of trade may lead to the trade mark holder bringing an action for trade mark infringement against you.

As a result of that, many foreign businesses are forced to adopt a different name in Australia. At the time when Burger King wanted to expand to Australia, it found that the trade mark “Burger King” was already registered by someone else. Because of that, Burger King is branded as “Hungry Jack’s” in Australia.

We therefore highly recommend that you conduct a trade mark search in Australia before deciding on your business name/ company name here.

Business Operations

The laws in Australia might be substantially different from what you are used to from your home country. Australia has particularly strong regulations in place governing consumer relationships. Some aspects of the law you should pay attention to are:

·     Terms & Conditions

·       Laws against Unfair Competition

·       Consumer Protection Laws

·       Product Labeling

·       Pricing Regulations

·       Warranties and Refunds

·       Environmental Regulations

·       Privacy Laws

·       Employment relations

Trade Mark Registration

As mentioned in the first part, a company registration does not confer any IP rights on you. To ensure that you have the exclusive right to use your brand name, logo or slogan, you must register it as a trade mark in Australia. “First come first served!” It is that simple. If you miss out on registration and someone else was quicker than you, rebranding would be inevitable.

There are two ways to register your trade mark in Australia. Firstly, you can apply directly to the Australian Trade Mark Office (IP Australia). An application costs $250 per class of goods and services.

Alternatively, you may apply for trade mark protection in Australia through the World Intellectual Property Organisation (WIPO) if you already have a registered trade mark in another country. The basic fee is CHF 653,00 in addition to CHF 263 for each class of goods and services. The advantage of this option is that you can also apply for protection in other countries in the same application. The disadvantage though is, that the entire International registration is void, should the basic trade mark registration in your home country, that the International mark is based on, is canceled or expires for some reason.

 

Whether or not to file a national application in Australia or to apply through WIPO depends on cost efficiency, the number of countries involved, to name only a few. To work out the right filing strategy for you can safe you money and time.

Design Registration

Whilst trade mark registrations provide for strong protections against unauthorised use of your intellectual property, not everything can be registered as a trade mark. Non-traditional marks such as patterns or shapes often fail because they are not capable of distinguishing the applicant’s goods from other goods. To satisfy this threshold, the non-traditional mark often has to be highly distinctive.

As an alternative, a registered design protects the overall appearance of the product. Indeed, many businesses choose to register their designs to gain more protection from unauthorised use. To obtain a registered design in Australia, you need to file an application with IP Australia. Each design costs $250.

 

Patents

Patent rights are imperative for all companies to protect their inventions from being stolen. If you already have a patent from an overseas country, you may apply for patent rights in Australia under the Patent Cooperation Treaty (PCT). The filing fee is CHF 1330, in addition to a transmittal fee of AUD $200 and a national phase entry fee of AUD $370.

Alternatively, you may apply for a standard patent in Australia, which lasts up to 20 years. It costs $370 in filing fee and $490 for examination. Prior to filing for a standard patent, many choose to apply for a provisional patent, which gives you an early priority date when your application for a standard patent is successful.

For inventions with a shorter shelf life, you may choose to apply for an innovation patent instead, which lasts for up to 8 years. Compared with a standard patent, the process is quicker and less costly. The application fee is $180, whilst examination costs $500.

Licensing IP Rights

For some smaller businesses, they might not have sufficient resources to capitalise on their IP rights themselves in an Overseas market. In these situations, many businesses may choose to license their IP rights to a third-party, and profit from the licensing fee instead.

Care should be taken in drafting these licensing agreements. It is often wise to retain a certain level of control over the use of your IP rights.

Should you decide to expand your business to Australia, you should take care to secure your IP rights, as soon as your expansion plan is serious and you are certain to expand the business to Down Under. Rights to exclude others from using your trade mark, designs and inventions are crucial to the success of your business. Put it simply, if you do not ensure to be the owner of exclusive IP rights, competition does and you are on the back foot.

For more information visit www.one-ip.com.au or come and see us in person, so you can make informed decisions.

ONE IP INTERNATIONAL PTY LTD

Level 32, 200 George Street

SYDNEY NSW 2000

AUSTRALIA

 

CALL

IN AUSTRALIA  1300 IP SAFE (1300 477 233)

FROM ABROAD +61 2 8277 4114

 

EMAIL 

office@one-ip.com.au

by Stephen Chow and Anaïs Julien ONE IP INTERNATIONAL PTY LTD

The best things in life are free. This is a common phrase that everyone has heard of for sure. Does this apply for your intellectual property too?

You may not have noticed it, but your business certainly owns intangible assets already, that may be worth a fortune and come to you completely free and automatic. But first things first. What is this IP?

In essence, intellectual property (or IP) is a body of law that recognises certain creations of the human mind as intangible properties. Being a form of property, they may be owned by persons or companies, and may be sold, assigned or licensed, as the owner deems appropriate. In the commercial world, intellectual property rights allow businesses to protect their valuable assets, many of which they have invested significant money and time into.

Intellectual property, however, is nothing more than an umbrella term that covers various individual rights such as copyright, designs, patents and trade marks. The natures of various IP rights differ significantly from one another. As such, it is imperative for businesses to protect their creations under the appropriate intellectual property right.

In this article, we take a closer look at two forms of IP rights that are often used to protect the brand a business. Copyright and trade marks are often used individually or in combination to protect the distinctive features of a business, including logo, brand name and slogans. These features allow businesses to distinguish themselves from their competitors, and build up a reputation of their own.

Whilst these two forms of IP rights operate independently of each other at large, they also overlap sometimes. As such, it is imperative to understand the extent of protection each of the IP rights offer, and how conflicts between copyright and trade marks are resolved.

What is a trade mark?

In Australia, a trade mark is defined as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. A trade mark may consist of many elements, including letter(s), word(s), shape(s), colour(s), sound(s) or scent(s). However, it must be distinctive. As a badge of origin, a trade mark must be capable of distinguishing one’s goods or services from others.

Trade marks are a particularly strong form of protection. It confers on the holder the exclusive right to use, sell and/or license the trade mark. This means the holder can prevent any authorised use by its competitors in Australia. Trade marks also have an indefinite duration, for as long as the trade mark is being used in commerce.

In tandem with its high levels of protection, however, trade mark rights do not arise automatically. It is only when a trade mark is registered that the exclusive rights mentioned above kick in. Even then, trade mark rights are territorial. A registered trade mark in Australia cannot be enforced Overseas.

What is a copyright?

Copyright is a protection given to authors of original literary, dramatic, musical, and artistic works, makers of sound recordings, cinematograph films, and broadcasts, and publishers of published editions. It gives the creators economic and moral rights. Under economic rights the creator has the exclusive rights to copy or reproduce the material, to make an adaptation of it, to publish it, to perform it in public, to show, broadcast or display the work, as well as to license these rights to a third party. In accordance with moral rights, the creator of a work is entitled to be acknowledged as such and to object to derogatory treatment of his or her work.

In essence, copyright protects the skill and labour involved in a particular expression of ideas in a physical form, but not the ideas themselves. Moreover, the creation needs to be substantial. As such, single words, slogans or titles are generally not protected under copyright. Nevertheless, no particular level of literary or artistic merit is required for copyright to subsist in a work.

Given the prolific nature of copyrighted materials, copyright arises automatically following creation. You do not need to register your work to take an infringement action against a third party who copied your work.

What are the differences?

Since copyright and trade marks have different criteria, some intellectual property are protected under copyright and not trade marks, and vice versa. For example, names, titles, slogans, trade names, and short phrases are ordinarily not capable of protection under copyright, but may be protected in the form of a trade mark.

The table below summarises the key differences between copyright and trade mark.

Overlaps and Conflicts – Copyright or Trade Mark, who wins?

Whilst copyright and trade marks operate in different fields at large, they sometimes overlap. This is particularly the case with logos. Under copyright, a logo can be protected as an original artistic work. On the other hand, a logo may also be registered as a trade mark, serving as a badge of origin for a company’s goods and services.

In cases of conflict between copyright and a trade mark right, the dispute is resolved in favour of the earlier right. Unless the work does not qualify for copyright for lack of originality, copyright would ordinarily be the right that is prior in time, since copyright exists at the very moment the work was created.

The case law is clear that where another person applies for a trade mark that consists of the entirety or a substantial part of a copyrighted work, this would constitute “publishing” the copyrighted work. Being an exclusive right of the copyright owner, this would constitute copyright infringement unless the application was authorised by the copyright owner. Here, the infringement on copyright would render the trade mark application “contrary of law” under s 42 of the Trade Marks Act 1995, which means that the application must be rejected.[1]

The seniority of copyright remains unaffected even if the copyrighted work was used as a trade mark by someone else first. In KARO STEP, the High Court of Justice in England held that the trade mark holder must demonstrate that he or she has “an absolute right to use it”. This would be defeated if the trade mark infringes on the copyright of another work.[2].

As a result, trade mark applicants should ensure that their trade mark does not infringe on another person’s copyright, as the copyright owner is ultimately able to oppose a trade mark and may succeed. Therefore the trade mark applicant should ensure, that the trade mark does not contain a substantial part of the work(s) that have inspired the trade mark.

Moreover, if you as a potential trade mark applicant are commissioning a graphic designer to design your trade mark, you should obtain an assignment of the copyright in that logo to secure your ownership of that copyright. That could be done at the time of commissioning your graphic designer to design the logo for you or subsequently.

IF COPYRIGHT IS FREE, WHY REGISTER A TRADE MARK?

The above makes clear that, as the author of a logo, you would generally be granted copyright to protect others from using it as a trade mark. Even then, however, it is recommended that you register your logo as a trade mark. The first thing to note is that your work might not attract copyright for lack of originality. As discussed above, the tests of validity for copyright and trade mark are completely different. It may be the case that your logo, though it does not qualify for copyright, is nevertheless acceptable as a trade mark. Brand names usually do not qualify for copyright protection and only very distinctive and clever slogans may do.

Since copyright does not require registration, it may be that you would only come to discover that your work does not attract copyright when an infringement action is brought before the court. So, you do not know right from the start, if you are covered or not. This uncertainty can be harmful.

Even if your logo is protected under copyright, there remain significant advantages if the logo is registered as a trade mark. The first advantage is that it is much easier to enforce a trade mark right, which is registered, compared with copyright, which is unregistered. You certificate of registration, in most cases, is conclusive proof that you are the trade mark holder. On the other hand, proving that you are the author of a logo could be a difficult process.

The second advantage is, as mentioned above, that a trade mark right can last indefinitely. On the other hand, copyright expires 70 years after the death of the author. After that, others would be free to do all the acts reserved for the copyright owner during the period of copyright protection.

Finally, the rights conferred on trade mark holders are much stronger than those on copyright owners. Unlike trade marks, copyright infringement requires derivation. This means that the infringer must have done an act based on the copyrighted work. Hence, if it was pure coincidence that another person comes up with a logo similar to yours, then there would no infringement.

To protect the badge of origin for your goods and services trade mark registration is always the recommended IP right to obtain through registration in all countries, where your goods and services are offered (your markets). Copyright, however is, may be a powerful instrument in a trade mark opposition proceeding to prevent any third party from monopolising a logo (composite mark) or song (sound mark) or clever slogan (word mark), when the creative work, leading to these types of marks were accomplished by you.

[1] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683

[2] KARO STEP Trade Mark [1977] RPC 255

by Olaf Kretzschmar

It is often the things that we don’t see or cannot touch, that are of most importance. Think of the air that we are breathing that is inevitable for us to make a living, but is hardly recognised or valued, but taken for granted. The same is true for Intellectual Property and advice related to it. Intellectual property (IP), comprising of trade mark, registered design, copyright, patent, innovation patent, plant breeders rights, trade secrets is a set of intangible assets that both, protect your goodwill and increase the value of your business.

Because these assets are of intangible nature, they are often disregarded and unprotected and therfore vulnerable. Due to the fact that digital technology, facilitating an environment where work can be shared around and published without credit or your knowledge, enables third parties to steal it and use your goodwill for their gain or as a potential weapon against you in competition, it is even more important to create awareness for the IP rights related to your business and what they can do for you. An infringement on your intellectual property can cause a serious financial loss and has a damaging effect on the authenticity and credibility of your work.

GENRAL UNDERSTANDING

The first step of protecting your IP is to obtain a general understanding of its nature and why IP is of great value for your business. In fact, the value of some company’s IP is almost 70-80% of their overall value. This applies to highly creative businesses, where the goods and services provided are the outcomes of unique and creative processes. The logical next step is acknowledging that your intellectual property is a valuable asset of your business, as much as cash in your company’s bank account or any equipment the company obtained from purchases. This acknowledgment is most probably the hardest step for most people, as you cannot take the IP under your arm and walk away. People tend to think that what cannot be seen or physically touched, is not of value. They only realise the value when the IP is infringed upon or stolen.

Engaging an intellectual property firm that listens to your concerns and to what you would like to achieve and provides you with this general skill set to make informed decisions for your business, that are directly or indirectly related to intellectual property, enables you to create a meaningful business strategy related to growth and security. You can start with a business strategy, based on assumptions made on internet search engine results, or you obtain a solid understanding of facts and overall implications of future decisions that make you act with confidence.

THE VALUE OF EXPERTISE

When it comes to the act of protecting the IP, another myth is that no support is needed, as almost all Trade Mark/ Intellectual Property Offices (the governmental organisations related to the protection and administration of IP) around the globe, enable you to register IP online. Registering IP rights yourself online is a quick and easy way to get the protection you need, by simply entering details into online-form masks and making payments online, using your credit card, if you have an overall understanding, of what the likely outcome is and how to respond to Reports received from the Intellectual Property Office. Did you know, that there are several due diligence tasks, such as accomplishing identity and similarity searches regarding trade marks, registered designs and other IP rights should be accomplished before filing to avoid a refusal of your application? Your brand name could be identical with or similar to currently registered trade marks, which would prevent it from getting registered, in which case payment of statutory registration fees to the Trade Mark office is a complete waste of financial resources? Expert advice does not only saves you time, but it also prevents you from making financially damaging decisions, by attending to applications of IP rights, that have no prospects of success whatsoever and put you into the situation, where you would infringe third party rights.

Get the due diligence work done, before you act! This is exactly why you would engage an IP expert to register your intellectual property, based on the expert knowledge.

KNOWLEDGE AND EXPERIENCE

An Intellectual Property expert requires an advanced knowledge of national and international intellectual property laws. You want to engage an expert that can tailor an IP protection strategy to all jurisdictions, being of relevance for your business. Depending on where your markets are, this could range anywhere from a state within Australia to 195 different countries, currently existing.

Imagine working with just ONE IP service provider, that can manage any IP project in any jurisdiction globally. It saves a lot of time and makes you focus on your core business if you do not have to deal with various law firms around the globe to achieve protection in several jurisdictions.

COSTS

The budget involved in protecting Intellectual Property is a major concern for a lot of businesses looking for IP advice. The budget to spend on IP protection largely depends on the filing strategy. The most cost-effective strategy is based on the knowledge that helps you saving registration fees to Trade Mark Offices in the jurisdictions selected. Remember that these fees often vary significantly based on the type of IP right you file and the Trade Mark Offices you make to applications to. You can protect your trade mark in 7 different jurisdictions by filing 7 national applications to the respective Trade Mark Office in each country. As an alternative, you can file ONE application with the World Intellectual Property Organisation in Geneva, that allows you to cover various jurisdictions with just one application. It streamlines the process, expedites the process and makes you pay a fraction of the costs related to statutory filing fees, compared to the filing strategy, where you file multiple national applications.

Did you know, that by filing your trade mark application in Australia, you gain six months of priority filing in other countries, without having to pay a filing fee in these countries immediately? This has a direct impact on your company’s cash-flow and provides the security you need, to know, that no third party can jump the queue within the next 6 months. Remember, “first come first served” applies for all types of Intellectual Property!

By lodging a priority filing in Australia, you obtain 6 months to build the financial resources to protect your IP in other countries without losing your priority.

Meet with an IP expert to get a more accurate idea of what kind of costs you might be facing and what kind of payment plans are available.

TIMELINESS

Timeliness is incredibly important when dealing with intellectual property issues. If you have not submitted an application for product design registration or protection of your logo or brand name/ slogan as a registered trade mark, every moment of inaction dramatically increases the chances of the problem escalating from a third party filing an application for an identical or similar design, logo, name or tag-line.

You want an IP firm that is responsive and achieves quick turnarounds. That includes returning your phone calls promptly, keeping you updated on the status of your case and communicating with you regularly during the course of your partnership.

TESTIMONIALS

Like many professional industries, intellectual property experts are known for their reputation. Ask around to see if anyone you know has ever had a need for an intellectual property consultant, and ask them what their experience was like. You can often find testimonials on an IP firm’s website. You want to see a reputation for honesty and a strong track record of producing good results for their clients.

RELATIONSHIPS

Find a firm that takes a relationship-building approach to work with clients rather than a transactional one. You want to work with an IP expert that is easy to understand and provides clear solutions. Engaging an IP expert is often a long relationship, so you want to build trust and feel comfortable and confident their abilities and approaches.

MEET WITH THE EXPERT

The best way to choose an intellectual property firm is to meet the experts and discuss your case. You can find out the exact scope of the issues you are facing as well as interviewing them to see if they meet the criteria discussed above.

Our expert IP consultants create a tailored IP strategy based on a proven track record of protecting intellectual property globally. We have a simple, creative, affordable and timely approach. Explore Our Services or Contact Us Today.

CASE STUDY

Here is the most common scenario, related to IP:

You are the Owner of the Trade Mark, “XYZ”. However, one day, you discover that a website has the URL, www.xyz.com.au. Does the website domain name/ URL infringe your trade mark right?

Does A Domain Name Infringe Your Trade Mark?

In Australian Trade Mark Law, s 120(1) of the Trade Marks Act 1955 (Cth) provides that a Trade Mark is infringed if the ‘sign’ is ‘substantially identical with, or deceptively similar to’ the Trade Mark. This ‘sign’ includes Domain Names. However, the ‘sign’ must be used in relation to the Trade Mark’s goods and services. Otherwise, there is no Trade Mark infringement.

For example, the Trade Mark, “XYZ”, is registered for sporting articles and educational services. The website www.xyz.com.au also offers such equipment for sale and offers tailored training services. The Trade Mark and the URL are identical. Both, the owner of the trade mark and the domain name owner offer identical goods and provide identical services. Therefore, the registrant of the URL is likely to have infringed the Trade Mark.

Alternatively, if the Trade Mark and Website Domain Name provide different goods and services, the Trade Mark Owner can still sue under s18 of the Australian Consumer Law for ‘misleading and deceptive conduct’. Further, in Common Law, the Trade Mark Owner can sue for Passing Off as long as the Trade Mark has a reputation, the Website Domain Name misrepresented your Trade Mark, and you, as the Trade Mark Owner, incurred damage.

What Can You Do?

As the Trade Mark Owner of a Registered, Australian Trade Mark, your protection extends to all .au website domain names. You can complain to the .au Domain Administration Ltd (auDA), the policy authority and industry self-regulatory statutory body, who may take action to either:

Cancel the Website Domain Name; or Transfer the Website Domain Name from the Registrant to the Trade Mark Owner.

However, this excludes .com, .net, or .org email extensions. You must be the Trade Mark Owner of a Registered, International Trade Mark, in order to have your protection extend to these Website Domain Names. For example, the WIPO Madrid Protocol is a convenient, efficient system to register your International Trade Marks. Then, you can complain to the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) who can provide similar remedies.

THIS IS WHAT AN IP EXPERT CAN DO FOR YOU

It seems safe to say that between the Trade Mark Owner and the Website Domain Name Registrant, it is the Trade Mark Owner who wins. However, this is only if the Trade Mark is filed, or even better, registered in Australia and Internationally. Our IP Consultants are experts in the field of Trade Marks, working in Australia and with WIPO or any other Trade Mark Office around the globe, to file and register your Trade Marks. Whether you are worried about an existing Website Domain Name, or wish to prevent Registrants from using your Trade Mark, or want to save that Website Domain Name/ URL.

Our Intellectual Property Experts provide the ongoing support you need to act with confidence.

CONTACT US TODAY FOR A PRICELESS AND FREE-OF-CHARGE IP CHECK

IP Expert advice is priceless, but may come at a cost. In any event it is a solid investment in your business and ensures stability and growth can continue.

GLOBAL PROTECTION OF INTELLECTUAL PROPERTY

It is all about the right IP Strategy!

As the leader in your industry, you need to ensure that you are unstoppable in any way. On the one hand, this requires certainty, that your approach to market your company or business is unique and no third party, having obtained monopoly rights in relation to a brand name, a logo, a product design or product functionality, is able to stop you from selling, either in your home country or in any other of your markets globally.

How to start growing your global Intellectual Property Portfolio?

You would like to be in a position, where you are able make informed and strategic decisions, knowing no one of your competitors can hurt your business.

Have a look what is already out there, plan ahead and secure your rights!

This confidence can be obtained immediately by undertaking identity and similarity searches for existing intellectual property rights in all relevant countries. The search result also gives you a good indication about the International markets in your trade and reveals the players in the game. Knowing, that no respective IP right is registered for a competitor, it means you are free to go ahead and can make a decision about whether to enter the competition or to remain on the sideline observing. Ideally, the decision to entering the respective markets in your International destinations was made long before the search had been carried out.

On the other hand, you would you like your customers to continue asking for your goods and services and spread the word about your excellent products, whereas you at the same time are in control of competitors’ attempts to copy your success and prevent them from doing so by exploiting your ideas and hard work. This is achieved by registering intellectual property rights that protect your goodwill in form of your brand or logo, namely a trade mark, or by registering intellectual property rights that product your unique product shape or appearance, such as registered designs or the way, your product solves a particular technical problem, so it can be protected by a patent. One has to bear in mind, that time is of the essence, once IP searches have been conducted, as the “first come first served” principle applies in intellectual property matters.

Develop your IP strategy!

Now that it is clear what your markets are and what can be monopolised for you (name, logo, product design, invention) the question arises, how do you achieve the most solid protection in the majority of countries with the least effort, both financially and in relation to actions required in the quickest way possible. As always in life, there is no free lunch as much as a unified range of IP rights would be convenient, the reality is, that every country has its own intellectual property laws in place. However, there are various International Treaties for the respective IP rights that make International protection more affordable and can contribute to an effect to streamline decisions and achieve effectiveness. Knowing the systems well and knowing how to use them within the right protection strategy is key.

This is where expert advice is of most value. By not knowing the right filing strategy it will eventually get you there, but most likely with three to five times more financial efforts in double or triple the amount of time, which may cost the company a fortune, which is money that could have been saved and invested in the company’s productivity. Doing things right from the beginning is important.

When your company operates in a global market, you need to consider intellectual property protection for each country the company operates in. Should the business be in its beginnings, you would want to consider, if there is a chance that your business may operate or expand overseas.

Ask yourself questions!

It all starts with answers to a few simple questions. Questions and the respective answers should be put down in writing. It is important that a coherent strategy developed, is adhered to all the way through.

Do we expand Internationally and if so how quickly?

By asking if the company would generate the best returns by establishing its product in its home market Australia first or if the global markets should be approached simultaneously the fundamentals of the IP strategy will be laid. How quickly your company expands can depend on various factors. One of them is clearly if the business has the resources to successfully commercialise outside Australia?

If funds are an issue, the strategy of choice is to file an IP right in Australia. This gives the applicant six months to expand this IP right to any other country be filing an application, claiming priority, based on the Australian trade mark, design or patent application. This way you literally “jump the queue” and kill to birds with one stone. You save funds for the time being and have the opportunity to obtain access to funding that allows the company to expand and your Australian filing date, that is the date when IP protection commences, is preserved for all other countries that you are going to file into within the next six months. So, wherever you go in the next half a year, you are always ahead of any other competitor.

You can use the six months time frame wisely for establishing:

• a reputation and financial support

• manufacturing and distribution networks to supply to countries abroad

• where to manufacture your products

• marketing and promotion networks

• a strategy to successfully exploit your products and commercialise your

services abroad

What are our key markets?

By identifying the key markets for the company’s products and services, the most cost-effective filing strategy, that achieves registrations in the fastest way possible, can be determined. Two things are important to understand:

Firstly, if an IP right is available for registration, do not hesitate to file immediately. It might be unavailable tomorrow or even in a few hours. “First come first served” applies and you compete against six billion other potential applicants!

Secondly, at least filing an application in Australia, would give you six months time to work out a global strategy. So a national filing is of the essence to cover your company.

National IP Filings or Filings into International Treaties, such as the Madrid System of World Intellectual Property Organisation (WIPO).

You can benefit from International Treaties, such as the Madrid Union, which consists of the Madrid Agreement and the Madrid Protocol for trade marks when all or designated countries for an IP filing are members of this Treaty. This streamlines the registration process, saves processing time and make the registration process more cost-effective. It has currently 100 members, covering 116 countries.

Part of your filing strategies might be countries in the Middle East or South East Asia, that are not a member to this Treaty, which means, your company will have to select a combined filing strategy, where the majority of designated countries can be covered by the Madrid Union and its International Treaty and the remaining countries are to be lodged individually with the respective Intellectual Property Office in each of the remaining countries.

If you run a successfully established company, it can improve performance, if the performance of your IP portfolio and the disbursements accompanied by the registrations in the various countries are carefully examined.

“There is no such thing as ONE “world trade mark” or any other intellectual property right that covers you globally with simply ONE application. However, our team from ONE IP INTERNATIONAL can make it feel like there is.”

Rather than dealing with various law firms around the globe, we are your first and only address for all global intellectual property matters.

Expert advice from a reliable International network saves you time and money and will give you peace of mind that your Intellectual Property (trade mark, registered design, copyright, trade secrets etc.) is well protected, globally. You let us know, what is to achieve. ONE IP International, a global provider of Intellectual Property services:

• protects any IP right in any country worldwide

• breaks down any IP matter, so you understand it within minutes

• gives you immediate and 24/7 access to all your IP assets, wherever you

are, so you are in control of and up-to-date in relation to your current

Intellectual Property portfolio

• provides all useful tools to properly plan, create and administrate your IP

portfolio

• in any language required

• with all relevant information, required to make informed global business

decisions.

Speak to one of our IP experts in Australia to obtain your company’s global intellectual property strategy and accomplish global protection by local access.

VISIT OUR WEBSITE www.one-ip.com.au

CALL 1300 IP SAFE

+61 (0)2 8277 4114

EMAIL office@one-ip.com.au

If you are a brand owner, selling online on Amazon, enrolling to the Amazon Brand Registry is inevitable, if you would like to ensure, your Intellectual Property is protected online.

What is the Amazon Brand Registry Program?

The Amazon Brand Registry has been launched in December 2017 in Australia, in order to prevent the sale of counterfeit goods on Amazon. The Amazon Brand Registry is a mechanism dedicated to helping brand owners to identify and stop potential intellectual property rights infringement, and particularly trade mark infringement.

The Brand Registry uses the information provided by the brand owner to implement additional predictive protections.

The Amazon Brand Registry gives brand owner’s access to tools that enable them to more accurately represent their brand, find and report a violation, and share information that can help the platform to proactively prevent violations.

The program

·      gives you control over pages, that use your brand name, so your brand is represented accurately,

·      provides easy search and report tools to find any potential infringement of your brand online,

·      offers access to automated protection, removing suspected infringing content,

·      provides access to a dedicated internal amazon team for submitting and escalating issues for pro-active brand protection.

How can I enrol in the Amazon Brand Registry?

To be able to enrol in the Amazon Brand Registry Program, you require an active legal instrument to be able to properly enforce your rights in the brand.

You have to register a trade mark, as only a registered trade mark enables you to prevent any third from using your brand in an identical or deceptively similar way. Without a registered trade mark, you do not even own your brand.

The trade mark must be in the form of a text-based mark or an image-based mark with words, letters, or numbers.

Amazon currently only accepts trade marks registered in the United-States, Brazil, Canada, Mexico, Australia, India, Japan, Turkey, Singapore, France, Germany, Italy, Spain, the United Kingdom, the European Union, and the United Arab Emirates.

The trade mark must be in the form of a text-based mark or an image-based mark with words, letters, or numbers.

To enrol the brand, the brand owner must provide the platform with:

–         The brand name that has an active registered trade mark

–         The associated trade mark number

–         The list of product categories (e.g., apparel, software), in which the brand should be listed.

–         A list of countries where the brand’s products are manufactured and distributed.

If the brand owner satisfies the eligibility requirements, the next step is to sign into the Brand Registry. The latter can use his Vendor or Seller current account to sign in, using the same username and password, or create a new Amazon account for free.

Do I need a Trade Mark in each country I want to enrol in?

This is correct. You must have a registered trade mark in each country, where you wish to enrol. Ensure to plan ahead and talk to your Intellectual Property consultant about how to successfully register your brand in all relevant jurisdictions. Keep in mind that the registration process can take several months.

How do I register a Trade Mark?

Access to the Amazon Brand Registry is just one of the benefits of registering your brand as a trade mark.

A registered trade mark:

–         allows you to take legal action against those who use an identical or deceptively similar mark,

–         ensures no third party has a claim against for alleged infringement of their mark,

–         increases the value of your brand (Apple, Google, Microsoft wouldn’t be of such a high value without valid protection as trade marks.) and creates an intangible asset, that contributes directly to the value of your business.

This is how the registration process works:

1. Completion of due diligence similarity/ identity searches in all relevant trade mark databases of all designated jurisdiction,
2. Drafting and Filing of an application with the Trade Mark Office in the respective jurisdiction (e.g. Australia, European Union, USA),

WITH THE FILING DATE (renewal required after 10 years from filing, no shorter registration period is available for a trade mark) you are then entitled to use your mark with TM in the right-hand corner ™.

1. Some time (varies between 3 business days and 5 months, depending on the jurisdiction) after filing, you receive a Notification of Filing from the Trade Mark Office of the designated jurisdiction.
2. The application will then have to wait in order to be examined by the Trade Mark Office of the respective jurisdiction.
3. After the examination is finalised, you will receive a Notice of Acceptance (if your mark is eligible for registration) or a Trade Mark Report (if the Trade Mark Office detected possible obstacles to registration).
4. The trade mark’s acceptance is advertised in Trade Mark Journal of the designated jurisdiction.
5. Once the opposition period expires, without any opposition being lodged, you will receive the Trade Mark Registration Certificate from the Trade Mark Office of the designated jurisdiction.
6. You can commence using your mark with R in a circle in the right-hand corner ®.
7. Your mark is now registered and you are the owner of it.

TRADE MARK INFORMATION

In order to process your trade mark application, the Trade Mark Office requires the following information:

–          the full name of the applicant ( individual(s) or company),

–          a street address or P.O. Box address,

–          a short description of the goods/ services, offered under the brand and

–          the brand name and/ or the logo in jpg file format (if applicable).

If you are currently seeking to enrol your brand in the Amazon Brand Register, do not hesitate to contact us so can advise you accurately and assist you in that procedure. We also provide international trade mark registration services. Contact us today and protect your brand in all relevant jurisdictions around the globe.

Intellectual Property (IP), comprising of copyright, trade mark, registered design, patent, plant breeders rights and trade secrets are intangible assets most people are not familiar with.

However, being aware of, registering and properly maintaining IP, is as important as getting a regular health check-up because avoiding it might have fatal consequences. If it is not dealt with, it can have major repercussions for a business and can leave you bankrupt and out of business in the blink of an eye.

What we are going to consider is leading to you saving yourself legally from all this whether you are an artist, an entrepreneur, a creator or an inventor.

“The biggest component of a graphic designer’s job is to create intellectual property. It would be a waste for them not to find out how to protect it.”

-Australian Graphic Design Association, AGDA.

You have probably heard the phrase “IP Protection” and it might be possible that you want to familiarize yourself with its intricate details or are looking forward to making your business recognised locally and globally.

Well, make yourself at home because we are going to explain the process and solution to your problems in detail without wasting your time.

The first question that comes to mind is what exactly is IP? How would I know if it’s important for me?

So, let’s start with the first question.

WHAT IS IP:

In this era of digital age, as information technology is becoming more and more pervasive and vital in our daily lives, information itself is becoming more important and more valuable.

But wait, you might have concerns, that valuable information is meant to be shared. As the saying goes:

“Great discoveries and improvements invariably involve the cooperation of many minds.”

-Alexander Graham Bell.

So, as the technology is continuing to advance, it is leading to the sharing of information much faster and easier and thus we are less able to control the copying and dissemination of this incredibly valuable stream of data.

This would easily lead to devaluing of talent, labor, creativity and uniqueness and losing the respect for intellectual capacity of the people who come up with distinctive ideas.

So, how can we reach equilibrium?

The need for balance has engendered certain laws that can confine this flow of information to spread in certain limitation so it can be exercised and conveyed systematically.

The set of laws which protect the rights of intellectuality and original ideas are IP or Intellectual Property laws. It is a term used to describe various exclusive proprietary rights that might be reserved by creators, inventors and artists.

IP includes copyright, trademarks, patents, trade secrets, and design. In this blog, we will focus on copyright protection in detail in relation to data over-sharing.

COPYRIGHT LAW:

As it is apparent from the name, the law of copyright relates to the right to copy. Copyright protects the way in which an idea or concept is conveyed. It does not protect the origin of the idea or concept itself. Once an original idea has been compiled in material form (written down, recorded or saved on a computer), copyright protection is likely to apply.

It includes literary works, artistic works, musical works, dramatic works, sound recordings and cinematographic works.

COPYRIGHT PROTECTION DURATION:

For the majority of material, copyright protection will last for 70 years from the end of the calendar year in which the author of the material dies.

It has to be kept in mind that you need to copyright your work to protect it from any infringement.

COPYRIGHT INFRINGEMENT:

If someone has used, shared or reproduced your copyright protected work or material without permission, then he/she has infringed your copyright.

This was all understood easily until the internet happened.

So, where is the fine line between fair sharing and copyright infringement?

Now, how would I know as an average law-abiding citizen, if what I am doing lies within the premises of the copyright law?

Let’s understand this by taking the example of a book “Infringement Nation” written by John Tehranian where he explained the infringement in copyright by taking the example of a regular person’s routine and consider a hypothetical routine for me.

In a normal day, I would wake up, check my social media and share these awesome cat videos that made my day but each share might be making me liable to damages that are in thousands.

On the way to work, I might sing Taylor Swift songs at the top of my lungs and share it with people who might ask me to stop making their ears bleed and well, that is not nice but at least nobody is blaming me for singing somebody else’s song, though they might be for ruining it.

After I reach my destination, I straight up check the likes on my cat videos, reply to the comments, procrastinate a bit and then start working on my presentation where I copy-paste a number of researched stats using online resources.

Now, considering my imagined morning routine alone and this notion of copyright infringement, these owners might make me remove my videos or completely destroy me because by the end of the day I might be liable to thousands and by the end of the month, the damages would be fatal.

This leads to the answer that:

If copyright laws had been this strict and had not been lenient, the case for each person would have been the same as the hypothetical me. That is why copyright issues are tested and suited for each scenario and the coherence area lies where everything overlaps into specificity and more detail.

If we keep this in mind, it might be easier to understand the copyright specifications followed by different social sites including YouTube, Facebook, Instagram and Twitter. The reason we can brag in front of our friends and be in credulity about how we are in contact with Dwayne The Rock Johnson The Real One and he is liking all our cat videos, is because the set of specifications followed by these sites are also scenario based and not very limiting and strict. We have to familiarise ourselves and exploit the information in a right way so the law is not stopping us to share our content and help others, it is just asking us to do it in a systematic way.

Then why do people avoid lawyers?

The main misconception about this field is that people think that they would be trapped with expensive lawyers and would have to pay a lot but in reality it is a wrong perception, you will see it yourself, just take a step, all you have to do is go and talk to the legal advisor relating to the issues regarding your patents, creativity or businesses.

Here at One IP International, we help you make the right decisions rather than just jumping right off to your registration, you have to know that most important thing to have a legal protection for your business is that it acts as a shield and protects your personal assets in the long term, so don’t delay and regret later.

Key Topics Covered:

1) Role of IP law and its need.

2) Addressing the misconception that the law is outdated and strict.

3) Balancing law and the freedom of sharing.

4) Copyright Issues.

5) Copyright Solutions, Generalisation and Specification with respect to each scenario.

We trust, this gives you a good idea of your hidden business treasures.

Now, if you want to secure protection for your intangible Intellectual Property business assets, please Contact our team at ONE IP INTERNATIONAL PTY LTD for detailed guidance.