Doing Business in Australia 2013: Intellectual Property

“Australia has comprehensive laws protecting intellectual property, including copyright, trade marks, patents for inventions, registered designs, circuit layouts, plant breeders’ rights, trade secrets and confidential information, and domain names..”

Conformity with international IP laws

Australia’s intellectual property laws reflect its trade and treaty obligations. Australia is a signatory to the main international treaties affecting intellectual property rights, including the World Trade Organisation Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement) which provides minimum standards for intellectual property protection.

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 has made changes to copyright, trade mark, patent and design laws which are effective from April 2013. These changes are expected to simplify the intellectual property system, reduce delays in trade mark and patent prosecution as well as introduce developments in a number of other areas.

Copyright

Copyright protects the form of expression of an idea and therefore can subsist in a wide range of common business materials such as databases, tables, reports, letters and emails, software and computer manuals (defined as literary works under Australia’s Copyright Act 1968 (Cth) (Copyright Act)) and drawings, maps, diagrams and flow charts (defined as artistic works under the Copyright Act). It can also subsist in sound recordings, cinematograph films, television and sound broadcasts.

In Australia, copyright protection does not require registration or other formalities but arises upon creation of the relevant work or subject matter.

For literary and artistic works, a copyright owner has the exclusive right to reproduce, publish, communicate to the public (including via email or making it available online) and, subject to some exceptions, to prevent others from doing any of these things. 

There are specific exceptions for computer programs which permit copying to make interoperable software, to correct errors and to test the security of information systems. The Copyright Act also allows the making of back-up copies of computer programs.

Australia, along with 165 other countries, is a contracting party to the Berne Convention on copyright which requires member countries to provide a minimum level of copyright protection and to provide equal treatment to works first published in, or created by nationals of, other member countries. This means that infringement action will be available in Australia in respect of works protected under the copyright laws of most other countries.

Trade Marks

A trade mark is a sign such as a brand name (eg HDY) or symbol which is used to distinguish the trade source of goods and services provided by one person from another. 

Under Australia’s Trade Marks Act 1995 (Cth), the holder of a registered trade mark is granted the exclusive right to use the trade mark throughout Australia in relation to the goods or services for which it is registered. A registered trade mark is personal property and can be assigned. It can also be licensed. All Australian registered trade marks are recorded on the Australian Trade Marks Office Registry. 

Intellectual property rights can also arise in Australia in respect of unregistered trade marks through continued use (ie the mark is so associated with the user that it would be a misrepresentation to the public for another person to use it in relation to the same or similar goods or services). These rights are enforceable through an action for passing off or for misleading or deceptive conduct under the Australian Consumer Law, in Schedule 2 to the Competition and Consumer Act 2010 (Cth). 

Patents

A standard patent is a limited term monopoly granted under the Patents Act 1990 (Cth) for an invention 
(in broad terms, a product, process or method) which is novel (not used or disclosed), involves an inventive step and is useful. 

A patent can be for products (eg pharmaceuticals) and for processes (eg method of pest control). Some business systems and software are patentable in Australia. 

To obtain the monopoly rights to an invention it must be filed and sealed as a patent by the Australian Patents Office.

Designs

Under the Designs Act 2003 (Cth) a design is defined to mean the overall appearance of a product resulting from one or more visual features of the product. The registered owner of a registered design has the exclusive right in Australia during the term of the registration, to (in broad terms):

  • make a product which embodies the design
  • import such a product into Australia for sale or use for the purposes of any trade or business
  • sell, hire or otherwise dispose of such a product; and
  • use such a product in any way for the purposes of any trade or business.

A person infringes a registered design if they do any of the above without the licence or authority of the registered owner. There are some exceptions to this. 

Domain names

.au Domain Administration Ltd (auDA) is the policy authority and industry self-regulatory body for the .au domain space. It has been endorsed by the Australian Government (which holds reserve powers in relation to domain names under the Telecommunications Act 1997 (Cth)) and is recognised by the Internet Corporation for Assigned Names and Numbers. 

There are a number of second level domains, the more common being .com.au, .gov.au, .edu.au and .org.au. 

By registering a .au domain name, the registrant acquires a licence to use the name for the period of the registration.

auDA publishes policies governing the registration and use of .au domain names. For example, a .com.au domain name is only available to commercial entities or registered trade mark holders and must be connected with the registrant (preventing the practice of “cybersquatting”). A detailed dispute resolution policy sets out the process for resolving disputes over registration of .au domain names.