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IP australia

IP Australia is the Australian Government agency that administers intellectual property (IP) rights and legislation relating to patents, trade marks, designs and plant breeder's rights.

Visit http://www.ipaustralia.gov.au/  as an essential resource for managing your IP. The site helps to understand IP, search for patents and trademarks, outlines the process and tools to register a patent or trademark and how to deal with IP infringements.

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WELCOME TO FIAL’S INTELLECTUAL PROPERTY (IP) GUIDE

In this Guide you will find easy-to-digest information on IP which we trust will be of practical use to businesses in the food and agribusiness industry.

Setting up and running a food or agribusiness business usually entails having to deal with product formulators, manufacturers/suppliers, graphic designers, packagers as well as distributors and other third parties, including competitors. Every business owner instinctively knows that they must guard what is uniquely theirs - that which sets them apart from their competitors - and will appreciate that this is what is usually referred to as important intellectual property (IP).

Our Guide provides general information on IP, case studies as well as Q&As, and presently covers the following topics.

For more information, www.ipaustralia.gov.au.

The IP Guide has been developed in partnership with Cullens Patent and Trade Mark Attorneys.

 Intellectual Property Plays an Important Role in Your Business

Things can, and do, go wrong at the (food or beverage) product formulation, manufacturing, designing, branding, protection and distributor stages. Click here to read more on this topic.

Setting up and running a food or agribusiness business usually entails having to deal with product formulators, manufacturers/suppliers, graphic designers, packagers as well as possibly distributors and other third parties, including competitors. Every business owner instinctively knows that they must guard what is uniquely theirs - that which sets them apart from their competitors - and will appreciate that this is what is usually referred to as important intellectual property (IP).

While getting a food or agribusiness product into the marketplace can be an expensive exercise, a steep learning curve and, at times, an overwhelming experience, and so it is often the case that IP corners are cut or important IP is ill considered. Things can, and do, go wrong at the product formulation, manufacturing, designing, branding, protection and distributor stages. Typically it is only when serious competition/copycats or disputes arise that business owners realise the real consequences of this.

Understandably, start-ups, small and even medium-sized business may not be in the position to dedicate time or money to IP. Despite this, business owners (and anyone considering such a venture) should seek to understand the role IP plays in each part of a business. It is only then that risks can be properly assessed, informed decisions made, and potential down-stream problems avoided.

Other articles on this website will touch upon the issues raised above. However, FIAL encourages those who have placed IP in the ‘too-hard basket’ or have yet to start a business to seek legal advice as to the role IP plays or may play in their business as well as putting their IP in better order, so as to minimise the risk of things going wrong down the track.

This article is intended to provide general information only. The contents should not be relied upon as detailed legal advice for any specific case. While every effort has been made to ensure that the contents are correct at the time of publication, please note, the relevant laws and practice are subject to change. Specific advice should be sought from your legal advisor.

 

 Developing and Commercialising a Process or Branded Food or Beverage Product

The road to commercialisation can have hidden dangers. Click here to read more about hidden dangers that may prevent you from successfully commercialising an innovative manufacturing process or product.

Introduction

Anything that makes your business known or gives your business a competitive edge in the marketplace is likely to be important intellectual property (IP). In the food and agribusiness industry an innovative manufacturing process or product formulation marketed under a brand name (trade mark) will usually constitute valuable IP.

There are, however, potential legal obstacles on the commercialisation pathway of which you should be aware. For example, prior to developing and commercialising a process or branded food or beverage product, you should have considered the issues of IP ownership, freedom to operate and IP protection - each of which is briefly addressed below.

IP ownership – Is the IP (process, or product formulation and trade mark/artwork) actually owned by you or the intended party? Check your agreement with each consultant.

Freedom to operate – Will your commercial use of the IP fall foul of existing registered or unregistered third party IP rights? That is, is the IP available for your commercial use? Conduct searches for registered (and unregistered) IP rights – patents, designs and trade marks.

IP protection – Has your IP been adequately protected by way of a trade secret and/or an IP registration process? Register your trade mark. If your product formulation is new and requires top tier protection, file a patent application prior to publicly disclosing or commercially using the product.

The potential for legal obstacles increases if your process or branded product is being developed with the assistance of a consultant, such as an engineer, formulator or graphic designer. Generally speaking, you should ensure that your written agreement with them addresses at least the following points:

  1. the scope of the project;
  2. ownership of any process, formulation or trade mark/artwork that is developed during the project
  3. maintenance of confidentiality of the process or formulation;
  4. assurance that the same or similar process or formulation or trade mark/artwork has not been previously developed for another party; and
  5. that to the consultant’s knowledge there is no obstacle to using the process or formulation or trade mark/artwork commercially by way of a third party patent or other IP right, for example.

This article is intended to provide general information only. The contents should not be relied upon as detailed legal advice for any specific case. While every effort has been made to ensure that the contents are correct at the time of publication, please note, the relevant laws and practice are subject to change. Specific advice should be sought from your legal advisor.

 Exporting Branded Products

Are you export-ready? Are you sure all relevant factors have been taken into account, or will you make an expensive mistake? Click here to read more on this topic.

Introduction

Exporting food or agribusiness products to Asia, America, Europe and the Middle East is a long term goal of many business owners. Prior to exporting any branded product to a country of interest, however, the business owner should consider at least the issues of freedom to operate and intellectual property (IP) protection - each of which is addressed below.

Freedom to operate

Freedom to operate (clearance) searches should be undertaken to confirm that use of the product and brand name (trade mark) will not conflict with existing IP rights of third parties in the country of interest. The risk associated with failing to perform clearance searches is that the business owner can be forced to cease its commercial activities in the country of interest. Business owners (or their distributors) may be sued, may have to pay legal costs and may have to surrender up their branded products.

Obtaining protection for the product and brand name

In the absence of a conflicting third party IP right, consideration should be given as to how best to protect the exported product and brand name. In the case of brand names, they are best protected by way of that country’s trade mark registration system. In the case of an innovative product, obtaining a patent in that country may be the best course of action.

Appointing a distributor

Appointing a distributor in the country of interest is an attractive proposition for some business owners yet it does come with risks, particularly when it comes to unregistered brand names and domain names. A shrewd person in the country of interest seeking a distribution right may decide to register the business owner’s brand name and domain name as their own. If so, the business owner could be blocked from selling its branded product into that country or have to challenge ownership through legal channels. Such risks can be minimised by filing for trade mark protection and registering the domain name in the country of interest prior to seeking distributors.

Importance of a written agreement

Having a written agreement in place with a distributor is best practice, as each party will be clear as to what has been agreed to and where each party stands, particularly should the relationship be tested.

A distribution agreement should address at least the following IP issues:

  1. Freedom to operate.
  2. IP protection.
  3. Third party infringement - If a third party infringes the business owner’s IP right, who will pay the legal costs in pursuing the infringer?
  4. Infringement of third party IP rights - If the brand name or product infringes a third party IP right, who will pay the legal defence costs and damages?

It is self-evident that there may be little point in attempting to export a branded product that the business owner ultimately (1) cannot sell commercially in the country of interest and (2) cannot sell exclusively without others copying it.

This article is intended to provide general information only. The contents should not be relied upon as detailed legal advice for any specific case. While every effort has been made to ensure that the contents are correct at the time of publication, please note, the relevant laws and practice are subject to change. Specific advice should be sought from your legal advisor.

 Importing or Distributing Branded Products

Importing or distributing a supplier-branded or privately-branded product can be a highly profitable venture and so it is in your interests that risks associated with this practice be minimised. Click here to read more on this topic.

Introduction

Many successful businesses in the food and beverage industry are based on sourcing branded or unbranded products from suppliers, and importing or distributing those products within Australia under the supplier’s brand name (ie. trade mark) or under their own private brand name. There are, however, potential legal issues of which importers and distributors (“distributors”) should be aware. For example, prior to distributing a branded product, the distributor should have considered the issues of freedom to operate, intellectual property (IP) protection and IP enforcement - each of which is addressed below.

Freedom to operate

Freedom to operate (clearance) searches should be undertaken by the distributor (or supplier) to confirm that use of the supplied product and brand name will not conflict with existing IP rights of third parties. The risk associated with failing to perform clearance searches is that the distributor can be forced to cease its commercial activities. In some instances, distributors have been ordered to cease trading under their present name and forced to surrender up their branded products and domain name registration.

Obtaining protection for the product and brand name

In the absence of a conflicting third party IP right, consideration should be given as to how best to protect the supplied product and brand name. In the case of brand names, they are best protected by way of registration under the Australian Trade Marks Act. If using the supplier’s brand name for the product, the supplier’s cooperation should be sought in registering the brand name in Australia. If privately branded, the distributor should itself take steps to secure registration of the brand name.

In the case of an innovative product, obtaining a patent with the supplier’s cooperation under the Australian Patents Act (if possible) may be the best course of action.

Importance of a written agreement

Having a written agreement in place with a supplier is best practice, (although usually the exception rather than the rule), as each party will be clear as to what has been agreed to and where each party stands, particularly should the relationship be tested.

Before signing an agreement with a supplier, the distributor should consider at least the following IP issues:

  1. Does the supplier warrant that the product and brand name are available for the distributor’s use in Australia? [If not, searches for registered (and unregistered) IP rights -patents and trade marks – should be undertaken.]
  2. Have the brand name and product been registered/protected in Australia, if possible? [If not, then the distributor may insist on it so as to enjoy greater protection against potential competitors.]
  3. If a third party infringes the supplier’s IP right, who will pay the legal costs in pursuing the infringer? [It often comes as a shock to distributors that suppliers leave it up to them to take action and to bear the associated costs.]
  4. If the brand name or product infringe a third party IP right, who will pay the legal defence costs and damages? [Again, suppliers usually leave it up to the distributors to bear the associated costs.]

It is self-evident that there may be little point in attempting to distribute a branded product that the distributor ultimately (1) cannot sell commercially and (2) cannot sell exclusively without others copying it.

If you are thinking of importing or distributing a supplier-branded or privately-branded product, please contact your legal advisor.

This article is intended to provide general information only. The contents should not be relied upon as detailed legal advice for any specific case. While every effort has been made to ensure that the contents are correct at the time of publication, please note, the relevant laws and practice are subject to change. Specific advice should be sought from your legal advisor.

 Patents

In addition to providing protection for a product or process, a patent filing can be used as a marketing tool, to attract investors, to scare off competitors, or as a means of qualifying for Government grants. Click here to read more on patents and the patenting process.

Generally speaking, patents can be obtained in respect of food and beverage products and processes that are new and advantageous. Even minor improvements over known products and processes may be eligible for patent protection in Australia. An invention that is both new (novel) and inventive (a non-obvious development) can be patented for a 20-year term by way of a standard patent. A minor invention that is both novel and innovative can be patented for an 8-year term by way of an innovation patent.

A patent grants the owner exclusive rights to the invention. Therefore, the owner has the right to prevent others from making, selling, using or importing the patented invention for as long as the patent remains in force. However, a granted patent does not ensure that the invention can be used commercially because earlier thirdparty patent rights may be infringed and thus act as obstacles to commercialisation.

A patent application should be filed before publicly disclosing (or commercially using) a new invention. If disclosed prior to filing a patent application, valid patent protection may not be available in most countries of the world. However, Australia provides a 12-month grace period against self-disclosure, but an innovative or standard patent application must be filed within 12 months of the date of first disclosure. Filing an application within the grace period is not recommended because rights granted by an issued patent may be limited.

Filing of a standard or innovation patent application can be preceded by the filing of a provisional patent application. If further improvements to an invention are envisaged, then filing a provisional application for the invention in the first instance may be the preferred option because improvements to the invention may be included in the standard or innovation patent application if filed within 12 months of the provisional filing date.

Usually the patenting process begins with initially filing a patent application in Australia. In most instances, the applicant can then defer filing in other countries of interest up to 12 months from the Australian filing date without jeopardising their future patent rights in those countries.

More than 155 countries of the world are party to the Patent Cooperation Treaty (‘PCT’). A PCT application designating 155+ countries can be filed within 12 months of the initial filing in Australia. A PCT filing provides the applicant up to about 2.5 years from the initial Australian filing date to decide in which PCT countries patent protection ought to be sought. If a country is not party to the PCT, then protection in that country should be sought within 12 months of the initial Australian filing date.

Generally speaking, after filing a patent application directly in a country or via the PCT route, the patent application may be examined by the national patent office and, if found to comply with all legal requirements, may be allowed to pass to grant (in the absence of a third-party opposing grant). Fees (in many instances annual fees) may be payable over the term to keep the application or patent in force.

Australian patent attorney costs from filing to grant for an uncomplicated invention may be in the order of $10,000-$15,000, with a further $10,000 to keep the patent in force for the 20-year period.

 Links

 IP Australia: http://www.ipaustralia.gov.au/get-the-right-ip/patents/
 More information about patents: http://www.cullens.com.au/aus-nz-clients/patents/

 Click to read relevent case studies and Q&A's

  CASE STUDY by Cullens Patent and Trade Mark Attorneys
www.cullens.com.au

Company X wanted patent protection for their new food manufacturing process and food product resulting from that process. Searches of patent databases were conducted to identify any obvious third-party patent obstacles to commercialisation and to determine whether the invention was likely to be novel and patentable. Having used a consultant to develop the invention, Company X ensured that the consultant assigned its ownership in the invention to the Company. A provisional application describing the invention was then fi led and the Company continued testing and improving the invention. Twelve months after the initial fi ling a PCT application describing the invention and improvements was fi led. The PCT application was examined by the patent offi ce and the invention was deemed to be novel and inventive. Having received this positive affi rmation, Company X decided to fi le in the following PCT countries (commercially important markets) within 18 months of the PCT fi ling date: Australia, New Zealand, USA, China, Japan, South Korea and member states of the European Union. In each of those countries the application was examined afresh and patents were granted for the process and/or product.

Developed in conjunction with Gint Silins, Cullens Patent and Trade Mark Attorneys g.silins@cullens.com.au

 Q&A

Q: Should I search for third-party patents (i.e. perform a freedom to operate search) before using my invention commercially?

A: This is a commercial decision. The advantage of performing a third-party patent (or freedom to operate) search is that you can identify relevant patents which you may be at risk of infringing. Once you are aware of such patents, your commercial activities can be modifi ed (if necessary), which would decrease your commercial risk.

Q: Is a prior art search mandatory before fi ling a new patent application?

A: No. However, a prior art search is typically a very good idea - if you are aware of relevant prior art you can prepare a better patent application which avoids that prior art. This can also decrease down-stream costs because a patent application which has been drafted to avoid relevant prior art would receive fewer objections from patent examiners.

Q: Will the patent office ask to see my invention?

A: No. However, the patent specifi cation must include full details of your invention.

Q: Who is entitled to fi le a patent application?

A: The actual inventor/s or someone who has derived entitlement to the invention from the actual inventor/s (e.g. by assignment or contract of employment).

Q: I have used a consultant to help develop the invention. The consultant claims to own the invention, is that correct?

A: If the consultant has made an inventive contribution to the invention, the consultant is an inventor and should, in the absence of any agreements to the contrary, be entitled to (co)-ownership. However, if the consultant has transferred his/her rights to the invention by assignment or contract of employment, the consultant cannot claim to own the invention as his/her rights to the invention have been transferred/given away.

Q: Can I disclose my invention after a provisional patent application has been filed?

A: In short, yes as you have established a priority date for your invention by filing the application. Provided that the priority of the provisional application is retained by continuing with the patenting process, the invention as described in the provisional specification can be disclosed publicly without jeopardising the validity of any patent that may issue for that invention. However, if further developments are made, an updated application that includes the improvements may need to be filed before you disclose them (as well as the original invention) to the public.

Q: What notation should I use once my patent application has been filed?

A: “Patent Pending”, “Patent applied for”, or “Patent Application Number...”

Q: I am still developing my invention. What type of patent application should I file?

A: A provisional patent application. However, a complete application detailing any improvements to the invention will need to be filed within 12 months in order to maintain rights to the invention.

Q: If I file a patent application, when will it be published?

A: When a patent application is published will depend on the type of application. For example, an application for an innovation patent will usually be published within about one month of filing. However, an application for a standard patent is generally not published until about 18 months after the earliest priority date, where the earliest priority date is the filing dating of your first application.

Q: Can I keep my invention a trade secret even if I file a patent application?

A: Only in the short term. Once a patent application is filed, it will eventually be published and therefore the invention will no longer be a trade secret. However, it is possible to enjoy patent protection and trade secret status for up to 18 months and you can choose to withdraw the application prior to any publication - thereby maintaining the trade secret status.

Q: Can I patent a business idea?

A: A business idea by itself is not likely to be patentable. However, a business scheme or method which involves a physical form or device and results in a useful product may be patentable. It is important to note though, that using a computer to implement the business scheme or method may not be sufficient to confer patentability.

Q: What other benefits are there in filing a patent application?

A: Eligibility to apply for government funding, usually a necessity before being able to attract investors, powerful marketing point and may ward off competition.

Q. At what stage should I file a patent application?

A. As early as possible. When filed, a patent application has “priority” over later applications and publications. This is particularly important for fast moving technology.

Q. Can I obtain patent protection for a product or process that I have already been selling in Australia?

A. Yes and no. Patent protection may be provided in some jurisdictions (including Australia) if a patent application is filed within 12 months of the first disclosure. In other jurisdictions, such as Europe, patent rights may be forfeited based upon prior sale of a product.

Q. Will copyright protect my invention?

A. No. Copyright protection is, at best, limited to very specific aspects of a system, such as source code, and does not extend to an invention in any general form.

This article is intended to provide general information only. The contents should not be relied upon as detailed legal advice for any specific case. While every effort has been made to ensure that the contents are correct at the time of publication, please note, the relevant laws and practice are subject to change. Specific advice should be sought from your legal advisor.

 Branding / Trade Marks

Most businesses in the food and beverage industry rely on branding to sell and promote their products or services. Click here to read more about the importance of brand protection to your business.

Branding (trade marks) plays an extremely important role in the food and beverage industry. Trade marks are used in connection with products, processes or services, and these signify to others that those products, processes or services originate from particular businesses, or perhaps represent a guarantee of quality. Business names, for example, are usually important trade marks.

A trade mark may be a word or words, slogan, logo, aspect of packaging, colour or colours, shape, sound or smell, or any combination of these.


Proprietary rights in a trade mark may be obtained by use (known as ‘common law’ rights) or by registration (known as ‘statutory rights’). Common law rights may be used to protect the reputation or goodwill of a trade mark, and/or prevent confusion or deception of consumers. Common law rights are usually difficult and costly to prove and enforce. Statutory rights, on the other hand, are obtained by registration of a trade mark and a registered trade mark need not have a reputation or goodwill in order to be enforced.

Although there is no legal requirement to register a trade mark, there are further advantages in doing so, including: proprietary rights can be enforced upon registration, without having used the trade mark; the registration is Australia-wide (unlike common law rights which are restricted to the area in which the trade mark has been used and developed a reputation); trade marks are published on a searchable database which may deter others from using the same or similar trade marks; registered trade marks can be readily assigned or licensed; registration is a defence to an action for infringement of another trade mark; and, a trade mark filing can be used as a starting point for filing internationally.

Prior to using a trade mark commercially, searches should be conducted to determine whether any third party is using the same or similar trade mark or has registered the same or similar trade mark. In the absence of a potential conflict/commercial obstacle, the trade mark should be registered in respect of the products (goods) or services of importance to that business.

After a trade mark application is filed, it is examined for registrability. To be registrable, a trade mark must be capable of distinguishing the goods or services of the applicant from those of other traders, and not be too similar to any earlier trade mark which is registered or pending in relation to the same or similar goods or services. If all legal requirements are met, the application is accepted and published for third-party opposition purposes. If not opposed, a registration certificate will issue and the registration will remain in force for a 10 year period (renewable indefinitely).

Trade marks can, and should, be registered in other countries in which they are to be used. This is particularly important for countries having a ‘first to file’ rule, whereby the first person to file a trade mark application is entitled to registration notwithstanding the earlier use of the same mark by another person. Sometimes competitors, or even distributors, register trade marks belonging to others for a commercial advantage and this, of course, can result in the original owners not being able to use their own trade marks.

Trade marks can be registered on a country-by-country basis by filing a separate national application in each country of interest, usually within 6 months of the Australian filing date so that the Australian filing date is assigned as the filing date for the filing/s overseas.

However, a trade mark can be registered for the whole European Union by filing a single Community Trade Mark application. Also, a trade mark can be registered for multiple countries or regions by way of a single international registration under the Madrid Protocol. Madrid Protocol countries include China, the European Union, Japan, Expiry Korea, New Zealand, Philippines, Singapore and United States of America. Filing under the Madrid Protocol has many advantages, including saving on legal costs.

 Links

 IP Australia: http://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/
 More information on trade marks: http://www.cullens.com.au/aus-nz-clients/trade-marks/

 Click to read relavent case studies and Q&A's

  CASE STUDY by Cullens Patent and Trade Mark Attorneys
www.cullens.com.au

Example 1.

Company X launched a newly branded product ZEAT into the marketplace without conducting any extensive searches for pre-existing trade mark usage by others. Two years later, Company X was doing quite well and for the first time appeared on its competitors’ radar. A competitor, Competitor Y, had been using and had registered the trade mark ZEET in respect of the same type of product. Competitor Y enforced its registration for ZEET and successfully stopped Company X from using the brand ZEAT and ultimately Company X had to recall its products, pay damages, pay legal costs, re-brand and use a different URL. The cost to Company X was enormous.

Example 2.

Company X was selling its branded product ZEAT in mainland China using various Chinese-based distributors. Company X did not think to seek registration of its trade mark ZEAT in that country. Company X had a falling out with one of its distributors, Distributor Y, because Distributor Y began sourcing branded product elsewhere and had sought to register the trade mark ZEAT as its own. Distributor Y also began threatening Company X’s other distributors for trade mark infringement. Company X faced an uncertain and expensive legal battle to obtain ownership of its own trade mark. Company X may need to re-brand for China.

Developed in conjunction with Gint Silins, Cullens Patent and Trade Mark Attorneys g.silins@cullens.com.au

 Q&A

Q: Should I register my trade mark word or logo?

A: Ideally, it would be best to register both. However, if you only wish to register one mark, it is generally best to register a ‘word’ mark, as it will provide broader protection than a logo.

Q: Should I use the TM or ® symbol?

A: The ® symbol should only be used once a trade mark has been registered. The TM symbol can be used at any time.

Q: Do I need to keep using the trade mark in order to maintain the registration?

A: Once a trade mark has been registered for a period of 5 years, it will become vulnerable to removal for non-use if it is not used for a consecutive 3 year period. However, a registration is not automatically removed for non-use. In order for a mark to be removed for non-use an application for removal must be filed by a third party.

Q: Where can I search for registered Australian trade marks?

A: Searches can be conducted at http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start However, while the search system can be simple to use, searching for earlier ‘confusingly similar’ trade marks is an art form. A do-it-yourself search can be risky. This is why professional clearance searches are highly recommended.

Q: Will the Trade Marks Office enforce my registration on my behalf?

A: The Trade Marks Office cannot enforce a trade mark registration. To enforce a trade mark, the trade mark owner or an authorised user must bring an action in court.

Q: Will the Trade Marks Office inform me when someone else is trying to register my trade mark?

A: The Trade Marks Office has no obligation to inform you if someone else tries to register your trade mark. The Trade Marks Office emphasises personal responsibility in monitoring the register to see if someone else is trying to register your trade mark, or something similar.

Q: Do I need to register my trade mark before I can use it?

A: You do not need to register your trade mark before you can use it. Common law rights to a trade mark can be generated through extensive use of the trade mark. However, common law rights depend on reputation, which is typically limited to the geographical area in which the mark has been used. Common law rights also have to be proven in court, which is an onerous and expensive. By contrast, proof of reputation is not required to enforce a trade mark registration in court. It is advisable to apply for registration of a trade mark before using it because the examination process may reveal a prior registration which could prevent you from using the trade mark.

Q: Why should I register my trade mark?

A: You should register your trade mark to make enforcement of your rights easier and to stop third parties from registering your mark. If a third party registers your unregistered mark, a court action is required to revoke it. Court actions typically cost around $15,000 to start and can cost over $100,000 to finish.

Q: Won’t copyright protect my trade mark?

A: Copyright protects the expression of an idea, not the idea itself. Someone could express your idea, or your trade mark, in a different way, and not infringe your copyright. Copyright may protect the appearance of a particular stylised logo, but not necessarily the particular word or idea in the logo. The registration of a trade mark can give you rights to a particular word expressed in any particular stylised form.

Q:What searches should I do before using my new trade mark?

A: In Australia, a search of the Australian Trade Marks Office database should be carried out, along with a common law search for unregistered trade marks. If the mark is to be used overseas, searches should also be conducted in the countries in which the mark will be used.

Q: I have registered my business name, so why should I register a trade mark as well?

A: A business name registration does not provide any proprietary rights to the name, meaning that other parties can use the same name. Only a trade mark registration can be used to prevent other parties from using the same, or similar, marks.

Q: Can I register a descriptive term as a trade mark?

A: In general, a descriptive term cannot be registered as a trade mark. The only way a descriptive term could be registered is if the owner can demonstrate many years of use of the mark such that consumers associate the mark with the owner’s business or products.

This article is intended to provide general information only. The contents should not be relied upon as detailed legal advice for any specific case. While every effort has been made to ensure that the contents are correct at the time of publication, please note, the relevant laws and practice are subject to change. Specific advice should be sought from your legal advisor.

 Industrial Designs

Product appearances (eg. food shapes and packaging) can be registered as industrial designs. Click here to learn whether you are making good use of this intellectual property right to protect your commercial products.

Innovations in the food and beverage industry often include new types of packaging, container shapes and shapes for food products. Sometimes these can provide functional advantages or may even in some instance function as trade marks/brands.

In Australia, the visual appearance (shape, configuration, pattern or ornamentation) of a product can be protected by way of a design registration for a 10-year period, provided that the design is new and distinctive.

The owner of a registered (certified) design can prevent others from making, importing, selling, hiring or using a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design. However, a registered design does not ensure that the product can be used commercially because earlier third-party design rights may be infringed and thus act as obstacles to commercialisation.

A design application should be filed before publicly disclosing (or commercially using) a new product. If disclosed (or used commercially) prior to filing a design application, valid protection may not be available in most countries of the world, including Australia.

The design registration process usually begins with initially filing a design application in Australia. In most instances, the applicant can then defer filing in other countries of interest up to 6 months of the Australian filing date without jeopardising their future design rights in those countries.

Product designs can be registered on a country-by-country basis by filing a separate national application in each country of interest, usually within 6 months of the Australian fi ling date so that the Australian filing date is assigned as the filing date for the filing/s overseas. However, a product design can be registered for the whole European Union by filing a single Community Design application. Generally speaking, after filing a design application directly in each country, the application may be examined by the national designs office and, if found to comply with all legal requirements, may be allowed to pass to registration. Fees may be payable over the term to keep the registration in force. Note that in Australia the design need not be examined. However, the owner of an unexamined design registration is unable to commence infringement proceedings, or threaten infringement proceeding, against an alleged infringer until the design registration has been certified following examination. Australian patent attorney costs from filing to registration may be in the order of $1,000-$3000, with a further $1,000 to keep the patent in force for the 10-year period.

 Links

 IP Australia: http://www.ipaustralia.gov.au/get-the-right-ip/designs/
 More information about designs: http://www.cullens.com.au/aus-nz-clients/designs/

 Click to read relevent case studies and Q&A's

  CASE STUDY by Cullens Patent and Trade Mark Attorneys
www.cullens.com.au

Company X developed new innovative food packaging and, because of its potential commercial worth, decided to file for dual forms of protection – both a patent application and a design application. Following a couple of years of commercial success with the packaging, Competitor Y began importing exact copies of the packaging from Taiwan. Company X requested examination of its registered design and the product design was found to be both novel and distinctive, so was certified. The certified registered design was then enforced in a court of law against Company Y. Company X was successful in obtaining an injunction, damages, legal costs, and stopping Company Y from importing and selling any further infringing product. Company X, in this instance, found the registered design to be preferable over its patent right.

Developed in conjunction with Gint Silins, Cullens Patent and Trade Mark Attorneys g.silins@cullens.com.au

 Q&A

Q: What notation should I use if my design has been registered?

A: After registration, words such as “registered design” or “reg’d” should be used in relation to products bearing the design. While such marking is not mandatory, it is recommended as it may prevent an infringer from claiming that its infringement was innocent.

Q: Can I register a product in Australia that is purely functional in nature?

A: Yes, but the protection would be limited (and very restrictive) to the visual appearance of the product. A registered design only provides protection for the overall visual appearance of a product and does not protect the functionality of a product. Patent protection is recommended for protecting products that are purely functional.

Q: Can I enforce my design once registered?

A: No. A design is registered without substantive examination (i.e. of its newness and distinctiveness). The owner is not able to enforce the design until the design has passed substantive examination and a Certificate of Examination has been issued by the Designs Offi ce. Examination can be voluntarily requested by the design owner or a third party.

Q: Should I search for third-party registered product designs before using my product commercially, or even before finalising the design of my product?

A: Yes, and it’s better to do it before you finalise the design of your product. If you finalise the design of your product and it turns out that someone else already has an enforceable registered design that looks the same or suffi ciently similar to yours, they could potentially stop you from selling your product. Or, if you have already sold some of your products, you could potentially be required to pay them compensation (i.e. damages or an account of profi ts). Rather than risk having to pay this compensation to someone else, and potentially also being left with a quantity or inventory of products that you cannot lawfully sell, it’s much better to do design searching first to make sure that nobody else has a current design registration that would conflict with your product. Also, the benefit of doing design searching before you finalise the design of your product is that, if there is a potentially conflicting design owned by someone else, you may be able to make changes to your product to get around it.

Q: At what stage should I register my product design?

A: Before the product (or the design of the product) is publicly disclosed in any way. If you begin selling your product or if you otherwise publicly disclose the design of the product in any way before you apply to register the design, then in most circumstances (and under the law in most countries) any registration for the design of your product would be invalid and unenforceable.

Q: Can I register the design of a product that I have already been selling in Australia?

A: In most case the answer will be ‘no”. If you begin selling your product or if you otherwise publicly disclose the design in any way before you apply to register the design, then under Australian law any registration for the design is likely to be invalid and unenforceable. However, there may be exceptions, so you should speak with a patent attorney.

Q: What notation should I use if my design has been registered?

A: After registration, words such as “registered design” or “reg’d” should be used in relation to products bearing the design. While such marking is not mandatory, it is recommended as it may prevent an infringer from claiming that its infringement was innocent.

Q: Will copyright protect my product design?

A: Your product design can be copyright protected. Under certain circumstances, however, any copyright protection can become unenforceable if your product is commercially produced. Under such circumstances, registered design protection is a better alternative.

Q: Can I register both a product design and a patent?

A: It is possible to protect your product with both registered design and patent protection. If you wish to apply for dual protection, it is important that both forms of protection are applied for (particularly design protection) before there is any public disclosure of your product design.

Q: Will a design registration protect the way my product works?

A: A design registration protects features or appearance of a product (or part of it), namely its shape, configuration, pattern or ornamentation. It will not provide protection in relation to the construction or function of your product.

This article is intended to provide general information only. The contents should not be relied upon as detailed legal advice for any specific case. While every effort has been made to ensure that the contents are correct at the time of publication, please note, the relevant laws and practice are subject to change. Specific advice should be sought from your legal advisor.

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