Thursday, 10 November 2016

Removal of Trademark for Non Use

Old Building

Notwithstanding that 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.

Under section 92 of the Trade Marks Act 1995 (Cth), a person may apply to the Registrar to have a registered trade mark removed from the Register. The grounds upon which a person could seek to have a registered mark removed include, for example:

  • when the application for the registration of the mark was filed, the applicant had no intention in good faith of actually using the trade mark in Australia; or
  • the trade mark has remained registered for a continuous period of 3 years and, at no time during that period, did the person who was then the registered owner use the mark in Australia.

A situation could arise where a competitor wants to register a trade mark that is substantially identical/deceptively similar to a trade mark that is already on the register in relation to the same goods and/or services of the competitor.

That competitor could file an “Application for removal or cessation of protection of a trade mark for non-use” with IP Australia alleging one of the grounds for non use. If the ground alleged relates to the continuous 3 year requirement, there is a further obligation on the competitor that at least 5 years must have passed since the filing date of the registered trade mark.

The registered trade mark owner (as the opponent) would then be obliged to rebut such an allegation in order to avoid having their mark removed for non-use.

In summary, 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 a 3 year period 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.

Contact us for further information:


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2017, All rights reserved.

What is a Design ?



design, ruler, drafting

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 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.

This Information Sheet is just focused on designs as a form of IP.

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

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

Application and Registration

There are a number of steps involved:

  • Application filing and payment of the Application fee;
  • A formalities check is then carried out of the Application by the Designs Office to make sure there are no concerns with the Application;
  • If the design passes the formalities check, the design is then registered.
Once registered, the details of the registered owner and the design will be entered on the Register of Designs and searchable.

Rights of Registered Owner

Once registered, the owner will have exclusive rights in that design, including to:

  • Manufacture a product utilising the design;
  • Commercially use, licence or sell the rights in the design
Enforcing Design Rights

It can occur that a registered design is infringed by someone else, for example, that person may seek to sell a product that incorporates a design identical or substantially similar to your registered design.

In order to take legal action against the “infringer”, the registered design must first be examined and certified by the Design Office.

Examination

It is not compulsory for a registered owner of a design to have the design examined. But, in order to obtain legally enforceable rights in the design, the design must be examined to determine its:

  • Newness; and
  • Distinctiveness
In order to have a design examined:

  • A request for examination needs to be made to the Design Office; and
  • The requisite fee paid.
The Design Office will then assess the design to ascertain whether or not:

New

“New” means the design has not been publicly used in Australia nor has it been published in a document within or outside Australia.
If a product has already been commercialised in Australia using the design (before the product is examined), then it is likely the examined design will fail the newness test.

Distinctive

There exists another application or registered design substantially similar in overall impression to the design being examined.

If an earlier design application or registration did exist, then the examined design may fail the distinctiveness test.

Certification

If the registered design has passed the examination stage, a certificate of examination will be issued by the Designs Office noting the design as certified.

Certification will then allow the design owner to commence legal action against any infringement of the design by someone else.

Application/Registration/Examination Processing Time

Generally, once an application for design registration is lodged, it can take about 3 months for the application to be processed.

If design certification is also requested (which is optional), an additional examination phase of about 3 months applies.

Designs not eligible for Registration

Some designs are statutorily barred from registration. For example, designs which contain certain words, like the word “ANZAC”.

Period of Protection

Registration will protect the design for a period of 5 years from when the application is filed. It can then be renewed for a further period of 5 years. So, a maximum of 10 years.

If a registered design is not renewed, the protection given by the registration will cease. The design then passes into the public domain and will be free for others to use.

Costs

There is an initial application fee when the design is lodged. Further fees apply if the design is to be examined. There are also fees if a registered design is later renewed.

International Design Protection

Registration and certification of a design in Australia only protects the design in Australia.


If you are exporting and require design protection overseas, then separate application needs to be made either directly to the overseas country in question or through the centralized process administered by WIPO. Time limits can also apply.


Contact us for further information:


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.


Copyright © Greyson Legal 2017, All rights reserved.

What is a Patent ?


circuitboard, computer, invention

Where a person has invented a device, substance, process or method which has the characteristic of providing a “new” way of doing something, or offers a new solution to a problem, it is important that the owner’s IP rights in the invention are protected.

A patent is the vehicle for protecting such rights.

The Patents Act 1990 (Cth) prescribes certain criteria which must be met before an invention can be patented.

In short, the device, substance, method or process must not only be new but must also be “novel, inventive and useful”.

Patent protection is not automatic. A thorough registration process must be adhered to in order to obtain patent approval.

Generally, there are two types of patents in Australia:-
  • standard patent; and
  • innovation patent. 
There are differences between each type in terms of cost, length of protection, application processing time and the type of invention they seek to cover.

A standard patent lasts for 20 years.

An innovative patent lasts for 8 years.

Usually an innovative patent will be utilised where the “inventive threshold” required for the standard patent is not able to be met.

Patent registration provides its holder with a legally enforceable exclusive right to commercially exploit the invention for the duration of the patent. Once a patent expires, the protection ends and the invention enters the public domain, i.e. the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others.

There is a separate patent application process for international protection, which will vary depending on the country.

Contact us for further information:


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2017, All rights reserved.

International Trademarks


world map, international

If you operate a Business in Australia and have registered one or more trade marks for trade mark 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 Australia trade mark, there are two (2) avenues you can follow if you want to extend trade mark protection overseas:
  1. File an application directly in each country you require trade mark protection; or
  2. 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.

Below we outline further information regarding the application process through the Madrid Protocol.

Madrid Protocol System

The Madrid Protocol System comprises 2 treaties:

Madrid Agreement Concerning the International Registration of Marks, (1892); and
Protocol Relating to the Madrid Agreement (1996).

The Madrid Protocol System is an international system based on the above treaties which facilitates the registration of trademarks in multiple jurisdictions around the world.

Through this system it is possible to make application through a centrally administered body (WIPO), rather than seeking trade mark protection separately in each individual country or region of interest. This reduces time and costs and makes it easier to manage multiple trade marks.

Requests for protection in a Madrid Protocol contracting country are examined according to the trade mark legislation and laws existing in each designated country or region. There are some 94 countries who are members of the so called “Madrid Union”, but this number can change as more members are added.

Length of Registration

International registration is protected for a period of 10 years from the date of registration.
Registration can be renewed every 10 years upon payment of the relevant fees.

Steps for Registration

There are a number of steps that need to be taken in order to obtain registration through the Madrid Protocol:
  1. there must be an existing Australian trade mark registration (or application);
  2. the Australian trade mark must be identical to the international trade mark being sought;
  3. generally, the applicant must be an Australian national and reside in Australia.
It is important to check (through appropriate searches) that there are not already registered in the counties you are seeking registration, trade marks similar to your own, as this may bar your registration. Searching is also important if you intend to market or promote your business, goods or services in another country to make sure you do not inadvertently infringe someone else's IP rights in that country.

Application Costs

The application costs to seek registration of an international trade mark will vary depending on:

which countries (and how many countries) you are applying for;
the number of classes you are seeking registration;
other aspects such as whether it will include colour or some other non standard mark.

If you require further information or assistance registering a trade mark either in Australia or internationally or require intellectual property advice generally, we welcome your enquiry.


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2016, All rights reserved.

What is a Trademark ?

Coffee, trademark, old box

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 can consist of:

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

They help to identify and distinguish the goods or services provided by one person from those of another. For example, the "mercedes" emblem.


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.

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.

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.

Stages for Registration

Trademark registration proceeds along 4 stages:

1. 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.

2. 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.

3. 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.

4. 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.

International Trademarks

Trade mark registration in Australia does not automatically provide IP protection overseas. Business owner's looking to promote their business, goods or services overseas will need to register trade marks in those countries by direct application (or for Madrid Protocol members, by application through WIPO).

Contact us for further information:


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2017, All rights reserved.

What is Copyright ?


copyright symbol

Copyright is a form of intellectual property 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.

It is an intangible right.

Common examples of material that can be protected through copyright include:
  • Music
  • Art
  •  Book
  • Films
  • Newspapers and magazine
  • Computer programs
  • Television broadcasts

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

Under the Act, works to which copyright attaches includes literary, dramatic, musical or artistic works. The Act further says 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). 

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.

Copyright in the works is automatic from the time it is first recorded, written down, painted or drawn, filmed or taped. There is no system of registration for copyright protection in Australia. 

Some copyright owners use symbols © 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.

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.

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.


If you are involved in designing a physical product, eg. a chair for commercial production which contains certain artwork, your copyright protection will cease once that product is commercialised (or you make multiple copies). In that case, it would be necessary to “register” your design – copyright alone would not give you full IP protection.  

Contact us for further information:


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2017, All rights reserved.