Intellectual Property ("IP") may appear to be
intangible but it could be the most valuable asset your business
possesses. It is therefore vital to determine who actually owns
The ownership of company names and business names is often a
subject of confusion. The fact that you have registered your
company and business names with ASIC does not of itself give you
any proprietary ownership in those names. The only way you can
legally own company and business names is to register them as trade
Similarly, although you may have been using an unregistered
brand for years, another party may obtain legal ownership of that
brand by registering it as a trade mark. It would generally require
court action by you to assert your prior rights in that brand. Even
if you do register your brand as a trade mark, you will only own
that mark for the individual classes for which it is specified, not
the classes for which you are actually using the mark.
Trade marks need to be owned by the appropriate entity. If you
register your marks in the name of an IP holding company which has
no effective control over the entity which is actually using the
marks, those marks can be removed from the register for
Ownership of copyright can be particularly tricky because
copyright is not registered. You therefore need to keep accurate
records of how and when you created the copyright work. If the
author of the work is your employee, the copyright in that work
would generally vest in your company. However, if you commission a
contractor to create your advertising, software or website, the
copyright in those works will generally vest in the contractor. It
is therefore wise to require assignment of this copyright to your
company at the outset, when your bargaining power with the
contractor is strongest.
Moral rights in copyright, which include rights of attribution
and non-denigration are personal to the author of the work even if
that author is your employee. Moral rights cannot be assigned. As a
consequence, they are effectively attached to the work even though
your company owns the copyright in that work. It is therefore wise
to require the employed author to undertake not to assert such
moral rights as a specific provision of the author's employment
The ownership of inventions and designs can be effectively lost
if their novelty is destroyed by premature exposure to the market.
It is therefore vital to have strict secrecy provisions in place
prior to the filing of patent and design applications. It is also
important to ensure that inventions and designs are not owned by
companies which have subsequently become defunct.
Your unequivocal ownership of your IP should be as important as
your ownership of your real property, stock or equipment. That
ownership needs to be fully secured and regularly monitored.
If you'd like to know more and make sure your IP is
protected do not hesitate to get in touch via email or phone.
A recent Federal Court decision highlights the need for employers to ensure that as well as clearly setting out the duties of employment, employment contracts also include a comprehensive assignment of all intellectual property rights, if the employer is to be assured that all rights in the intellectual property in materials created by employees are owned by the employe
The Government proposes to implement the Sansom Review recommendations in a staged manner over the next three years.
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