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 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.


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.


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.


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

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.