What is copyright?

Copyright is a form of intellectual property which is essentially a bundle of rights, relating to the product of a person’s skill or labour which gives the owner the right to copy, publish, communicate (e.g. broadcast or make available online) and publicly perform the copyright material. Practically speaking, you can have copyright in the text of a book (known as a literary work). This gives you the exclusive rights to reproduce the work in a material form, publish it, perform it in pubic, post it online and make an adaption (or translation of it).

However, copyright is an intangible right – it has no physical substance. It does not relate to the right to physically own the book itself which is something separate.

What does it take to own copyright in a work?

The work (that is written work or artwork) must be:

1. in material form (written down or recorded);
2. be sufficiently original (not copied!); and
3. the creator must be a qualified person (have a connection with Australia or a country Australia has a copyright treaty with).

When is okay to take something from the internet and use it on social media or in your own work?

This may come as surprise, but almost never. The default rule is that you need to obtain the copyright owner’s permission. There is vast amount of unauthorised copying on the internet (e.g. sharing photos on Facebook/ Pinterest/ Instagram) however unless the work is in the public domain (not covered by copyright), you may not have permission to copy it, even if you credit there the author.

What does copyright cover?

Copyright covers literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, sound recordings, computer software, and architecture.

How long does copyright last?

In Australia, the duration copyright depends on the type of material however generally, copyright lasts for 70 years after the death of the author. It used to be 50 years from the death of the author. There are separate rules depending on the type of work in question so this needs to be checked carefully.

How do you register or copyright you work to protect it?

In Australia, copyright protection is automatic provided that the creator and the work meet the criteria set out above. So there no need to register the work in Australia. However, registration is available in some other countries particularly in the United States.

How do you protect you work if someone is copying it?

You do need to be vigilant about protecting your copyright. If someone copies your work without your permission, it is recommended you seek legal advice. Call us to discuss you matter. For more information, CLICK HERE to find out about Intellectual Property (IP) Litigation.

How much of a copyright work can you copy for free?

Many people think you can use a certain percentage of a copyright work without it being an infringement. This is not true. Generally, you cannot use copyright material without the copyright owner’s permission.

What are the tests for copyright infringement?

There is no such thing as the ten percent rule or any other percentage for that matter. Just because you change a copyright work by ten percent or by three points won’t mean you have not infringed someone else’s work. The real test under the law is whether you have taken a “substantial part” of it without the owner’s consent. Is the part taken a recognisable, essential part of the whole original work? Over the years, Australian courts have interpreted the test to be one of quality over quantity. This can be a hard test to apply and sometimes even the courts get it wrong the first time and the case has a different result on appeal.

If I am copied shall I contact the other side?

It’s important to get legal advice if you think your copyright has been infringed before making any claims that others.

If you have no legal merits for the claim, then it can be characterised as a “groundless threat” and you could be sued. The laws are there to prevent the other side suffering from damage for example a false claim is made and they make changes to their business that loses them money.

What are the exemptions to infringement of copyright law?

The Copyright Act 1968 (Cth) includes “fair dealing” provisions which allows the copy a reasonable proportion of the copyright material for research or study, criticism or review parody or satire and reporting news and some other specific purposes. The defences are very specific so it is best to get legal advice before seeking to rely on them.

What compensation can you get if someone copies your work?

The remedies available for an infringement of copyright are an injunction (to stop someone from using the copyright material) and either damages or an account of profits (both being a sum of money). The court may also award additional damages as it considers appropriate in the circumstances. For example, if you warn a person that they are infringing your copyright and they keep doing it or if they copy your work on a large scale. Alternatively, you may settle the matter out of court with the other party which basically happens if your lawyer negotiates a resolution to a dispute without having to go through the court process.

What can lawyers do?

Copyright law sounds simple in theory: the basic premise of it is do not copy. However, given the various legal tests for what is protected by copyright law, who owns it and what can amount to an infringement, it is important to seek legal advice early.

If you have any further questions about this topic, please give us a call on Tel: 03 9527 1334 or email us info@sharongivoni.com.au

What is counterfeiting?

Anyone who owns a valuable brand would understand how damaging it can be if someone else copies your goods. Counterfeiting can apply to the fraudulent manufacture of all sorts of consumer goods ranging from CDs, designer dresses and even airplane parts.

Is counterfeiting illegal in Australia?

It is illegal to falsely apply a registered trade mark to goods or falsify a registered trade mark. Manufacturing or dealing in counterfeit or pirated copies of goods is also be an offence under Australian Law.

How does counterfeiting apply in the online world?

There is an increasing number of online shopping sites, making it more difficult to detect counterfeit products. The Australian Customs and Border Protection Service (Australian Customs) estimated that in 2013, the value of counterfeit products in Australia reached an all-time high of approximately $48.5 million as more than 700,000 counterfeit products being seized.

Is counterfeiting the same as parallel importation?

Counterfeiting and parallel importation are two separate things. Counterfeiting involves someone who produces fake or unauthorised replicas. Counterfeiting is illegal.

Parallel importation, on the other hand, occurs where a genuine product is imported from another country. Goods imported by means of parallel importation may be illegal if the labelling or packaging is not compliant with Australian laws especially when the goods have been formulated or packaged from a country outside Australia.

What can you do to stop counterfeiting?

In Australia, there is a procedure that allows you to notify Australian Customs in advance to try and prevent the importation of counterfeit products. For instance, you can lodge a formal document called a Notice of Objection which lets Australian Customs know that you object to the importation of the goods bearing the registered trade marks or copyright materials.

How can Australian Customs help?

Once a Notice of Objection has been lodged, Australian Customs may seize imported goods which may bear a false trade mark or infringe copyright materials. There are other steps involved after this which will enable you to take action.

How can you stop someone from counterfeiting online?

There are a number of options available to stop online counterfeiting including following a formal complaints process offered by the online retailer and sending a Letter of Demand. The solution will be different in each case.

If someone copies a similar trade mark to yours, can that still be a counterfeit?

Some counterfeiters try to be clever by applying a similar trade mark to yours rather than copying the exact same thing. If this happens, the product may still be counterfeit product but legal assessment is warranted.

What happens if counterfeit goods are seized?

If Australian Customs locates or seizes counterfeit products, there is a 10-day period in which the importer / infringer can request their release. The trade mark or copyright owner who has filed the Notice of Objection has an opportunity then to object to the release of these goods. At this point, it is best to seek legal advice especially because the importer can make a claim for release of seized goods within ten working days. The importer can also agree to forfeit the goods, which may happen when infringement is obvious.

What are the punishments for counterfeiting?

Counterfeiting is a criminal offence in Australia and can involve imprisonment.

There are hefty financial penalties that can apply and they can vary depending on whether the matter involves copyright or trade marks and whether the importer is a corporation or an individual. Counterfeit goods can also be seized by Australian Customs.

Are there any defences to counterfeiting?

No. Australian law in this regard is generally unforgiving.

Are counterfeiting and knock offs one and the same?

Simply put, if a good is a copy and not genuine, this is against the law. Ray-Ban and Ugg Boots are amongst the most counterfeited goods in the world. If your goods are at risk of being counterfeited and are subject to being copied, do not take the risk and employ legal strategies well in advance.

What do Customs do with the forfeited goods?

The two options are either that the goods be released to the Importer or just forfeited, in which case the government gets them. Australian Customs can get rid of the goods in several ways. Sometimes they destroy them and sometimes they are distributed to a charity.

What can we law firms do for you?

Generally, law firms can assist with coming up with a good strategy to prevent counterfeited products from entering the Australian marketplace. We can draft and file a Notice of Objection, send a Letter of Demand to the counterfeiter and lodge complaints with the online retailers.

Lawyers can also deal with Australian Customs or respond to them on your behalf and liaise with the Australian Federal Police who has jurisdiction over enforcement of intellectual property crime.

If you have any further questions about this topic, please give us a call on Tel: 03 9527 1334 or email us info@sharongivoni.com.au

What is defamation?

Put simply, defamation laws protect the reputation of individuals. It applies to any act, whether it be spoken, written or even publishing images, that harms a person or could harm them by spoiling their reputation.

What is slander?

The terms libel or slander are largely outdated as defamation laws remove the distinction between them. Historically, libel refers to the publication of defamatory material whereas slander refers to the spoken word.

What if someone has defamed me on social media?

Defamation can apply to every activity whether it is something that is said in public, on television, in printed material or on social media. However, this list is not exhaustive.

Can someone defame me by quoting from another source?

You may be surprised to know that the answer is yes. If someone repeats or relays a defamatory statement that someone else has said about you, that can amount to defamation. A magazine publisher, for example, could publish a defamatory statement from an interview leading to both the magazine publisher and the interviewer being sued for defamation.

Do you have to prove harm to win a case?

No. The test turns on general community standards. If, based on these standards it could be said that the material discredits a person’s reputation, defamation could arise.

Can pictures be defamatory?

Anything that implies something negative about someone else’s character can amount to defamation. This includes pictures, photographs and cartoons. Each case turns on its facts and the context in which a statement was made or an image was published. For example, if someone is photographed in an unsavoury and inappropriate context and it is published with a caption that implies something false, this can be defamatory. Cartoons can also be defamatory if the overall message is disparaging when the reader views it.

If someone takes a photograph of you without your permission is that defamatory?

Again, the answer depends on the context in which it is published. “Unauthorised” photography has not been generally prohibited, however, there are rules prohibiting voyeurism and obscenity such as up skirting and down blousing. To be defamatory, the photograph needs to be published in a context that harms their reputation. Notably, not all derogatory photographs will amount to defamation, particularly if they are not false.

If defamatory publications are made on social media what are the fines?

Australian cases have demonstrated that judges take a very serious approach to defamatory publications made on social media, particularly because they can become viral very quickly (a concept that has been coined the grapevine effect). A case on point occurred in 2014, when a teacher in New South Wales made legal history after a former student was ordered to pay $105,000 for defaming her on Twitter and Facebook. There is no black and white rule as to what sum a court will award.

Is intention relevant?

Intention does not have to be necessarily shown to prove defamation. The aim of defamation law is to protect the reputation of individuals, just because a person didn’t intend to defame someone, is not conclusive. However, if the defamatory conduct clearly refers to a person and discredits that person’s character or reputation, defamation may arise.

I have heard truth is a defence to defamation? Is this true?

If the person accused of defamation can prove that the imputations made by the defamatory material are substantially true, this can be a defence. This is because defamation arises when false statements of fact have been made. Truthful statements that harm another’s reputation generally won’t be defamatory (but other legal penalties may apply).

What if the defamation occurred some time ago? Can I still take legal action?

The answer depends on when the information was published as well as other factors. However, you generally have around 12 months from the time the information was published. Nevertheless, you should seek legal advice as it depends on your individual circumstances.

Who can sue for defamation?

The general rule is that individuals and businesses with under 10 employees can sue, whilst companies with 10 or more employees cannot. Further, different rules apply to not-for-profit organisations.

Can an administrator of a webpage be liable for defamation?

The law recognises that the administrator of a website can be liable for defamatory content published once they have been put on notice and have failed to remove the material within a reasonable time frame.

What should you do if you think you have been defamed?

The most important thing is to collect evidence. However, what you should not do is share your grievances on the internet as this can jeopardise your case and potentially lead to legal action being taken against you.

How can lawyers help you?

Lawyers can consider your situation and advise you on the merits of your case. One of the first steps after this, if you have a case, is to issue a Concerns Notice. This is a document which sets out the defamatory statements and other information. It is then sent to the other party who is 28 days to respond and make amends and settle the matter.

When do you take legal proceedings?

If the other side do not adequately respond to the Concerns Notice, you can take legal proceedings in a court.

What compensation can the court give?

If defamation is proven and there is no defence available, the judge decides the question of how much money to award (this is referred to legally as damages). Matters can also settle out of court if negotiations take place. The amount awarded, as said above, is not fixed. It will depend on how much harm has been done. You can get damages for loss of reputation, shame or hurt feelings (compensatory damages). You can even sometimes get damage for loss of business (special damages). Finally, if the defamation is shown to be deliberate and made with malice, a court can award additional damages to the person who suffered (aggravated damages).

If I want legal help what should I do?

As stated above, defamatory material can be in writing, by gesture or through publishing images. If you want to take legal action, you need to give us the exact words spoken or written, gestures or images used and where possible take records (screen captures of online publications and notes of what was said verbally). Text messages can also be defamatory if they have been circulated, so they should be recorded as well.

If you have any further questions about this topic, please give us a call on Tel: 03 9527 1334 or email us info@sharongivoni.com.au

What is design registration and what is it designed to protect?

Businesses come up with new products all the time. However, if the article is particularly unique in its overall appearance you might want to register the article as a design to protect it from unscrupulous copying in the marketplace. This includes aspects of shape, pattern, ornamentation and configuration. Design registration (once it is certified) gives traders a monopoly over the look of their design for a period of up to ten years.

When should you register your design?

Before you release it publicly (meaning before posting images of it online or displaying and selling it).

How do you keep your design secret?

It is critical that you keep you design a secret if you want to legally protect it. This can be challenging in the development stages where you want to disclose it to people for marketing, feedback and manufacturing purposes. This is where confidentiality agreements (also known as NDAs or non-disclosure agreements come into play. Our firm can draft watertight agreements for you.

Can you just download an NDA from the internet?

No. This needs to be avoided as it will not be tailored to your circumstances and therefore may not be effective. Moreover, this will usually infringe someone else’s copyright.

I have heard that there are two steps in the design registration process – what are they?

This is right. The first and most important step is applying to register the design as soon as you have it finalised in a form that you are happy with. It is advisable to use lawyers as it is an ethical process. The registration defines the scope of protection.

The second step is not always done but is necessary if you want to legally enforce your rights. It involves requesting that your design be examined and certified.

Can a design registration protect your idea?

No, only the appearance of a product. You can come with an idea for a dress with six panels or tamper free package. However, it is only the specific appearance of the product you register as a design that is protected. It does not protect the underlying idea.

Can ideas be protected at all?

There is no one area of law that does protect ideas or concepts as such. Sometimes however confidentiality agreements can assist where for example you come up with an idea and disclose it to someone to see if it is viable.

Can a design registration protect the function of your product?

Again, the answer is no. This is what patents are for – they protect inventions. You can however protect the look of an article that has functional properties. For example, take the example of the famous circular shape WEBER barbeque (Weber-Stephen Products Co. owns several design registrations for its barbeques). The appearance of the BBQ is protected by the design registration but not the functionality (that is the working of a device that cooks food by applying heat from below).

Is design registration easy?

While the process may appear to be straightforward as it involves supplying image and details of the design, it is very technical and therefore best to use a patent or trade mark attorney or IP lawyer.

How long does the registration process take?

Typically, IP Australia, the government body that administers design registrations in Australia take around 4 weeks to examine an application for a design registration to check that the formalities have been complied with. Sometimes, issues need to be dealt with before it can be registered. The certification process can take longer.

How long does design registration last?

A design registration lasts for 5 years from the time of the original application date. At the completion of the initial registration, the owner of the design can register the work for a further 5 years after which time it will lapse. Once the ten-year period has passed, anyone can use that particular design.

Who can apply to register a design?

The designer who created the design can apply for registration as an individual or company can apply if it owns the design. The application must be made in the prescribed form to IP Australia and contain the appropriate drawings or images of the design and meet certain formalities.

We can assist you with every step of this process from application to certification.

What does design registration protect?

Design registration protects your right to make, sell, hire or otherwise dispose of the design and prevent others from doing so without your prior consent.

What is the test for whether a design registration infringed?

If a design is substantially similar in overall impression to a registered design, this can amount to an infringement. IP Lawyers can help determine this based on the cases.

What can you do if someone copies your design?

If you suspect you designs have been copied, you should promptly seek legal advice.

The response may not involve court proceedings. Typically, the first step would be to send the offending party a Letter of Demand, basically a legal letter that asks the other side to stop the conduct and makes other demands, sometimes for money. In some cases, however where large scale copying is involved, issuing court proceedings may be required to protect you rights, even if the matter does not proceed to trial.

What are the risks if I don’t use a lawyer?

If you do not use a lawyer you take the risk of saying the wrong thing and this can be used against you later. There is also a legal prohibition on the making of unjustified threats including groundless threats to someone else that they have infringed your design.

What are the penalties for copying a design?

A court may impose several remedies for copying a design including:

• an injunction (stopping the infringement or copying);
• awarding damages (money); or
• an account for profits (a share of the profits earned through the copying of the design).

A court may also award additional damages as it sees fit depending on the circumstances of the copying, particularly if the copying has been flagrant or the other side ignores legal letters.

What if someone copies my design and I have not registered it?

Then it may be too late. You may have to reply on other laws that may not be as effective. Seek legal advice.

Is design registration worldwide?

No only Australian. Read more at Protecting your IP Globally

If you have any further questions about this topic, please give us a call on Tel: 03 9527 1334 or email us info@sharongivoni.com.au

What is litigation?

Litigation is the term used for taking legal action against another party when you believe they have infringed your rights or a dispute arises. Typically, most legal disputes can be settled by agreement without going to court. However, in some cases the matter proceeds all the way to court to be decided by a judge.

I have received a Letter of Demand, what should I do?

It is best to avoid writing back on your own as you may inadvertently make an admission of guilt.

We recommend you contact a lawyer promptly who can provide you with advice on your legal position and spell out the options to resolve the matter.

What if I get a Letter of Demand and don’t do anything?

Put simply, there are two rules:

RULE 1: never ignore Letter of Demand; and

RULE 2: seek legal advice as soon as possible.

Ignoring a Letter of Demand does not make the problem go away. Far from it. Refusing to respond to a Letter of Demand is not looked at favourably in the courts and may result in increased legal costs and additional damages (more costs) being awarded against you.

What if someone infringes your intellectual property?

Usually the first step is to collect evidence and get legal advice on the merits of your case.

Then you need to ask the individual, or a business, to stop their activities such as trade mark infringement or infringing your copyright. The purpose of the letter is to threaten further legal action if the behaviour does not stop.

Your lawyer to send a letter of demand or cease and desist letter seeing out in brief:

• Who you are
• What has happened
• What the laws say
• What solution you want
• A deadline for them to respond

In recent years, the Courts have been overwhelmed with commercial litigation. The time and cost associated with a taking a matter to court can be an extreme burden, causing financial and emotional stress and affect your ability to run your business.

For this reason, it is usually always better to resolve the dispute rather than go to court but in certain circumstances, there may be no alternative.

Is litigation quick to resolve?

As a rule – no. Even if you do not go to court, disputes take time be resolved. However going to court is a long process and often involves delays caused by the time involved in each party filing their documents, the many stages of proceedings and fitting the matter in with the court’s busy schedule.

Further, you and your staff may be required to provide large amounts of evidence by your legal team which takes you way from day to day work and can affect productivity and staff morale.

How much does it cost to go to court?

It is impossible to say without knowing the facts and complexity of the matter, the jurisdiction of the Court (e.g.: state or Federal Court) and the time required to hear the matter. Depending on the nature of the case and judge’s decision, in many cases, even the winning party may have to pay their own legal fees and be left with hefty fees. For example, according to a 2012 report, the estimated average cost of going to the Federal Court is well over $100,000 for the applicant (the party suing) and defendant (the party being sued).

Why get legal advice first?

It is also essential to get legal advice to see if your case is strong enough to take it to court. The reason being, for example, if the court deems that your complaint has little chance of success, the judge may invoke the party/party rule, where the unsuccessful party may be ordered to pay the other sides legal costs, as well as their own.

What if the other side cannot pay?

Finally, you need to sure the party you are suing has the money to pay any damages or costs the court awards to you. There is no point suing someone if they can’t pay if you win.

What if I sue someone, can I pull out of the matter later?

It is always possible to settle the matter before it reaches court. In fact, the majority of cases are settled out of court. Many settle literally on the steps outside! The deal is generally recorded in the form of a document called a Deed of Settlement.

However, if you change your mind or there is a likelihood that the matter can be resolved without legal proceedings, you should a skilled lawyer to negotiate on your behalf to ensure you do not miss out on the compensation you deserve. Please also be aware that if you commence court proceedings and it does not go ahead, you will still need to pay court costs and legal fees. These can amount to tens of thousands of dollars or even more.

What is a Deed of Settlement and Release?

A Deed of Settlement and Release (sometimes referred to as Terms of Settlement) is an agreement between the parties where each party makes promises to do something or stop doing something which is affecting the other party.

While each agreement is different, a Deed of Settlement and Release typically includes promises:

• for one party to pay the other party compensation;
• not to continue doing the thing which caused the dispute;
• for each party to pay its own legal costs;
• to keep the term of the confidential and not talk about the other party in a disparaging way; and
• release each other from any future obligation once the terms of the agreement have been fulfilled.

I have seen the term “without prejudice”. What does this mean?

“Without prejudice” means any statement made in writing or verbally on a “without prejudice” basis to the other side in a dispute, which is intended to resolve the dispute, will generally not be used in court against the person who made the statement. The idea is to have this vehicle to let people feel that they can make concessions to resolve a dispute without it being taken against them at a later stage.

However, this is not the same as professional legal privilege (confidentiality between a lawyer and its client).

If you have any further questions about this topic, please give us a call on Tel: 03 9527 1334 or email us info@sharongivoni.com.au

Can you protect your intellectual property (IP) around the world?

The short answer is yes, however there is some work involved as there is no such thing as a worldwide patent, design or trade mark application. They are usually done on a country by country basis or there are ways of tackling several countries all at the same time.

What does it mean that IP rights are territorial?

IP rights are territorial, meaning they take effect on a county by country basis. The laws vary from country to country which can make it even more challenging. However, the global nature of digital communications and trade mean if you are engaged in international commence, you should consider your options for protecting your IP in your target markets, that is, the countries in which you want to end up providing the goods and services.

How can the World Intellectual Property Organisation help?

The World Intellectual Property Organisation (WIPO) administers an international system for intellectual property applications for patents, designs and trade marks in many countries. The WIPO-administered system provides intellectual property owners with international protection by filing a single application in one language (the country of origin) with a single filing fee. The WIPO-administered system can also provide you with an overview of what patent or trade marks have been registered and used internationally.

However, it is important to note that there is no such thing as a world-wide patent, design or trade mark registration. You are still required to register your trade mark, patents and deigns in every country you intend to use them in.

What should I think about when considering obtaining overseas protection?

The threshold question will often be whether a trade mark is available for us overseas. You might have registered it here in Australia but if someone else has taken it overseas that can prevent you exporting the goods into that country. Back in 2006, designer jeans label Tsubi had to change its name to Ksubi after it tried to expand into the US and was stopped by the American shoe label Tsubo. Ksubi was lucky as the name change was possible, however in some cases a two-name scenario is not possible and can amount to a branding nightmare if the correct checks are not done at the outset.

Some other considerations when obtaining overseas protection

The things that you need to consider include which option would give you the best returns and whether you have the budget to approach both the Australian and international market at the same time. In addition, you will want to consider which countries you intend on using your intellectual property in. Also, consider how the brand name is interpreted in another language. Trade marks can get lost in translation, for example, an Irish alcoholic beverage producer both provided products under brands that include the English word “MIST” without considering that in Germany MIST means rubbish or droppings. Microsoft’s VISTA-branded operating system apparently translates to “frumpy old women” in Latvian.

What about trade marks in China?

When it comes to China, special care must be taken to devise a Chinese language equivalent of your brand and register it in the Chinese language as well as the Western version. This involves translating your brand into Chinese, designing a corresponding Chinese trade mark, conducting trade mark searches and apply to register the Chinese trade marks in China before using them there. At times, it is advisable to get an opinion form a Chinese lawyer to check the corresponding Chinese meaning of your brand as the literal translation might not be suitable. The bottom line is that connotations reflected by a trade mark should ideally reflect Chinese culture to resonate with Chinese consumers.

How do I apply for trade mark registration in more than one country at the same time?

There are two main options available. The first one is called the Madrid Protocol. The Madrid protocol provides a system which enables you to apply for registration of a trade mark in multiple countries including the United States, China and the United Kingdom simultaneously. Filing under the Madrid Protocol is often considered to be relatively more cost-effective and efficient as it enables you to extend your Australian trade mark application to multiple countries in a single application.

The second option is a country-by-country application. This involves filing a separate application in each country you intend to use your trade mark in. Quite often, you will need to use an overseas law firm in the country you intend to make the application in as Australian lawyers cannot file trade mark applications in a foreign country. However, an Australian law firm can help you communicate with the overseas law firm and manage the process for you.

How can I apply for a patent registration in more than one country at a time?

You can either make a separate patent application in each country (country-by-country application) or file a single application under the Patent Cooperation Treaty (PCT), a WIPO-administered system.

How can I apply for a design registration in more than one country at a time?

Applications for overseas design protection need to be filed directly in the country you require protection in. This is because the legal requirements and terms of protection for designs around the world vary from country to country. For instance, some countries do not require designs to be registered. There are also ways that you to file in several countries in a more efficient manner for example in Europe, where a Community Design Registration allows you to apply for design registration in all EU member countries through one single filing.

I currently trade in Australia but want to use my intellectual property (patents, trade marks or designs) overseas. What checks do I need to do?

Given that trade mark, patent and design protection is granted on a country by country basis, you need to check whether your intellectual property or something similar is currently used or registered in the country you intend to use it in.

How can we help?

Australian lawyers cannot advise on the IP Laws in other countries but they can assist businesses to register a trade mark or a design overseas by determining the best way to apply in those countries and liaise with overseas lawyers to get you the best result possible.

If you have any further questions about this topic, please give us a call on Tel: 03 9527 1334 or email us info@sharongivoni.com.au

What is a trade promotion?

A trade promotion is scheme which involves giving away prizes but can also include special offers including cash-back offers via redemption vouchers and product sampling. Legally speaking, some trade promotions require permits whereas others do not.

How are they regulated in Australia?

While trade promotions can promote your business, and give you data capture opportunities, they are also heavily regulated. Each State and Territory in Australia has its own set of regulations which say how trade promotions must be conducted. If the trade promotion is done via social media, you need to consider the additional rules of the social media platform as well. Regulations help prevent scams, protect the privacy of entrants and can ensure that prizes are distributed to the right competition winners.

What about the social media rules?

Social media platforms like Facebook have their own competition policies which must be followed or your account can be suspended or cancelled and access to your promotion could be blocked. For example, with Facebook, there are strict rules on how people can enter and all promotions must include a release of Facebook from liability in case something goes wrong.

What are the penalties for not complying with the regulations?

Penalties may differ from one state to another but in Victoria for example, fines for not following the regulations can amount to thousands of dollars. Additional costs and legal fees may apply if you want to challenge the fine.

Do I need to get a permit to give away my products in a local newspaper?

It will depend on the state in which the promotion is being run and how the competition is being run. For example, different rules apply to games of skill versus games of chance. A game of skill is a game that requires mental or physical skill – it is not dependent on chance. Examples are drawings and photographs, chess, backgammon, and mah-jong and creative writing. A game of chance is dependent on chance – it is completely random (for example if a name is drawn from a barrel).

What if the promotion is for a charity and not a business (raffles, bingo etc.).?

If you are acting for a community organisation or charity looking to run a raffle, fundraising event or bingo game, the organisation must be registered with the relevant gambling authority and permits are generally required.

Do any ethical codes apply?

Yes. For example, the Advertising Standards Board.

Advertising industry codes

There are advertising codes in Australia which are self- regulated, in that it is open to consumers to complain about trade promotions anytime. There is a Code of Ethics of the Australian Association of National Advertisers and if people complain about a trade promotion, the matters are heard by the Advertising Standards Board. Trade promotions over social media subject to the advertising code. For example, the Advertising Standards Board has in the past ruled against a competition run by a lingerie company which asked young women to take selfies in their underwear to enter. This was held to be against proper community standards.

How do other consumer laws impact on trade promotions?

In addition to ethical codes of practise all trade promotions are bound by consumer laws which prohibit misleading or deceptive conduct. If a trade promotion implies a set of facts that does not exist and could mislead people this will breach the law, even if you did not intend to mislead or deceive. For example, if you offer a prize but there are conditions that you do not disclose, that could be misleading.

Can I just start the promotion to “go live” and then follow the regulations later?

No. Running a trade promotion without obtaining a permit or following the correct guidelines is an offence. Getting the information ready to apply for permit or finding out if you even need one does take time and needs to be clearly visible on your promotional materials such as posters, flyers, advertisement or on radio ads. We recommend seeking legal advice as early as possible to ensure you trade promotion runs without a hitch.

If you have any further questions about this topic, please give us a call on Tel: 03 9527 1334 or email us info@sharongivoni.com.au

How soon should I file my trade mark?

Usually, the sooner, the better. Generally, trade mark registrations are granted on a first to file basis. As with most areas of law, there are some exceptions. If the second person to file can show prior continuous use or honest concurrent use of the trade mark, they may be able to succeed in their application over the first person.

Can I protect my trade mark for everything?

When applying to register your trade mark, you will need to choose the relevant categories of goods and/or services your trade mark relates to. Choosing the right categories require technical skills and expertise to define the scope of your trade mark. It is recommended that you seek legal help when applying for a trade mark given that it can be challenged if it is registered in the incorrect categories.

How long does trade mark registration last?

Trade mark registration initially lasts for 10 years and can be renewed indefinitely. However, if you don’t use your trade mark for any particular goods or services, it can be challenged for non-use.

Can a trade mark application be rejected or challenged?

A trade mark application may be rejected by IP Australia if, in the examiner’s opinion, the trade mark is too descriptive, includes a common family name or includes a geographical location. If a trade mark is too like an earlier filed one that too can be problematic.

Is trade mark protection worldwide?

Contrary to popular belief, there is no such thing as worldwide trade mark protection. Registration is granted by a country by country basis. However, there is a method of applying for a trade mark in several different countries at the same time.

Click here for Global IP

If the trade mark is registered overseas, can I use it in Australia?

It may be possible to copy a trade mark from overseas if it is not already registered by the overseas owner, however, caution must be exercised since the overseas owner may still be able to stop you. Click here to read about the Healthy Choice case.

What symbols can I use with my trade mark?

Believe it or not, you are legally allowed to use the ™ symbol alongside your trade mark even if it is not registered. The idea behind using this symbol is to demonstrate to others that you are using your brand as a trade mark. However, you can only use the ® symbol when your trade mark is registered.

Can you remove a competitor’s trade mark from the trade mark register?

In Australia, if you know or suspect that someone else’s trade mark is not being used but is registered, you can apply to have it removed for non-use however there are requirements. For example, you might have to show that the trade mark applicant never intended to use the trade mark in good faith at all from the time they filed. Further the trade mark being challenged needs to have been not been used for a continuous period of 3 years and registered for a certain period before a non-use challenge can be taken.

Can shapes, colours, sounds or smells be registered as trade marks?

Yes. Trade marks take all shapes and forms in the modern age of branding. These are often referred to as non-traditional trade marks.

Examples of shape trade marks include Cadbury’s Freddo Frog, Lindt’s chocolate bunny and KitchenAid’s stand mixer.

Examples of colour trade marks include the Tiffany & Co.’s robin egg blue packaging, Cadbury’s purple packaging and Christian Louboutin’s red shoe soles.

Examples of sounds trade marks include McCain’s ‘Ah McCain you’ve done it again’.

The Trade Marks Office does not accept Scratch’N Sniff applications for scents – the smell in question needs to be capable of being graphically represented (often in words). However, the scent of eucalyptus has been registered in relation to golf tees.

For more information on these non-traditional trade marks, click here.

How can you register non-traditional trade marks?

It is often harder to register non-traditional trade marks such as shapes, colours, sounds and smells. The key is to use these trade marks consistently and as a trade mark over time to ensure that you maximise your chances. We can assist with strategies around this including guidelines for us that a business can establish for its staff to adhere to.

Can you trade mark your name?

In theory, there is nothing stopping you from registering your name as a trade mark. In the fashion world, examples include the names Alannah Hill and Kate Spade. However, if you happen to have a common surname such as Jones, Smith or Williams, it can be considered descriptive if you want the surname on its own. Examples of surnames that have been registered include the fast food company McDonald’s, Smith’s chips and Pauls milk. They had evidence of extensive use of these brand names so could prove that consumers recognised them as their own brand.

Registering combination names are also very popular, particularly in home wares and in fashion.

What if I change my trade mark over time?

Each time you change your trade mark, for example if you update the logo or add a word to it, you need to apply for registration of the new trade mark to ensure that remains protected. Trade mark registration only covers the mark in the exact form that you registered it in.

If you have any further questions about this topic, please give us a call on Tel: 03 9527 1334 or email us info@sharongivoni.com.au