Open for Business – Intellectual Property in Australia

June, 2014

An increasing number of foreign companies view Australia as a place to do business.  In particular, the Australian retail sector is experiencing an avalanche of international brand launches including H&M, Uniqlo and Williams-Sonoma.

IP protection and enforcement strategies are a key consideration when planning for expansion into a new market.  We provide a brief summary below of the main IP laws in Australia.  We can provide you with specific advice depending on your circumstances, and assist you in maximising the value of your investment in Australia.

Trade Marks

Trade mark law in Australia is influenced by legislation and common law.  The Trade Marks Act 1995 (Cth) provides the legislative framework for registered trade marks and trade mark applications.  Registered trade marks are protected for renewable periods of 10 years, although there must be use of the mark in the jurisdiction to avoid removal for non-use.  Recent changes to the legislation have strengthened the value of registered trade marks through the introduction of additional damages to be awarded in trade mark infringement proceedings.

Australia is a member of the Madrid Protocol and the Paris Convention.  Foreign persons and companies with international trade mark portfolios can take advantage of the deadlines incorporated in these international systems to file new trade mark applications in Australia.

Under common law, unregistered trade marks may be protected by the action of passing off.  However, it will be important for the mark to have a reputation in Australia.  Similarly, misleading and deceptive conduction actions may be brought under the Australian Consumer Law provisions of the Competition and Consumer Act 2010 (Cth).  Again, it will be important for the mark to have an associated reputation with Australian consumers.

If you are looking to enter the Australian market, or intend to do so in the future, we strongly recommend filing Australian trade mark applications for your brand as soon as possible.

Designs

Designs may be registered through the Designs Act 2003 (Cth).  Design protection is available for new and distinctive features of shape, configuration, pattern or ornamentation.  Examination and certification of the design is required before an owner is able to enforce its rights against unauthorised third parties.  Designs are registered for a maximum period of 10 years.

International companies can take advantage of the Paris Convention to file applications in Australia within certain deadlines.  Note that the law of design/copyright overlap is complex in Australia.  This may become an important consideration when looking to protect and enforce design rights in the jurisdiction.

We can assist you with design protection strategies depending on your circumstances.

Patents

The Patents Act 1990 (Cth) regulates two forms of patent protection in Australia.  The most common is the Standard Patent that, once examined and granted, protects novel and inventive products or processes for a period of 20 years (or 25 years for pharmaceuticals) from the filing of the complete application.  Alternatively, the Innovation Patent protects novel and innovative products or processes for a period of 8 years from the filing date.   The Innovation Patent is generally selected where the product has a short commercial life, or offers a small advance over existing technology.

Australia is a member of both the Patent Cooperation Treaty, and the Paris Convention.  International companies can take advantage of these systems to register and enforce patent rights in Australia.

Mills Oakley Lawyers can advise you on patent protection and enforcement issues in Australia to maximise the value of your investment in the jurisdiction.

Copyright

In Australia, copyright protection is automatically available to original literary, artistic, dramatic and musical works, sound recordings, films or broadcasts.  No formal registration of copyright is required.

The Copyright Act 1968 (Cth) regulates copyright law, and protection is available for the life of the author plus 70 years, or 70 after first publication where the publication occurs after the death of the author.  Moral rights are also available under Australian copyright law.

Australia is a member of the Berne Convention.  Therefore, certain minimum rights of protection are available to works owned by persons or entities in other jurisdictions.

The remedies for copyright infringement include damages, an account of profits and additional damages.  Copyright is therefore an important IP right for any brand entering the Australian market, and we can provide you with any required advice.

Plant Breeders Rights

Australia is a signatory to the International Convention for the Protection of New Plant Varieties of Plants.  Protection for new distinct, uniform and stable plant varieties is available via the Plant Breeder’s Rights Act 1994 (Cth).

Mills Oakley lawyers have particular experience in plant industry matters and can advise you on managing your PBR portfolio in Australia.

Other

Confidential information, trade secrets and know-how can be protected through common law and breach of contract actions in Australia.  As a general rule, we advise our clients to ensure written agreements are in place with any recipient before such information is disclosed.

Next Steps

There are a variety of IP protection and enforcement strategies that can be pursued under Australian law.  Mills Oakley Lawyers can provide IP advice to companies and investors looking to expand into the Australian market, and assist them to maximise the value of their investment.

Contact Mills Oakley

If you are looking to invest in Australia and have any Australian IP queries, please feel free to contact:

stuart-gibson

Stuart Gibson | Partner
T: +61 3 9605 0092
E: sgibson@millsoakley.com.au

 

mick-coleman-mills-oakley

Mick Coleman | Partner
T: +61 3 9605 0060
E: mcoleman@millsoakley.com.au

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