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9 December 2015 Gearing and Protecting Intellectual Property for the World Market

By Eric Ziehlke, Partner

In Brief
 

Trade has been a big focus for the Australian Government in recent months. Newly minted bi-lateral and multi-lateral international trade agreements are in place, which are sure to open up greater export and investment opportunities for Australian companies. However, if you want to participate, can you be sure your intellectual property is protected?  It is important that Australian suppliers fully protect their IP rights in those overseas markets - in relation to trademarks, patents and designs, and copyright.

The only sure way to protect brand names and logos overseas is to register them as trade marks in each jurisdiction in which the supplier operates. Patents for inventions are registered on a country-by-country basis. As a general principle, copyright cannot be registered and rights of copyright created in one country can apply worldwide under various international agreements.


Introduction

Australia's recent round of bi-lateral and multi-lateral international trade agreements have presented Australian suppliers with expanded export and investment opportunities in the world market. However, it is important that Australian suppliers fully protect their intellectual property rights in those overseas markets.

Trade Marks

The only sure way to protect brand names and logos overseas is to register them as trade marks in each jurisdiction in which the supplier operates. The introduction of an international registration system under the Madrid Protocol has simplified and reduced the cost of such overseas trade mark registration.

Dangers can arise when initial promotional work is carried out in overseas countries before a trade mark application is filed. Competitors and even distributors could conceivably "steal" suppliers' trade marks by registering them in their own names. It is therefore important for suppliers to apply for registration of trade marks before they commence business in overseas markets. The trade mark rights of suppliers should be clearly specified in all distribution agreements and distributors should be required to protect those trade mark rights in the relevant countries.

Trade mark registration should cover all relevant classes of goods and services and suppliers should consider registering not only their brand names but also the transliterations of those brand names in the local language. It is also important to be aware of local legislation which may vary from Australian trade mark law. In China, for example, it is possible to infringe the trade mark rights of others merely by manufacturing in China, even though the goods bearing the trade mark are not sold in China.

Patents and designs

Patents for inventions are registered on a country-by-country basis.However, if an Australian supplier wishes to seek patent registration overseas, it is possible to file an international application under the Patent Co-Operation Treaty ("PCT") which involves a single search of prior patents and technical literature rather than separate searches through each of the relevant countries. The PCT system simplifies overseas patent registration and is applicable to approximately 150 countries.

One of the key characteristics of a patentable invention is that of novelty. As a consequence, the disclosure to the public of an invention in one country can effectively destroy the novelty of that invention in a number of countries.In Australia, there is available a 12 month legislative "window" under which an invention can be disclosed to the public without destroying the novelty of the invention in Australia. However, such "windows" do not apply in a number of overseas countries. As a result, disclosure in Australia can destroy the novelty of an invention in some overseas countries, even though novelty is maintained in Australia.

Design registration for manufactured products is available to products with "new and distinctive" visual features. Designs, like trade marks and patents, are registered on a country-by-country basis. It is important not to disclose to the public such designs in Australia as this can destroy the novelty of the design. However, unlike patents, no equivalent "window" is available in Australia for disclosure of such novel designs to the public. As a consequence, such disclosure in Australia can lead to the destruction of the registrability of that design in Australia and overseas.

Copyright

Copyright may subsist in a variety of works and non-works such as books, photographs, drawings, cinematographic films, computer software etc. As a general principle, copyright cannot be registered and rights of copyright created in one country can apply worldwide under various international agreements. This lack of a copyright registration regime places particular importance on the necessity for suppliers to fully document the timing, authorship and nature of the various works and non-works in which they hold copyright.

Rights in copyright can be particularly effective because of their international character. Whereas it may be possible for others to "steal" a trade mark logo by registering it as a trade mark in another country, such registration and use can involve an infringement of copyright because of the copyright which subsists in the artistic design of such a trade mark logo.

Conclusion

In the same way that it is important for suppliers to ensure that their intellectual property portfolio is in order in Australia, it is equally important to take the same precautions in overseas markets. The time to do that is before commercialisation commences in those countries, otherwise intellectual property rights can be irretrievably lost.

For further information, please contact:

Eric Ziehlke, Partner  |  Phone: +61 2 9233 5544  |  Email: ejz@swaab.com.au

If you would like to republish this article, it is generally approved, but prior to doing so please contact the Marketing team at marketing@swaab.com.au

This article is not legal advice and the views and comments are of a general nature only. This article is not to be relied upon in substitution for detailed legal advice.

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