Protecting your intellectual property

David Brett

Protecting your intellectual property (IP) and other intangible assets such as your cohort of employees or business networks, which relate to the way you do business, can be crucial to maintaining your competitive advantage. In this article we look at some of the steps you can take to protect your trademark(s), business name and or domain name.

Do you need to register a trademark?

Consumers make choices everyday. Some of those choices may have been influenced by advertising or branding. Sellers understand that having fewer choices usually correlates with greater selling efficiency and facilitates consumer decision-making. Branding is but one tool sellers use to reduce or simplify a consumer’s choices and can represent a significant business investment. Registering a trademark is one of the tools you can use to protect that investment.

Trademarks

The legal term used for a brand is “trademark”. Section 17 of the Trade Marks Act 1995 (the Act) defines a trademark as “…a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”

Section 6 of the Act provides that a "sign" includes “… any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.”

It costs a great deal of money to establish consumer recognition of the “sign” used by your business and failure to stake steps to protect that investment makes it easier for your competitors to take advantage of your business reputation (which could amount to “passing off”) without necessarily having to invest the time and effort that you have.

The tort (wrongful act) of ‘passing off’ is a common law cause of action / remedy available to you when in the course of trade a competitor wrongly suggests or implies a connection with your goods or services and there is damage (i.e. financial loss), or a threat of damage to the proprietary interests in the reputation or goodwill that you have established.

A trademark is best protected when registered as a trademark with IP Australia. Registering a trade mark offers you exclusive rights and can be a powerful tool in distinguishing and promoting your goods and services in a competitive market.

However, registering a Business Name with ASIC or a Domain Name with a registrar or re-seller listed on the .au Domain Administration Ltd (.auDA) website, does not necessarily give you the exclusive right to use those names and you may want to seek additional trademark protection.

Business names

If you wish to continue using a business or trading name after 31 October 2018 (other than your own name or your company’s legal name), you will have to register the businesses name with ASIC. Carrying on a business under an unregistered business name may be an offence (s 18 Business Names Registration Act 2011).

Other than being a sole trader, the most common business structure used by small businesses in Australia is generally either: a company, a partnership or a trust. When a company is incorporated (s 117 of the Corporations Act 2001), you may select a name or you can merely use the Australian Company Number (ACN) allocated by ASIC (s 118).

However, registering a business name with ASIC does not guarantee you the exclusive use of that name. The Business Names Registration (Availability of Names) Determination 2015 specifies the rules for determining whether a business name is available for registration and these rules are not the same as those applied by the trademark examiner.

Domain names

Having an online presence is now considered crucial for most businesses, whether existing or new. A domain name gives your businesses a unique electronic address; however, it is not a trademark nor is it a business name. Your domain name directs online visitors to your website.

Section 113 of the Telecommunications Act 1997 provides examples of matters that may be dealt with by industry codes and industry standards and .au Domain Administration Ltd (auDA) is the policy authority and industry self-regulatory body for the .au domain space.

The auDA policy provides that there are no proprietary rights in the domain name system (DNS). A registrant does not “own” a domain name. Instead, the registrant holds a licence to use a domain name. The auDA policy also provides that domain names are provided on a first come, first-served basis.

This has led to what is sometimes referred to as ‘Cybersquatting’ or ‘Domain name squatting’ i.e. the “...registering, trafficking in, or using an Internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else” (Wikipedia). This includes registering a domain name for the express purpose of onselling.

If you suspect that someone is infringing your trademark or copyright; or has registered a domain name to take advantage of your company name or business name, you need to take action quickly.

As the owner of IP rights, it’s your responsibility to ensure you enforce them. IP Australia does not take action to defend or assert rights in or to a trademark; that is the IP owner’s responsibility. Because the cost of initiating infringement proceedings may be considered prohibitive, some IP owners take out an IP insurance policy in order protect their business and to cover the cost of legal proceedings in the event that enforcement action is required.

In some instances there may be alternative dispute resolution (ADR) mechanisms such as an independent arbitration process, designed to be more rapid and provide a cheaper alternative to commencing litigation; however, even if ADR is available, the process will inevitably incur some costs.

For a preliminary discussion in relation to an application to register a trademark, difficulties encountered in registering your proposed domain name, or you suspect that your IP rights are being infringed in some way, please contact David Brett at DTCH Lawyers.