Intellectual Property

Intellectual Property Lawyers | Greyson Legal

At Greyson Legal we have the hands-on-experience, knowledge and skills to assist and advise you in relation to your intellectual property (IP) requirements. We have helped some of our clients in relation to protecting their IP interests within Australia and also internationally.

What is Intellectual Property  ?

Intellectual Property (IP) is a form of intangible property right created by a person through their mind, for example, creating an invention or an artistic design.

Generally, IP rights encompass:

  • copyright
  • trade marks
  • registered designs
  • patents
  • circuit layout designs
  • plant breeder rights
  • trade secrets.

Why do I need to know about IP ?

Intellectual Property can be a significant asset, so ensuring your interests in the IP are appropriately protected and that infringement and disputes are dealt with adequately should be a key element of any risk minimisation strategy.

Most businesses have different IP interests. We find though that business owners often misunderstand, under-value or do not appropriately protect their IP interests, which leaves those IP interests vulnerable to being lost or abused.

Greyson Legal can assist you in identifying and implementing legal solutions to help you protect and maximise the value of your IP.

Contact us for an obligation free discussion about conducting an IP Audit.

Our Intellectual Property Law Services

At Greyson Legal our intellectual property lawyers can advise on a range of areas, including:

  • General IP advice
  • Conducting searching
  • Copyright advice
  • Australian Trademarks advice, registration and oppositions
  • International Trademarks registration through WIPO-Madrid Protocol (and non-participating countries)
  • Trademark renewals
  • Trademark assignments
  • Design advice and registration
  • Assistance with commercialisation of IP
  • IP Agreements
  • Term Sheets
  • IP and Research Collaboration Agreements
  • Software Licensing
  • Computer Hardware Service Agreements
  • Website terms, conditions and policy of use
  • Web site disclaimers
  • Confidentiality and non-disclosure Agreements
  • Internet law
  • Technology Law
  • Enforcing and defending IP infringements (and "cease and desist" letters)
  • Domain Name advice and registration
  • IP portfolio management
  • IP audits
  • Franchising and IP

Franchising and IP

Intellectual Property forms an important element of the Franchise model. This is because the Franchisor (or an associated entity, sometimes called a "Licensor") will own:

  • one or more registered trademarks; and
  • copyrighted material. 

Through the Franchise Agreement, the Franchisor will grant its Franchisees a licence to use those trademarks and copyright in relation to the Franchised Business being operated by the Franchisee.

Other forms of intellectual property, such as, trade secrets are also a key part of the Franchise model, as the Franchisor will grant the Franchisee access to various processes and procedures, often summarised in a Franchise Operations Manual. The Franchise Agreement will include certain confidentiality and restraint obligations on the Franchisee not to use the trade secrets other than for authorised purposes. 

Greyson Legal are leading Franchise Lawyers - we act for clients from the Gold Coast to Redcliffe and the Sunshine Coast.

You can find out more about Franchising law here.

What is Copyright ?

Copyright is a form of IP which provides a way of protecting a person’s original expression of their ideas. For example, an artist who paints a picture would own the copyright in the picture they created.

Generally, the initial person to create the relevant work is the copyright owner. However, there are exceptions, for example, in an employer/employee relationship where the work undertaken by the employee is part of their job, then the copyright in the work would be owned by the employer. Well drafted employment agreements will contain terms and conditions which deal with this issue.

It is possible for two or more people to own copyright in material. For example, if two authors collaborated to write a book – they would each share the copyright rights in the material.

copyright symbol

Intangible Right

Copyright is an intangible right (as opposed to a physical or tangible property right). As an intangible “thing” it is incapable of being physically perceived.

For example, while a painting has a physical or tangible element, for example, you can see the painting and touch the painting, the copyright in the painting and the artist's rights associated with it are intangible forms of property.

Copyright does not exist in an idea as per se. Rather, copyright subsists in, and protects expressions of ideas. For example, just because you might come up with the idea that a house should contain four bedrooms, two bathrooms and a verandah, does not mean you have copyright in that idea. However, if an architect designed plans for a house with four bedrooms, two bathrooms and a verandah, the architect would own the copyright in the plans incorporating the architect’s design.

Examples of Copyright

Common examples of material or “works” that can be protected through copyright include:

  • Musical;
  • Artistic;
  • Literary, eg.books;
  • Films;
  • Newspapers and magazines;
  • Computer programs/code;
  • Television broadcasts

Statutory Framework

In Australia, the Copyrights Act 1968 (Cth) provides the statutory framework for protection.

Under the Act, the works must be:

  • in a material form (eg. in writing (like a book) or by way of a painting, etc); and
  • a new creation (ie. be original – not copied).

Legal rights

Copyright provides a legal right in the copyright owner to prevent others from doing certain things such as copying and plagiarising the copyright owner’s works without the permissions from the copyright owner.

Automatic Protection

Copyright in the works is automatic from the time it is first recorded, written down, painted or drawn, filmed or taped.

No Registration

There is no system of registration for copyright protection in Australia.

Copyright Notices

Some copyright owners use the symbol © or the words "Copyright” or “Copyright reserved” to inform people of their rights in that work.

Or they may adopt a Copyright Notice. A Copyright Notice typically would include the © symbol, the name of the creator and the year the work was created.

Term of Copyright

Generally, copyright lasts for 70 years after the death of the creator, or 70 years from the end of the year the material was first made public.

Assignment and Licensing

Copyright gives the owner exclusive rights to that particular work. However, a copyright owner can choose to either assign their IP right to another person or license others to, for example, copy, publish or broadcast the owner’s work.

A Licence Agreement would normally be entered into to formalise the terms and conditions of such use.

It is also possible to “gift” copyrighted material to another through a Will.

Design Rights

If you are involved in designing a physical product, eg. a chair for commercial production which contains certain artwork, it will likely be necessary to “register” your design – copyright alone would most likely not give you full IP protection.  

Permission and Copying

Generally, copyright law operates to prevent people from copying or reproducing other peoples’ creations in any material form, without first obtaining their consent.

However, the Act allows for a number of situations (“exceptions”) where copyrighted material can be used without the need to obtain the copyright owner’s permission. For example, the use of copyrighted material for research or educational purposes, provided the use is fair.

Moral Rights

Individual creators of material also have what is known as “moral rights” (irrespective of whether copyright is also attached to the material).

These include the:

  • right to be attributed as the creator of the work;
  • right to take action if their work is falsely attributed as being someone else’s work;
  • right to take action of their work is altered in a way that is detrimental to their reputation.

What are Trademarks ?

A trademark is a way of identifying a particular good, service or business. When one talks about a “brand” this is typically a reference to a trademark. Trademarks consist of:

  • Letters
  • Words
  • Phrases
  • Numbers
  • Symbols
  • Designs
  • Pictures
  • Combination of words, phrases, symbols or designs
  • Sounds
  • Scents
  • Distinct shapes
  • Logos
  • Aspects of packaging

They help to identify and distinguish the goods or services provided by one person from those of another. For example, a “distinctive shape” can be registered as a trademark, such as the “Coca-Cola" glass bottle.

Registering a business name, company name or domain name is not the same as registering a trademark.

In Australia, trademarks are legislated through the Trade Marks Act 1995 (Cth). In order to properly protect your IP rights in say a brand it is best to register a trademark. You do not have to register a trademark to use it, but registration offers much greater protection. Unregistered trademarks are protected by the common law (such as the law of passing off). However, common law rights can be more difficult to prove and enforce.

Once registered, the owner has a legally enforceable and exclusive right to that trademark. Such rights also enable the trademark owner to licence its use. For example, a Franchisor may licence its Franchisees to use the Franchisor’s trademark in promotion of the franchised business.

Requirements for Registration

In order to be registered, the mark must also meet certain requirements as set out in the Trade Marks Act 1995 (Cth). For example:

  • it must be distinctive;
  • not substantially identical or deceptively similar to another mark;
  • it must not contain certain restricted words or images.

Trademark Searching

We conduct preliminary searches before filing any application for trademark registration to ensure that marks you are intending to register are not already owned by others.

Without conducting appropriate searching there is a risk of infringing a third party’s intellectual property rights, which could result in an adverse legal outcome for you.

Advantages of Registering a Trademark

 In general, the advantages of registration can include:

  • the owner gains proprietary rights in the mark;
  • preventing the registration by someone else of an identical or deceptively similar mark;
  • enabling others to identify your mark in searches so they know in advance that your mark is registered and that you have exclusive rights to the mark;
  • adding value to your business, especially where the brand generates goodwill;
  • the ability to licence or franchise your rights in the mark in return for a fee;
  • placing you in a stronger position to defend against any infringement against your mark.

Stages of Registration

 Trademark registration proceeds along 4 stages:

  • Application/filing stage

Application must be made in the prescribed form. This will involve providing various information including the applicant’s name, address, goods/service description, class type, etc.

  • Examination stage

Applications are examined in order to determine whether the application is as prescribed and whether there are any grounds of rejection. If there is a problem on examination the Registrar may issue an Adverse Report. Usually the applicant is given an opportunity to amend the application for re-examination. The examination stage could last around 3-4 months.

  • Advertisement stage

If an application is accepted, it will be advertised in the Australian Official Journal of Trade Marks.

There is an opposition period of 3 months commencing from the date advertisement whereby others can oppose the application. A ground for opposition could, for example, that the mark is likely to deceive or cause or confusion because of it is similar to another mark already in use.

  • Registration stage

If there are no grounds for opposition the application can then be registered. From the time of application, it can take around 6 to 7 months for the mark to register, depending on issues in the examination stage or opposition.

Once registered, the trademark owner can use the ® symbol beside the trademark protected word or logo.

A trademark is usually registered for 10 years. After which the trademark can be re-registered for further periods of 10 years each.

Trademark Non-Use

Even though a trade mark owner may have registered a mark in Australia, registration on its own is not sufficient to ensure the mark remains the exclusive property of that owner.

When an application to register a mark in Australia is lodged there is a presumption at the time of application that the applicant will act in good faith with the intention that the mark (once registered) will be used in Australia by that applicant in relation to the class of goods/services associated with the mark.

If you are the registered owner of a mark in Australia and you either never intended to use the mark when you applied for it or you have not continuously used the mark for the prescribed period under the Act in relation to the goods/services associated with the mark, then you risk losing the right to the mark on the basis of non-use. You can read more about trademark non-use here.

International Trademarks

If you operate a Business in Australia and have registered one or more trade marks for protection in Australia, it is important to be aware that such protection does not automatically protect your trade mark internationally.

Trade marks are enforceable in the jurisdiction where protection has been applied for, granted and current.

If you export goods, trade mark registration in Australia alone will be insufficient to protect your brand internationally.

If you already hold an Australian trade mark, there are two (2) avenues you can follow if you want to extend trade mark protection overseas:

  • File an application directly in each country you require trade mark protection; or
  • If the country you require protection is a party to the Madrid Protocol, file a single application through IP Australia nominating those Madrid Protocol countries in which protection is required.

Whether it is better to apply directly to a country of interest instead of seeking international registration under the Madrid Protocol will depend on individual circumstances.

For further information about international trademarking, learn more.

What Are Trade Secrets ?

Trade secrets (sometimes referred to as know-how) and other confidential or proprietary information have an important role particularly in Business.

Trade secrets are typically broadly defined and may include:

  • sales methods;
  • customer databases;
  • advertising strategies;
  • manufacturing processes;
  • etc

An example of trade secret is the the combination of herbs and spices used in Kentucky Fried Chicken.

There is no formal registration process in respect of trade secrets.

As know-how is important to a Business, it follows that appropriate mechanisms should be adopted by that Business to protect its trade secrets.

Contact Greyson Legal for details on how we can help you protect your trade secrets.

What is a Design ?

A design can be described as the way a particular product looks - its visual appearance. For example, it’s shape, or the way a product is packaged.

“Appearance” of a product should not be confused with the product itself or its “function”. The product’s functionality or the way in which it operates is a separate intellectual property (IP) right which can be protected through patents.

It can be the case that a particular product/invention needs both design protection and patent protection.

Given designs do play an important part in a product’s branding, it is important to protect that IP right.

In Australia, IP rights in designs can be protected through a registration and certification process governed by the Designs Act 2013 (Cth).

For more information about designs click here.

Alternative Dispute Resolution

Alternative Dispute Resolution (ADR) are those processes adopted to seek a resolution of a dispute without the need for formal litigation and Court orders.

As a first step, where a dispute does arise the parties should try and resolve the matter between themselves. Lawyers can assist with negotiations where the parties are finding it difficult to communicate directly with each other.

In addition, the parties may consider utilising an ADR process. There are a few different processes - we comment on two below:

  • Mediation 
  • Arbitration.

Mediation

The services of a Mediator can be used to assist the parties in dispute to try and reach a solution to the issue in dispute. Mediation is a far quicker and cheaper process than commencing formal legal proceedings in a Court of law.

A Mediator is a neutral third party whose role is help those in dispute to negotiate a mutually acceptable agreement. A key point of difference between mediation and Court:

  • in a mediation the parties to the dispute aim to arrive at a solution they both agree upon;
  • whereas, this is quite different to the dispute being heard before a Court where the judge makes the final decision. 

If a mediation process is adopted, the parties will typically enter into a preliminary Mediation Agreement setting out the terms and conditions related to the mediation, which will also include provisions around confidentiality. An advantage of using mediation is that the issues raised and talked about are confidential and cannot later be used by a party to the dispute in any subsequent litigation, should that arise. The mediation allows the parties to discuss the issues more freely with a view to encouraging mutual agreement and resolution. Also, because the mediation is a private affair between the parties, the issues do not become public. Whereas if the dispute is litigated and heard in Court before a judge, the Court hearing could be open to the public. 

Where the mediation is successful, the parties typically then enter into a Settlement Agreement which sets out the matters that have been agreed upon. The Settlement Agreement then becomes binding on the parties to it.  

But, not all mediations are successful and the circumstances in each case need to be weighed up to determine if mediation is the best approach.

If you find that you are in a dispute regarding IP rights and:

  • need to know what your rights and obligations are; or
  • need help trying to resolve the dispute; or
  • would like more information about mediation; or
  • require assistance putting you in contact with a mediator with experience in intellectual property,

you are welcome to contact Greyson Legal and we will endeavour to provide you with appropriate guidance.

Arbitration

Arbitration is an ADR process which differentiates itself from mediation on the basis that:

  • the outcome of the mediation is determined by the parties;
  • whereas in Arbitration, there is an independent third party (an Arbitrator) who makes a determination.

Arbitration may be adopted where:

  • mediation has been unsuccessful;
  • the parties want to maintain confidentiality (as opposed to a hearing in open Court);
  • the issue are highly technical and they need a specialist in the subject matter;
  • the parties want a final binding decision made for them;
  • the parties also wish to minimise the costs that would normally be associated with litigation and a Court hearing.

For more information about Arbitration contact Greyson Legal

 For expert advice and assistance in relation to your intellectual property requirements contact Greyson Legal 

Contact

Tel: 1300 667 362 | Fax: 07 3910 1102
E: info@greysonlegal.com.au
Member Queensland Law Society