Katarina Klaric, Principal, Stephens Lawyers & Consultants
Intellectual Property is one of the core assets of many businesses. Trade marks or brand names represent the identity of the business and goods or services supplied and are one of the most valuable marketing tools. Domain names linked to the business’s website, have become more valuable than real estate, with the exponential growth in the use of digital platforms, search engines and on-line retail marketplaces.
A business’s website, including graphic designs and user interfaces, photographic images and marketing and advertising videos, all of which are protected by copyright and/or design laws, are the on-line interface between the business and consumers.
The global availability of search and display advertising services via digital platforms and on-line market places, have enabled businesses to reach larger markets and attract global customers. Significant reputation in a trade mark or brand name can be built through the use of advertising services of Google and other digital and social media platforms such as Facebook, Instagram, YouTube, TikTok, resulting in increased sales and revenue – increasing the value of the intellectual property of the business.
However, the internet and on-line digital market places also provide an environment and tools which allow counterfeiters and scammers to proliferate. Infringing activities with poor quality or unsafe imitations can tarnish the reputation of the brand, lead to market erosion and result in erosion in revenue.
Strategies for the maintenance and protection of trade marks, brand names, domain names, designs, patents and copyright material are critical for maximizing the value of the intellectual property and resulting revenue. There is not one ‘strategy’ which fits all intellectual property and digital markets. Strategies have to be developed and reviewed with changes in the on-line digital marketplaces including laws protecting intellectual property rights and regulating those markets.
This update provides an overview of some of the strategies that businesses can consider implementing for the maintenance and protection of their intellectual property rights in the on-line digital market environment and generally.
Strategies for Intellectual Property Maintenance and Protection
- Understanding What is Intellectual Property and Scope of Protection
The legal framework for the protection of intellectual property is complex covering trade marks, designs, patents and confidential information/trade secrets. Identifying the most effective way of securing protection for intellectual property that has been developed by the business requires consideration of factors including the nature of the product, lifespan of the product, scope for commercialization and relevant markets, the different options for intellectual property protection and the scope, duration and costs of protection. This often requires the engagement of lawyers with expertise in intellectual property protection and commercialization, particularly where the business does not have staff with this capability. The failure to seek expert advice can be fatal when it comes to seeking to establish ownership of intellectual property rights and enforcing those rights.
Case Example
| The Australian fashion designer, Ms. Katie Taylor, who was born Katie Jane Perry, was partially successful in her trade mark infringement case against the companies associated with the singer, Ms. Hudson, who had adopted the stage name “Katy Perry” in 2002.
Ms. Taylor had registered the trade mark “Katie Perry” in class 42 for “clothing and designing services” in September 2007. At that time, she did not appreciate that scope of trade mark protection was related to the classes of goods and services in which the trade mark was registered. Ms. Taylor also allowed the class 42 registration to lapse when she applied to register the “Katie Perry” trade mark for clothing in class 25. Thus, limiting the scope of her trade mark protection. The Court, in determining Ms. Taylor’s claim for trade mark infringement, had to consider whether the merchandise that was being sold in Australia under the “Katy Perry” mark by companies associated with the singer, “Katy Perry”, were clothes or goods of the same description. The court held of the disputed categories of merchandise – footwear or shoes, headwear or hats, decorative masks and headgear, novelty jewelry, handbags and purses, bags and backpacks – were not clothes or goods of the same description as clothes[i] and accordingly the use of the “Katy Perry” trade mark in relation to these categories of goods was not a trade mark infringement[ii]. |
- Staff Training and Education in Intellectual Property
Staff training and education in relation to the basics of intellectual property ownership and protection is important to ensure that intellectual property ownership remains with the business and that the business does not make unauthorized or infringing use of third party intellectual property.
- Intellectual Property Audit and Review
Regular audits and reviews of the business should be undertaken by an intellectual property expert to identify all intellectual property that is owned or licensed by the business, how it is protected and commercialized, and adequacy of protection and risks of unauthorized use or infringement.
Intellectual Property audits and reviews enable businesses to identify gaps in their systems for the protection of intellectual property and make changes to remedy these gaps and maximize the value of their intellectual property
- Intellectual Property Register
The business should keep and maintain an up to date register of all the intellectual property that it owns or licenses from to third parties. The intellectual property register should include details relating to the authorship and ownership of the relevant works and intellectual property, registration details, licence agreements, renewal and expiry dates. The register should also identify any issues concerning ownership and validity of intellectual property rights, third party rights and/or claims, moral rights and potential risks associated with unauthorized use or infringement.
- Trade Mark Watch and Monitoring
An on-going watch of the third party trade mark applications, company and business name registrations and domain name registrations for substantially identical or deceptively similar names to those owned and registered by the business allows for early detection of potentially conflicting trade marks or infringing activities by competitors or imitators.
Businesses can file an opposition proceeding with IP Australia, Registrar of Trade Marks, opposing the registration of substantially identical or deceptively similar trade marks. Businesses can also apply to ASIC, company regulator, to have offending company names or business names cancelled. In addition, businesses can dispute the third party domain name registrations and have the offending domain name cancelled.
The failure to monitor for conflicting marks can result in a competitor’s trade marks being registered, leaving the business with no option but to take court action to have the conflicting trade mark removed from the register.
Case Example
| MacDonald’s took Federal Court proceedings against Hungry Jack seeking injunctive relief, the cancellation of the “Big Jack” registered trade mark, destruction of all advertising material and packaging containing “Big Jack”. MacDonald’s alleged that Hungry Jack has since July 2020 been using the “Big Jack” trade mark which is substantially identical to or deceptively similar to “Big Mac” trade mark which has been registered since 1973. MacDonald’s also alleged that Hungry Jack acted in bad faith in registering the trade mark.
Hungry Jack applied to register the trade mark “Big Jack” in class 29 and 30 on the 14 November 2019 and the mark was accepted for registration and advertised on 14 April 2020 and the registration was published on 22 June 2020. No opposition was filed during the trade mark opposition period. |
On-line monitoring of digital platforms and digital market places including the use of AdWords by competitors can assist in detecting infringing activities before these adversely impact on brand reputation, result in sale losses and diminished revenue and intellectual property values.
- Some Proactive Measures to Protect Intellectual Property
In addition to the registration of business names, domain names, trade marks, designs and patents, businesses can also contractually protect their intellectual property through confidentiality agreements, ownership of intellectual property agreements, employment agreements and licence agreements.
In the case of digital copyright works such as computer programs, artistic and musical works, photographic images, films and other audio visual works, businesses can also implement technological measures to protect the works from unauthorized use or copying, such as – password protection, encryption and read only files and the use of watermarks and flags/other markers that assist in identifying unauthorized use and copying.
All trade marks, copyright works, designs and inventions for which intellectual property ownership is claimed should include appropriate IP notices, to indicate that they are registered or subject to copyright or other intellectual property protection. The IP notices must comply with the relevant laws.
- Dealing with Intellectual Property infringement or Unauthorized Use
How a business responds to infringement or unauthorised use of its intellectual property requires consideration of a multitude of factors including the infringing activities, the parties involved, the impact on the business and the costs of taking enforcement action to stop the illegal activities. Intellectual property litigation can be very expensive and complex. In some cases the costs of IP litigation can exceed the benefits.
Strategies and response plans for dealing with infringing or unauthorized use of a business’s intellectual property may include-
- IP insurance to cover the costs of responding to infringement activities and taking legal action for infringement including court proceedings for orders to stop the illegal activities and payment of compensation.
- On-going monitoring of on-line digital platforms and market places.
- The use of take down notices which are issued to operators and/or owners of on-line platforms and market places for removal or take down of websites involved in infringing activities or for the removal of infringing content .
- Selective enforcement activities to deliver messages that the IP owner will not tolerate infringement or unauthorized use of its IP. These activities should be supported by appropriate media coverage and messaging.
- The use of Australian Border Force (“ABF”) to seize goods which have been manufactured outside of Australia and imported into Australia where the goods are counterfeit or infringing goods. Both the Australian Trade Marks Act[iii] and Copyright Act[iv] include mechanisms for Trade Mark and Copyright owners to request Australian Border Force to seize counterfeit or infringing goods by lodging a Notice of Objection to importation of those goods into Australia.
Disclaimer: This article is not intended to be a substitute for obtaining legal advice.
© Stephens Lawyers & Consultants. 12 June 2023; Authored by Katarina Klaric, Principal, Stephens Lawyers & Consultants
For further information contact:
Katarina Klaric
Principal
Stephens Lawyers & Consultants
Melbourne Head Office
Suite 205, 546 Collins Street, Melbourne VIC 3000
Phone: (03) 8636 9100
Sydney Office
Level 29, Chifley Tower, 2 Chifley Square, Sydney, N.S.W. 2000
Phone: (02) 9238 8028
Email: [email protected]
Website: www.stephens.com.au
All Correspondence to:
PO Box 16010 Collins Street West Melbourne VIC 8007
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[i] Taylor v Killer Queen LLC & Ors. [2023] FCA 364, [292]-[377]
[ii] Ibid, [583]
[iii] Sections 132-137 Trade Mark Act 1995 (Cth)
[iv] Section 135 Copyright Act 1968 (Cth)