Australia: Doing Business in Australia - Intellectual Property

Last Updated: 1 May 2012
Article by Tony Holland

All intellectual property legislation in Australia is federal with national jurisdiction.

TRADE MARKS

Trade marks are registered in Australia under the Trade Marks Act 1995 (Cth) (Trade Marks Act). Trade mark registration gives the proprietor the exclusive right to use the trade mark in relation to the goods or services in respect of which the trade mark is registered, while the trade mark is registered.

The Trade Marks Act specifies that a trade mark must distinguish a person's goods or services from other traders' goods and services, and must not be the same as or deceptively similar to a prior trade mark registration or prior pending trade mark application made in Australia by another person in respect of similar goods or services. A person wishing to register a trade mark must either be using the trade mark or have a definite intention to use it. Once registered, a trade mark can be removed for non-use if it has not been used or has not been used in good faith for a continuous period of three years. However, an application for removal for non-use cannot be made within the first five years of the trade mark application date.

Trade marks can be licensed or assigned to third parties.

Passing off

Australia allows common law claims for passing off goods or services as being those of, or approved by, another person, even if that other person does not have a registered trade mark. A person who claims passing off must establish that there is goodwill attached to the goods or services he supplies, that there has been a misrepresentation of the type previously referred to, and that the alleged misrepresentation has harmed that goodwill.

Additionally, an action can be brought for misleading and deceptive conduct under the Competition and Consumer Act 2010 (Cth) (which replaced the Trade Practices Act 1975 (Cth)) if a trade mark is used in a misleading or deceptive manner, or if a false representation of sponsorship or approval is made.

International registration

Australia is a signatory to the Paris Convention for the Protection of Industrial Property (Paris Convention). Under the Paris Convention, any person who has filed a trade mark application in Australia has a right to claim the filing date of that application for trade mark applications it files within six months in other signatory countries and any person who has filed a trade mark application in another signatory country has a right to claim the filing date of that application for trade mark applications it files within six months in any other signatory country, including Australia.

Australia's membership of the Madrid Protocol lets Australian trade mark owners file international trade mark applications in up to 70 jurisdictions, including the UK, the US, Germany, France, Italy, Japan and China. European Union trade marks can also be sought using the Madrid Protocol.

International registrations are processed by each country through its office responsible for trade mark applications. In Australia, this is IP Australia.

COPYRIGHT

Creators and owners of original literary, artistic, musical and dramatic works as well as sound, film and television broadcasts and computer programs have an exclusive right to reproduce, publish, perform, communicate and do other acts, and to license other people to do those things, in relation to those works, under Australia's Copyright Act 1968 (Cth) (Copyright Act). The Copyright Act doesn't prevent other people from creating and using a similar or identical work, provided it was independently created.

Copyright arises automatically under Australian law and there is no copyright register. The Copyright Act also deals with performers' rights and individual creators' moral rights (discussed below).

Australian copyright law is becoming more aligned with international norms. The Copyright Act was amended in 2004 in response to the Australia–US Free Trade Agreement, to enhance performers' rights and extend the term of copyright protection. Further changes in 2006 addressed issues linked to the internet and digitisation technological developments, dealing with piracy, portable music players and digital television recording devices. A broader exception now exists for educational institutions for instruction, library and archive purposes, and for time and format shifting (such as recording a television program on a DVD recorder for viewing at a later time, or converting music in CD format into MP3 format).

Copyright can be licensed or assigned to third parties.

Duration of copyright protection

Although there are some exceptions, copyright protection for original literary, artistic, musical and dramatic works is generally the life of the author plus 70 years, except where the literary (except for computer programs), dramatic and musical works were not "made public" during the author's lifetime. In this case, the term of protection is 70 years after the year the work was made public.

The duration of copyright protection for films and sound recordings is the year of first publication plus 70 years, and for copyright in TV or sound broadcasts it is the year of the broadcast plus 50 years.

Published editions of works enjoy copyright protection for 25 years after first publication.

Specific rules also apply where the Australian Federal Government is the copyright owner or wishes to use copyright works.

Moral rights

Australian copyright creators enjoy moral rights designed to protect their honour and reputation. These rights include the right of attribution of authorship, of integrity of authorship and the right not to be falsely attributed as author. Moral rights cannot be assigned. Use of material in a way that would be in breach of the creator's moral rights requires the creator's consent.

International protection

Australia's membership of the Berne Convention for the Protection of Literary and Artistic Works means Australian creators of copyright works enjoy protection for their works in other signatory countries as if they were nationals of those other countries. Under the Berne Convention, copyright arises automatically when a work is created and does not rely on registration.

PATENTS

Australia's Patent Act 1990 (Cth) (Patents Act) confers exclusive rights to exploit, to authorise others to exploit and to prevent others from exploiting patented inventions during the term of patent protection. IP Australia administers the Patents Act.

Two main types of patents are available in Australia - standard patents, which are equivalent to patents granted around the world, and innovation patents, which are unique to Australia. Innovation patents are a second-tier form of patent protection intended to provide protection for a shorter term to inventions that cannot satisfy the inventiveness requirement for a standard patent. The innovation patent replaced Australia's former second-tier patent, the petty patent.

Patents may be licensed or assigned to third parties.

Standard patents

For an invention to be protected by a standard patent in Australia, it must be a manner of manufacture within the meaning of s6 of the Statue of Monopolies 1623, novel, inventive, useful and not have been commercially exploited in secret by or with the authority of the patentee in Australia before the priority date of the patent. However, human beings and the biological processes for their generation are not patent-eligible inventions. In general, the term of a standard patent is 20 years, although the term of particular types of standard patents relating to pharmaceuticals may be extended by up to five years.

Innovation patents

Innovation patents were introduced to provide protection for incremental improvements that are not sufficiently inventive to warrant a standard patent. However, their use is not limited to such incremental improvements. For an invention to be protected by an innovation patent, it must satisfy each of the requirements for obtaining a standard patent, other than that it be inventive. Rather than needing to be inventive, an invention need only be innovative to be protected by an innovation patent. This requirement is satisfied if any variation between the invention and the prior art makes a substantial contribution to the working of the invention. In addition to the exclusion from patentability referred to above in relation to standard patents, plants, animals and the biological processes for their generation are not patenteligible inventions for the purposes of an innovation patent - unless an invention is a microbiological process or a product of such a process. The term of an innovation patent is eight years and cannot be extended.

Unlike standard patents, innovation patents are granted without substantive examination. However, for innovation patent holders to enforce their monopoly rights, they must first have the patent examined and certified by IP Australia.

International protection

Australia is a member of the Patent Cooperation Treaty (PCT). This gives Australian patent applicants the ability to seek patent protection in each PCT member country by filing a PCT application with IP Australia, designating all or any PCT countries in which protection is sought. Similarly, patent protection can be sought in Australia on the basis of a PCT application filed in another PCT member country.

Additionally, as Australia is a signatory to the Paris Convention, patent applicants from member countries may use the filing date from their first application as the effective filing date in Australia provided they file an Australian complete application or a PCT application within 12 months of the date of filing the foreign original or basic application. Similarly, patent applicants from member states may file their patent application first in Australia and use that date as their effective filing date in other member countries provided they file a complete application or a PCT application in those other member countries within 12 months of the Australian filing date.

REGISTERED DESIGNS

Design registration protects the visual appearance of manufactured products, not how the product works. Registered designs can be valuable commercial assets and steps can be taken to enforce design rights.

Australia's Designs Act 2003 (Cth) (Designs Act) covers the registration of "new and distinctive" designs for products. "New" means that no identical design or very similar design has been publicly used in Australia or published in a document (whether inside or outside Australia). "Distinctive" designs are those considered not substantially similar to other designs already in the public domain. Registration protects designs for five years initially and can be renewed for a further five years.

Once a design is registered, examined and certified, the owner of the registered design may sue for infringement if another person uses the registered design without permission.

The current Designs Act imposes more stringent tests for the distinctiveness of designs than originally outlined in the 1906 Act of the same name. However, a wider infringement test effectively increases the enforceability of registered design rights under the current legislation.

© DLA Piper

This publication is intended as a general overview and discussion of the subjects dealt with. It is not intended to be, and should not used as, a substitute for taking legal advice in any specific situation. DLA Piper Australia will accept no responsibility for any actions taken or not taken on the basis of this publication.


DLA Piper Australia is part of DLA Piper, a global law firm, operating through various separate and distinct legal entities. For further information, please refer to www.dlapiper.com

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