For many businesses, their most valuable asset is their intellectual property. Ensuring that you are properly protected, as well as being fully across your rights and limitations regarding your intellectual property is vital to maximizing the value of these assets.
At Atkinson Vinden we largely advise our clients regarding their copyright and trade mark issues.
The Copyright Act 1968 Cth (the Act) provides protection to a number of forms of material. Unlike most other forms of intellectual property there is no need to register your copyright works, as long as the material is of a type covered by the Act, protection occurs automatically on creation.
While a lack of registration makes it simpler for you to acquire copyright protection in your works, it does come with some difficulties, particularly in proving your rights. As such it is always important to keep thorough records of the date and time of creation of any works. It is equally important to be careful when posting your works online, as the terms and conditions of many websites grant the website owner broad rights over your works.
One common misconception regarding copyright is that it protects both an idea, and the implementation of that idea. In actuality this is not the case and only the implementation of an idea is protected. The simplest way to explain this is by using an example:
- You have an idea to photograph the Sydney Harbour Bridge;
- You then take a photograph of the Sydney Harbour Bridge and post it online.
Subject to the terms of the relevant website, anyone who takes a copy of your photo online is breaching your copyright, as that photo was the implementation of your idea. Conversely, anyone who is inspired by your photo to take their own photo of the Sydney Harbour Bridge is not breaching your copyright, as they are simply copying an idea.
Another area that is often overlooked is the issue of moral rights. Broadly these are rights of attribution of the works and to the integrity of the work. These rights are owned by the individual who created the copyright material (being a natural person), and cannot be assigned. They can, however, be waived, so it is important, particularly in an employer/employee relationship, that whenever you are engaging someone to create works for you, you specifically have them waive their moral rights.
Unlike copyright, a trade mark only has the protection of the Trade Marks Act 1995 Cth if it is registered.
The process of registration takes a number of months and requires that the applicant identify certain criteria of goods and/or services in relation to which the trade mark will be registered. Once registered, your protection extends to those or similar goods/services, and only to the degree that any competing mark is identical or similar to yours.
There are a number of potential issues which can result in a trade mark application failing. The main two in our experience are as follows:
- The trade mark is too similar to an existing mark in relation to the same or similar goods and services.
- This obviously stops entities from seeking to register trade marks that are similar to their competitors;
- The trade mark is too generic, and uses words which others in the industry would have a reasonable expectation of being able to use in the ordinary course of business. For example, a supermarket would not be able to register the word “food” as all supermarkets have a reasonable expectation to be able to use that word in relation to their business.
As such, prior to attempting registration, and as a step in developing your trade mark, it is important to do a search of the trade mark registry, to hopefully minimize the possibility that your application will be refused due to conflict with an existing trade mark. Failure to do so can result in forfeiture of application fees, and having to expend further money in developing alternative trade marks and/or marketing campaigns.
It is important to note that registration is not the be all and end all of protection in this area. Even if your trade mark is not registered it is possible that you may be able to bring an action for misleading and deceptive conduct under the Australian Consumer Law in relation to someone seeking to copy you.