INTELLECTUAL PROPERTY

We advise clients operating across a broad range of industries in relation to the protection of their intellectual property rights. We also provide associated litigation & dispute resolution services as part of our commitment to protecting your intellectual property.

Copyright (protects the expression of ideas)

Copyright protects the expression of ideas (and not the ideas themselves). Ideas can broadly be expressed as literary, dramatic, musical or artistic works (e.g. written articles, song recordings, drawings, photos and even three dimensional works such as buildings). Films, sound recordings, broadcasts, and the typographical arrangement and layout of published editions are also specifically protected.

Copyright protection is provided for under the Copyright Act 1968 (Cth) which protects copyright owners against infringing acts occurring in Australia. In Australia, protection arises automatically upon creation to works which are first published in Australia or where the author was an Australian citizen or person resident in Australia. Australia is also obliged under international copyright conventions to protect foreign copyright material in the same way as a work first published in Australia for example. There is no requirement of registration. The duration of protection varies depending on the circumstances, but it generally subsists for 70 years. Moral rights also exist to protect the reputation of the author and ensure that works are presented in their intended form.

Copyright owners have the exclusive right to:

  • Reproduce the work in a material form
  • Publish the work
  • Perform the work in public (unless it is an artistic work)
  • Communicate the work to the public
  • Make an adaptation of the work (unless it is an artistic work)

Similar specific rights apply to films, sound recordings, broadcasts, and the typographical arrangement and layout of published editions.

Generally, copyright is infringed if a person does or authorises the doing of one or more of the rights of the copyright owner without the owner’s licence or consent. The importation of infringing items is also protected. The copying need not be identical; the copying of a substantial part of the protected work may also be sufficient for infringement.

The primary remedies for infringement are (1) injunction (2) damages or account of profits and (3) additional damages. There are also various other available remedies which the court may grant.

The owner of copyright material can also lodge a notice of objection with the Comptroller-General of Customs (which lasts for 4 years unless the copyright has expired) to protect their copyright material so that customs may seize any copies being imported into Australia for the purposes of sale, hire, distribution or exhibition.

Artistic works which are protected under the copyright act should also be registered as designs before the design is industrially applied to a three dimensional product and sold in Australia so that the embodiment of the artistic work in a product is protected under the registered designs regime.

We can assist in relation to:

  • General copyright advice
  • Commercial agreements e.g. licences, assignments etc
  • Litigation and dispute resolution
  • Customs notices of objection

Designs (protect the appearance of products)

Registered designs protect the overall appearance of a product (i.e something that is manufactured or hand made) resulting from one or more visual features (e.g. the shape, configuration, pattern or ornamentation of a product). The design needs to be new and distinctive in order to be registered and it is therefore important that the design is not disclosed before the application is filed.

Certain works (particularly, artistic works i.e. 2 dimensional “designs”) which are protected under the copyright act should also be registered as designs before the design is industrially applied to a three dimensional product and sold in Australia so that the embodiment of the artistic work in a product is protected. If the work is applied to a product and sold commercially, some copyright protection in the work may be lost and it may be necessary to rely on a registered design to protect those rights.

Protection of a registered design lasts for 10 years from the filing date. There is an initial term of 5 years, capable of being renewed for another 5 years.

We can assist in relation to:

  • General registered designs advice
  • Lodgement and prosecution of registered design applications
  • Litigation and dispute resolution
  • Commercialisation and management of portfolios including renewals

Patents (protect the function of products)

Patents protect the function of inventions which are unique and innovative / involve an inventive step. We are affiliated with specialised patent attorneys who can assist you to protect your inventions.

Trade marks (protect brands)

A trade mark is, in summary, a sign (e.g. a letter, word, name, number, brand, logo, aspect of packaging, shape, colour, sound or scent) that is used to distinguish the goods or services of a trader from those of others.

Before you decide upon your brand (which may consist of a letter, word, name, number, logo, aspect of packaging, shape, colour, sound or scent) and launch it (including before you register your domain name) a trade mark availability search should be conducted by a professional to determine whether there are any existing registered or unregistered rights which may exist in similar brands.

The mere registration of your company name or business name with the Australian Securities and Investments Commission (ASIC) does not protect your brand identity, or provide registered trade mark rights in your brand. Registration with ASIC is a legal obligation. However, registration as a trade mark with the Australian Trade Marks Office can provide your business with:

  • an exclusive statutory monopoly to use your registered brand identity in respect of the goods and/or services for which it is registered in Australia;
  • an easy way to prevent cybersquatting (the registration of a domain name which incorporates your brand by others);
  • much easier and cheaper enforcement of your rights in your brand if someone else infringes your rights, for example, by using a brand which is either substantially identical or deceptively similar to your brand in respect of the same or similar goods and/or services; and
  • a registered “asset” which can be licensed, assigned, and monetised.

Only registered trade marks can apply the ® symbol. This puts others on notice that your brand is registered, and that you are likely to prosecute infringement.

Visit our trade marks page for further information about how our Sydney lawyers can assist you at fixed fee rates with trade mark registrations and associated advice.

Confidential information

Confidential information may be protected from disclosure by legislation, equitable jurisdiction or via contractual jurisdiction.

Generally it is necessary to prove that:

  • an obligation of confidence existed in relation to the specific information
  • the information had the necessary quality of confidence
  • the use or disclosure of the information was unauthorised
  • the breach resulted in damage

If the claim is a contractual claim then damages will usually be the primary remedy.

If the claim is equitable (e.g. if there is no contract) then the remedies of injunction, an account of profits, equitable damages, and delivery up are available.

Ancillary registrations

In addition to the above, we can also assist with other ancillary registrations:

  • Domain names
  • Business names
  • Corporations and other business structures

Litigation & dispute resolution

In addition to the above, our litigation and dispute resolution experience includes claims involving:

  • Passing off
  • Misleading and deceptive conduct

We can also assist with domain name disputes & issues concerning cybersquatting.

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