Welcome to our detailed guide on intellectual property law in Australia. Our guide explains what intellectual property is, the different types of intellectual property and recommendations on how to exploit intellectual property to benefit your business, as well as avoid intellectual property infringement.
Author: Farrah Motley, a Solicitor of the Supreme Court of Queensland.
What is intellectual property?
Intellectual property is the property of your mind. It is created when your ideas are transformed into a format that is recognised by law.
Intellectual property can include symbols, colours, numbers, letters (and a combination of them), sounds, literary and artistic works, inventions, names and images used in the context of trade and commerce.
Why does the law recognise intellectual property?
There is a good reason for the recognition of legally enforceable rights in intellectual property. Primarily, the law provides owners of intellectual property with an exclusive right to exploit their intellectual property for commercial gain. Because of this, would-be owners of intellectual property have an incentive to be innovative and push technology and society forward.
On the other hand, the unauthorised exploitation of intellectual property can cause economic and other kinds of harm.
What are the different types of intellectual property?
An overview of the different types of intellectual property
Trade marks are often thought of as a business' brand. A brand is much broader concept than a trade mark. You can read more about brands here.
A trade mark can be a symbol, phrase, number, image, letter, logo, aspect of packaging, word (in plain or stylised text) or any combination of them.
Trade marks can be registered or unregistered. If a trade mark is registered, the owner has the benefit of additional protections provided by the Trade Marks Act 1995 (Cth), as well as Common Law rights. If a trade mark is unregistered, the owner only has the protection given by the Common Law, but not the Trade Marks Act 1995 (Cth).
It is also important to know that in Australia, protection over a unique trade mark applies to the person who is first to use the trade mark, not the person who is first to register. However, issues can arise where a person is not first to use a trade mark, but nevertheless seeks to register it. If the trade mark progresses through the application process, it will enter an "objection period". If the person who is first to use the trade mark does not object to the registration within the objection period, that person may lose the right to use their trade mark.
There are many misconceptions when it comes to copyright. Copyright is an intellectual property right that is granted to the owner (or author) upon its creation. In Australia, copyright does not need to be registered to have the benefit of protection under the Copyright Act 1968 (Cth).
Copyright applies to the original expression of artistic and literary works. This includes things like written text, music (both the written notes and the sound itself), drawings, photographs, images, paintings, sketches and 3D recreations of them.
Unlike trade marks, patents, plant breeders rights and design rights, copyright is regulated by the Department of Communications and the Arts.
An invention needs to be registered as a patent before it is protected by the Patents Act 1990 (Cth).
It is important to know that if the details of an invention become public knowledge, you may lose the right to patent the invention. It is therefore vitally important to make sure that if you are going to tell someone about your invention, you get them to sign an NDA before you do so.
Patents is a very complex area of intellectual property law.
Here's a fun fact - Einstein used to be a clerk in a patent office!
Plant breeders rights
Plant breeders rights is a form of intellectual property right granted to developers of new plant varieties.
Plant breeders rights must be registered to have the protection of the Plant Breeders Rights Act 1994 (Cth).
Circuit layout rights
Just like copyright, circuit layout rights in Australia are handled by the Department of Communications and the Arts.
Circuit layout rights are defined in the Circuit Layouts Act 1989 (Cth) to mean:
"...a representation, fixed in any material form, of the three‑dimensional location of the active and passive elements and interconnections making up an integrated circuit"
A design right protects the overall appearance of unique products. The Designs Act 2003 (Cth) defines a design as:
"...in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product."
The Designs Act 2003 (Cth) describes a product as including:
a thing that is manufactured or hand made
a component part of a complex product may be a product, if it is made separately from the product
a kit which becomes a product when it is assembled
a thing that has one or more indefinite dimensions is a product, but only if any one or more of the following applies to the thing:
(a) a cross‑section taken across any indefinite dimension is fixed or varies according to a regular pattern;
(b) all the dimensions remain in proportion;
(c) the cross‑sectional shape remains the same throughout, whether or not the dimensions of that shape vary according to a ratio or series of ratios;
(d) it has a pattern or ornamentation that repeats itself.
The Designs Act 2003 (Cth) describes visual feature as including the shape, configuration, pattern and ornamentation of the product. A visual feature does not need to be functional, but can be.
However, a product's feel, the materials used, an indefinite dimension and a repeat of a pattern are not considered to be visual features for the purpose of registering a design.
Designs must be registered to have the benefit of protection under the Designs Act 2003 (Cth).
How to exploit intellectual property to benefit your business
How to effectively use trade marks
Registering a trade mark doesn't come cheap. If you're running a small to medium-sized business, you may want to test your new brand before taking the plunge and registering it. Remember, provided someone else doesn't try and register the same trade mark (and you either miss the objection period or don't object), the first person to use that mark has priority for registration purposes.
How to effectively use copyright
Don't give away your copyright before you've even created it. Instead, use copyright as leverage to get the most out of your business deals.
To make sure you retain ownership of your copyright or, at least, maintain control, you need an properly worded licence agreement or intellectual property clause in your agreement.
How to effectively use patents
The key to patentable inventions is to shh and keep them secret. Unlike a trade mark, which you might want to test for commercial viability before registering, you cannot "test" whether it is commercially viable to register a patent. You either choose to register the invention as a patent, or you don't.
However, if you really do want to test an invention first, consider conducting some market research for your new invention using a bulletproof NDA.
How to effectively use plant breeders rights
If you're just fooling around experimenting, plant breeders rights may not be for you. If, however, you are looking to seriously capitalise on your new variety of plant species, you should consider registering. After all, you will lose the right to register if someone independently (yes, this has happened before) develops a plant variety that is indistinguishable from yours.
How to effectively use circuit layout rights
How to effectively use design rights
How to avoid infringing intellectual property rights
Do your due diligence
The key to any right over intellectual property is uniqueness, innovation and newness. If it's not new, not only can you not claim rights over it, you may be infringing someone else's rights.
For this reason, it's vital to do your homework. Before you get amongst the weeds or hire a lawyer to register, communicate or enforce your intellectual property:
do some competitor research
do a Google search
do not assume your 'creation' is new
Understand how ownership of intellectual property works
All intellectual property starts life out with one owner. Some examples include:
an employee owning the copyright in documents prepared by that employee;
a photographer owning a photograph of a client; and
a business using a new brand as part of their business.
But intellectual property is property. That means it can be bought, sold and licensed just like any physical property can. This means that the original owner of intellectual property may not continue to be the owner.
Taking those three examples I gave above, the original owners may lose their sole ownership over their intellectual property in the following ways:
an employee transferring ownership of the copyright in documents prepared by that employee to his or her employer through their employment agreement;
a photographer licensing the use of a photograph to a client who has paid for those photographs; and
a business using a new brand as part of their business, but selling that brand (or trade mark) to another company as part of goodwill under a business sale agreement.
Get consent from the owner
Getting the consent of the owner of the intellectual property in the form of an appropriately worded intellectual property license is your best protection against an infringement claim.
However, if you are already making use of intellectual property without the owner's consent, be careful not to bring it to their attention. If your business has derived significant commercial benefit from the misuse of someone else's intellectual property, you could be in for a rough ride.
Know who you are dealing with
Some brand owners will fight tooth and nail just to make a point to the world that they are the rightful owner and no one else can use their intellectual property. Think of heavy weights such as Facebook, Google, Microsoft, IKEA and Apple.
Sophisticated, large business can quickly and easily become aware when someone is misusing their intellectual property. If they choose to enforce their rights, they have some serious clout and resources to do this.
Choose the path less public
If you are going to choose to infringe someone's intellectual property rights (which is not advised!), you may want to consider your avenues of communication. In a closed setting, with a very limited audience and minimal opportunity for exposure, you might get away with it.
But if you flout your bad behaviour in a public, publicly accessible forum, you're asking for trouble. Websites and social media present an easy opportunity for intellectual property owners to find instances where their intellectual property is being misused. You're also giving them the evidence to prove it.
Further, there is a common misconception that just because information, images, videos and other data is easily accessible on the internet, that it is freely available to use. This is incorrect and can land you in hot water.
Other intellectual property law resources
There is an abundance of information on the internet about the different types of intellectual property and the laws that apply to them. You can refer to the following resources for additional information:
Want to read more? Check out The Guide to Payment Terms.
Author: Farrah Motley | Legal Principal
PROSPER LAW - A Commercial Law Firm for Businesses
M: 0422 721 121