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.
