Gear­ing and Pro­tect­ing Intel­lec­tu­al Prop­er­ty for the World Market

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.

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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 coun​tries​.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 régime 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.