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IP Insurance – A New Safety Net In Australia

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ONE-IP INTERNATIONAL – John Aclis and Stephen Chow

If everything goes right, registering a trade mark can be a cheap and straight-forward process. On other occasions, however, registering a trade mark may lead to a series of litigation, which would see your expenses balloon exponentially. Even when a trade mark has been registered, third parties may still commence proceedings to revoke or remove that trade mark. The good news is, businesses now have the option of insuring themselves against such risks after Australia’s first trade mark defence insurance became available earlier this year.

Once accepted, the particulars of a trade mark application are published in the online Trade Marks Journal by IP Australia. From this point onward, third parties have two months to file a Notice of Opposition on the basis that the trade mark does not comply with the relevant provisions.

Oppositions may allege that the trade mark is descriptive, not distinctive, or is likely to deceive or cause confusion. Unfortunately, your trade mark can be original, unique and highly distinctive, but other traders always have this right to oppose your mark’s registration. The ensuing litigation may end up unexpectedly costing registrants many times the initial registration fee in legal costs.

Even when a trade mark has been registered, a third party may still bring an action against the trade mark owner. They may allege that the trade mark should be removed from the register for non-use. Alternatively, they may argue that the trade mark should be revoked since it should not have been registered in the first place.

Earlier this year, however, Australia’s first trade mark defence insurance was launched. Called Trade Mark Protect, this new product from BMS Risk Solutions offers two insurance policies. The first one covers oppositions by third parties up until the point of registration, charging upwards of $215. The second policy insures trade mark owners against proceedings for revocation and removal for non-use, starting from $215 per annum.

For small business owners, trade mark defence insurance can guard them against the risk of incurring thousands of dollars in legal fees if a third party chooses to oppose their trade mark applications or bring an action against their registered trade marks. It is hoped that when more insurance companies enter into this market, the policies on offer would become more competitive.

Ask us about your options to make the registration and the use of your trade mark a risk free experience for you!

©2018 ONE-IP INTERNATIONAL PTY LTD

ONE IP Cheat Sheet – What is Copyright?

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Copyright is a complex element of Australian and international law, with many nuances that can all too easily be misinterpreted. Copyright law is also different from country to country, with large differences in the way the United States upholds copyright in comparison to the creation and ownership of copyright within Australia. Understanding these differences is crucial when it comes to exploiting and controlling your work across both of these territories.

What is Copyright?

So What is Copyright?

The simplest definition of copyright is that it is ‘a bunch of rights in certain creative works such as text, artistic works, music, computer programs, sound recordings and films’ (Smartcopying.edu.au). Copyright owners have the right to prevent others from reproducing or using their work without their permission, and are able to exploit their copyright rights through the sale of the rights to someone else as a controllable and valuable asset.

One area that can cause confusion for people is that copyright does not protect ideas, concepts, styles or techniques. This can be particularly nuanced for those in the creative industries who take ideas and develop them into other properties, such as film, theatre or novels. Whilst the script, play or manuscript itself can be protected, the base idea for the project is not covered under copyright.

As well, copyright is a different right to the property right in an object. Whilst you can be the owner of a book in its property form (physical or digital), you will not also own the associated copyright with that book unless it’s been assigned to you.

What are Australian Copyright Laws?

In Australia, we enjoy automatic copyright protection, meaning there’s no requirement for copyright to be registered for it to be enforceable. Work is protected the moment it takes a material form, which can be as simple as writing it down, taking photos, creating sketches or recording it. We recommend you keep drafts and copies of your work from its original date of conception in order to prove your copyright ownership and rights enforceability. You can also clearly display copyright on your work by using the copyright notice symbol, your name and the year you made it.

Copyright lasts for the duration of your lifetime before extending 70 years past the date of your death, in which time nobody has the right to use or change your work without your permission (the use of your original work without permission is called copyright infringement and is an illegal act).

In the United States, copyright must be registered in order for it to be enforceable.

Copyright is an important element of your intellectual property. If you’re unsure as to your copyright rights and whether or not you have the protection you require, our team at ONE IP INTERNATIONAL can work with you to evaluate your IP protection needs before managing the process on your behalf. As your IP is an invaluable part of your business and personal assets, knowing it’s managed and protected is an important key to peace of mind in growing and nurturing your business.

ONE IP Cheat Sheet: What is a Trade Mark?

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The term ‘trade mark’ is often thrown around in casual conversation and is a part of the business vernacular, however, not everyone who uses it is aware of its true and real meaning. A trade mark is not just a colloquial term – in fact, it’s very important business owners and creatives understand what a Trade Mark truly is, so they can arm themselves with complete protection across their IP and business activities.

So What IS a Trade Mark?

A trade mark is defined as a brand name or service mark that includes any word, name, symbol, device or particular combination that is intended to be used to identify and distinguish the goods/services of one seller or provider from those of another. Simply put, the Australian Government’s IP Australia defines a trade mark as a ‘way of identifying a unique product or service.’

What is the Difference Between a Trade Mark and a Logo?

One of the common misconceptions people have is that a trade mark and a logo are the same things, but in reality, trade marks can be much broader. A trade mark is NOT is a business name, company name or domain name. Trade marks are defined by their uniqueness in product or service, not in the umbrella organisation or business that provides these trade marks for use or for sale.

Trade marks can take the form of:

  • Letters
  • Numbers
  • Words
  • Phrases
  • Shapes
  • Logos
  • Pictures
  • Sounds
  • Smells
  • Movements
  • …and more.

By registering a trade mark, you reserve the exclusive right to use, license and sell that mark. This is an important tool to understand particularly in looking at maximising your business’s growth over time – the value of your trade mark can increase in correlation to the success of your business, and it’s crucial that you’ve got this protected from the beginning to prevent from copying or stealing by others later on.

What is the Difference Between a Trade Mark and a Design?

Trade marks are also different when it comes to designs (find out more in our Design Cheat Sheet). One of the key differences between trade marks and designs is that a design must be new or unique in order to be registered, whilst a trade mark does not. Designs refer more specifically to elements such as shape, configuration, pattern or ornamentation of products, compared to trade marks which can be identifiers of one particular business, service or product over another.

Is a registered trademark mine forever?

Once you’ve identified your trade mark and had it registered, you must actively use your trade mark in order to keep it from being removed on the grounds of non-use. If this law was not in place, too many traders could register multiple trade marks just to keep competitors from using them, rather than using trade mark registration in the way it was intended – to define and separate their business, service or product out from the general market and from the sea of competitors.

Do you have a trade mark that needs registering? Talk to our team at ONE IP INTERNATIONAL about how we can service your complete IP needs.

ONE IP Cheat Sheet – What is a Design?

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If you’ve started at the beginning of our IP Cheat Sheet series, you’ll now be familiar with what a trade mark is – a unique identifier of a product or service – and how it needs to be registered in order to be protected. Now, let’s take a look at what a Design is in terms of IP, and how you can protect your Designs against copycats and infringement.

So what is a Design?

IP Australia defines design as ‘what makes a product look the way it does.’ These features extend to cover areas including shape, configuration, pattern and ornamentation. For example, Apple’s iPhone is a trade mark – but the exact curve of their iPhone X and the shape of its product is a design that is specific to them and can be protected for their use only. Whilst other competitors may use similar designs, a direct copy would be an infringement on Apple’s design rights and would be enforceable.

You can protect your product designs through obtaining a registered design right, which is a type of intellectual property specifically created for this purpose.

A design right gives you the ability to protect designs that have an industrial or commercial use. By registering a design, you as the owner hold the exclusive rights to commercially use, license, sell or exploit that design in that particular form. This is of crucial value to just about every industry, as otherwise, you risk your hard work, creative efforts and ingenuity being stolen and used for the benefit of others in their own business endeavours.

However, not all designs can be legally registered – very specific designs, such as designs for medals and Australian currency, are not able to be protected in this manner. As well, artwork is protected not by design right, but by copyright. To make matters more confusing, you do, however, need design protection if your artwork is applied to a product, which results in a unique look for that product.

How do you Register a Design?

The process of registering and certifying a design is not straightforward, involving complex and costly processes and the involvement of many specialists, such as lawyers, industrial designers and marketing consultants. Each of these advisors contributes advice that is required for successful completion of a design application. There’s also a number of fees involved in the process of design applications, registrations and maintenance, so the process overall can be intricate and unclear for those who are new to the area of design registration.

If your business or individual work sees you creating designs that require protection, you can save yourself the time and confusion of the complex process that is design registration and certification. ONE IP INTERNATIONAL’s team includes experts who have years of extensive first-hand field experience in the navigation of IP protection and management, both at home and abroad. We’re available to connect with you and evaluate your IP needs on a case-by-case basis, customising our approach to ensuring your trade marks, designs and patents are thoroughly and adequately protected.

Is Sudden Death Of Your Trade Mark Possible?…. Absolutely!

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We’d like to think that the world plays fair, and that hard work does not go unrewarded. However, the unfair reality of the intellectual property world reflects the opposite: sometimes, a brand who’s successfully established and used a trade mark for years can find their IP threatened by a competitor. There’s a certain level of irony in the fact that a trade mark could stand to lose its protection through its own success, known in legal terms as a phenomenon called ‘Genericide’. Genericide is a form of abandonment: ‘when a mark becomes the generic name for the goods or services on or in connection with which it is used.’

If you’ve read our post on ‘What is a Trade Mark?’, you’ll know that a key requirement for the successful registration of a Trade Mark is that the mark is distinctive for the goods and services that it will be protecting. One of the areas within this ruling that can cause confusion is to do with the term ‘badge of origin’, when a trade mark can serve as an identifier of an exclusive source of a particular type of product or service. This ‘badge of origin’ can become an issue if the trade mark becomes such a common part of public vernacular over time that in fact, instead of being a distinct identifier of a particular product against its competitors, the public just use the term as an adjective – think ‘Blu-tack’ being used to refer to all forms of similar adhesive, rather than solely the product sold by Blu-tack themselves. If this happens on a great enough scale, judges can rule that terms have become too ingrained in common speech to remain trade marked, causing Genericide.

Velcro is one such company that has faced Genericide, using humour as a weapon in a video titled ‘Don’t Say Velcro’ (released in 2017) to gently enforce to the public that in fact, Velcro is their brand, not a generic term for that ‘sticky hairy stuff’ everybody knows as Velcro. Even within their humorous presentation, it was clear that Velcro’s lawyers are running into very real issues due to the risk of the Velcro trademark facing Genericide. Their website’s about page now paints their message loud and clear: ‘Never a Noun. Never a Verb. Always on Brand.’ Although most assume that it’s too late to take an educational approach to removing the term from the general public’s vernacular, unless it’s used correctly to refer to the brand, Velcro’s case proves the importance of educating the public – and other competitors – around the importance of trademark laws and the role they play in facilitating fair and competitive business practices.

If you believe your brand may face Genericide, here are some proactive strategies you can employ…

  • Protect your trade mark against other competitors that are using your trade mark to advertise similar products
  • Maintain your IP – watch out for misuse or for the filing of trade marks too similar to your own
  • Always use the trademark in its proper form and with the appropriate trade mark symbol
  • Don’t turn your trademark into a verb, noun, or possessive or plural form – keep it separate for its use to describe the brand, not the product
  • Use the trademark across a line of products, rather than a single product, so it remains brand-oriented

Understanding the nuances of IP ownership and management can be confusing, but the risk for not doing so is too great to ignore. Talk to ONE IP INTERNATIONAL today so we can do so for you!

How To Maintain And Nurture Your Trade Mark – Part Two

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Make your IP work for you

You can turn your trade mark into a revenue-generating asset through its commercialisation. This can be done in the form of assignment to your mark, where you sell your monopoly rights in relation to the brand to a third party. However, another option would allow you to retain the ownership of the trade mark whilst licensing it out to third parties who obtain the right to use the trade for their respective goods and services. License fees can vary depending on factors like exclusive or on-exclusive licenses.

Monitor your mark

It’s crucial to monitor your registered trade mark carefully. If you’re not paying attention, you may be unhappily surprised by events in the market, such as new and existing trade marks being used in your industry.

Monitoring your trade mark enables you the following rights…

  • Oppose the acceptance of another trade mark if it infringes upon yours
  • Ensure your trade mark continues to be regarded as a trade mark. If your trade mark becomes known as the generic name for your goods or services, a third party could have it cancelled through the courts.
  • Ensure your trade mark usage keeps you clear of the risk of removal from the register. If a registered trade mark is unused for three years, it can be removed from the register, resulting in the loss of your right to that trade mark.

Defend Infringements and Dilution of your brand

As a responsible trade mark owner, it’s important that you act immediately upon being made aware of an ongoing infringement or dilution of your mark. Allowing other competing brands or businesses the use of an identical or similar brand name in relation to identical or similar goods/services can cause great confusion within the marketplace, resulting in a significant decrease in the value of your brand amidst your consumer base. It could move from a monopoly to a commonly used descriptive term, leading to the death of your intangible asset. It may also result in the loss of customers, as they could fall for the deception of believing your competitor, who may be using a brand similar to yours in sound, spelling or meaning, is in fact your business. Instead of buying from you, your customers may begin to deal with your competition, which leads to loss of profit and a dilution of IP ownership and value within the marketplace.

Continue to build your reputation

Any experienced business owner knows that earning the trust of customers and clients isn’t easy, and can take years of relationship before that asset develops. It’s even harder to maintain high standards in order to carry that customer trust with you for decades to come. By focusing on your business passion and having the peace of mind of knowing your nurtured IP is protected in order to provide you with an ongoing income stream, you’ll be able to continue to grow armed with your hard-earned assets. Remember this key: what you invest into a brand in its early years will grow through metaphorical compound interest to return to you as the years go by. Setting your brand, and yourself, up for ongoing success is crucial – and IP protection is one of the pillars of this success.

How To Maintain And Nurture Your Trade Mark – Part One

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Business ownership requires many talents, but one of the most important foundations for any business is the development and growth of intellectual property. Too many people rush into business armed with a great idea, but don’t stop to consider the realities of how to ensure that idea is protected and positioned for effective long-term growth and exploitation. By considering your intellectual property requirements before entering into the market, you’ll be able to nurture that IP and maintain it, turning it into a revenue-generating product or service.

Of course, IP is only as powerful as the hard work that has it positioned for ultimate market success. Building a reputation for a brand and protecting it along its journey to success goes hand in hand. In the same way that you look to protect your child’s wellbeing and prevent any harm or danger from coming to pass, growing a brand require the same kind of careful forethought and attention to detail in preventing the occurrence of damage.

Registering your trade mark is the first step along the road to successful brand nurturing. However, it’s not as simple as just placing a trade mark on the register – it’s your responsibility to ensure your trade mark is kept current by paying the appropriate renewal fees every ten years and making changes to your trade make if and when it is required. You may also need to make changes to your trade mark, depending on the course of your business trajectory.

When it comes to the practical use and maintenance of your trade mark, there’s some simple practicalities to consider that will keep it in best shape.

CHANGE ™ to an ®

It’s time to acknowledge the truth – your little brainchild is all grown up. When using a brand name or logo as a badge of origin for your goods and services for the first time, the odds are high that this brand is still unregistered, so a TM in the upper right corner of the brand is an appropriate way to show the distinction of your brand from its competitors. However, once you’ve moved into official registration, it’s time to embrace the visibility of your brand’s registration by changing the TM to an ® – this tells the public that you’re aware of your now-registered trade mark rights and that you’re able to defend your intangible asset.

Keep it up to date

It should go without saying that your responsibility as a trade mark owner extends to ensure name and address details are still current, but you’d be surprised by how many people forget this simple fact. If they’re not, the Trade Mark office will be unable to notify you when it’s time to renew your trade mark filing.

Head on over to part two of this article to learn more about how to nurture and maintain your IP…

How is copyright ownership decided when a robot creates an artistic work?

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As technology has continued to advance, it’s brought with it a host of legal issues that old legislation could not have foreseen coming when certain intellectual property rules were set in place. Previously, defining copyright was simple: the creator of the artistic work owned it automatically. However, with recent technological developments, we’ve now reached a point where robots have the capabilities of creating artistic works, which leads to the question: who owns the artistic work? Is it the person operating the robot, the person who created the robot, or the robot itself?

Copyright Frameworks

Copyright regulatory frameworks that delve into this space differ from jurisdiction to jurisdiction. The US and Germany share the same viewpoint, with previous rulings upholding a belief that only artistic works created by humans can be protected by copyright. However, the Copyright Act in the UK has taken a different approach, granting copyright of a computer-generated artistic work to ‘the person by whom the arrangements necessary for the creation of the work are undertaken’.

In Australia, section 35(C) of the Copyright Act 1968 (‘the Act’) defines the author of the artistic work as the owner of the copyright. Although ‘author’ is not defined within the Act, the judgement in Acohs Pty Ltd v Ucorp Pty Ltd (2012) FCAFC 16 ruled that artistic works which are partially generated by computing programs are not protected under copyright law.

Australia’s Copyright Law

This current stance from those tasked with protecting Australian copyright decisions may face fresh challenges and issues as technology continues to advance, with a key example of this grey area arising in the form of the newly released ‘Google Clip’ camera. Google Clip uses AI and machine learning to detect moments, automatically taking photos upon detection. Under the current interpretation of the Australian Copyright Act 1968 and Acohs, if Google Clip cameras were in use in Australia, the copyright of the photos taken by Google Clip wouldnn’t belong to the owner of the Google Clip, to the robot, or to the creator of Google Clip themselves – as current laws stand, nobody would own the copyright.

There’s no question about the direction technology is heading, and Australia’s current approach to copyright ownership when artistic work is created by a robot or by an AI system will no doubt reach a boiling point when a key case will force the issue into the public’s – and court’s – consideration. As we move towards a society that’s more integrated with highly intelligent AIs, robot-generated artwork will become more and more common. Sooner or later, a new approach will need to be considered, in order to grant copyright protection to artistic works created by AI and machine learning.

Please note this article is not intended to provide any form of legal advice. The material of this article is of a general nature only and is based on Australian law as of the date of publication. If you require assistance with matters relating to copyright ownership, protection or intellectual property management, please contact us at ONE IP INTERNATIONAL so we can assist you.

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