Section 13 of Doing Business in Australia
In Australia, intellectual property rights are protected by federal legislation and the common law. Australia is also a signatory to the World Trade Organization Agreement on Trade-related aspects of Intellectual Property Rights (TRIPS) which sets minimum standards for intellectual property protection and enforcement.
The Copyright Act 1968 (Cth) (Copyright Act) protects all original literary works, dramatic works, musical works, artistic works, sound recordings and films broadcast or published by an Australian or first published in Australia. Under the Copyright Act, copyright protection is automatic and does not require registration. Because of its history, the Copyright Act refers to creators generally as ‘authors’; literary, dramatic, musical and artistic works are protected for the life of the author plus 70 years. If the works are published after the death of the author, they are protected for 70 years after first publication. As of early 2019, ‘orphan works’ (works by unknown authors), and sound recordings and films, are protected for 70 years from first publication, or 70 years from creation if they have not been made public. Australia is also a signatory to the Berne Convention for the Protection of Literary and Artistic Works which provides for ‘national treatment’ (works of Australian authors must be treated in the same way as other signatory country’s author’s works), and sets minimum rights to works first published in or created by citizens of other member countries, including moral rights (to attribution and non-derogatory treatment of a work).
The Trade Marks Act 1995 (Cth) enables any owner to register a mark or sign used in connection with their goods or services.
The owner of a registered trade mark has the exclusive right to use, and authorise others to use, the trade mark for 10 years (which is renewable, potentially indefinitely).
Unregistered trade marks may be protected by the tort of passing off and the misleading and deceptive conduct provisions of the Competition and Consumer Act 2010 (CC Act) discussed below. These are akin to unfair competition law or antitrust principles in other jurisdictions. Whereas previously, trade marks had to be registered for at least 5 years before being susceptible to removal for non-use, on 24 February 2019, the law changed so that unused trade marks may be removed after 3 years of registration. Foreign companies planning to register a trade mark in Australia should seek legal advice about the impact of these changes.
Australia is one of the107 members of the Madrid Protocol which establishes an international system for the registration of trade marks. Under the Madrid Protocol, an applicant for a trade mark may designate Australia as a country in which protection is sought; following successful local examination, the trade mark is registered in Australia.
A foreign company should check whether its trade marks have already been registered in Australia by virtue of a Madrid Protocol registration before exploring registration here. Under the Paris Convention for the Protection of Industrial Property, it may be possible to claim the same priority date as overseas applications if filed in Australia within 6 months. Foreign companies should consider acquiring registration for their trade marks in Australia prior to the commencement of any dealings.
The Patents Act 1990 (Cth) enables an inventor, or a person entitled to be assigned the invention, to apply for a patent for a device, substance, method or process which is novel and involves an inventive or innovative step. Like the trade marks system, patents is a registration-based form of rights protection, in which applicants may be granted a standard patent for up to 20 years (or up to 25 years for a pharmaceutical patent), with annual renewal fees payable.
Following recommendations by the Productivity Commission in 2016, the innovation patent system in which applicants could be granted patent protection for “second tier” inventions (for a maximum of 8 years) are being phased out. The last day new innovation patents can be filed will be 25 August 2021. Any existing innovation patents filed on or before this date will continue until their expiry. This means that the last innovation patent in Australia will expire on 25 August 2029. Australia is one of 153 members to the Patent Cooperation Treaty, which establishes a streamlined, international system for obtaining patent protection in member states.
The Designs Act 2003 (Cth) (Designs Act) enables the owner of a “new and distinctive” design to apply for the exclusive right to use or authorise the use of the design through a registration system. “New and distinctive” means a design that looks different in comparison to other products available on the market, and that has not been publicly disclosed or advertised before the application is filed, except at an internationally recognised industry exhibition. The Designs Act protects the visual appearance (not the function) of the design for up to 10 years.
Australia is also a party to the Paris Convention for the Protection of Industrial Property (Paris Convention), which applies to design registration overseas. Under the Paris Convention, the filing date for an Australian design application may establish priority for corresponding design applications made overseas if pursued within six months of filing the Australian application.
There is no unregistered design right in Australia and copyright does not protect designs that should have been registered under the Designs Act. Australian courts have held that only very limited protection of designs is available under our equivalent of unfair competition laws. Foreign companies wishing to protect their designs should apply for a design registration before the designs are published or released elsewhere or within six months of applying to register their designs in their home markets.
There is no Australian legislation that specifically protects confidential information. Rather, protection comes from a common law doctrine that recognises an obligation to keep information secret in circumstances where a person communicates information to another on the express or implied understanding that the information is for a restricted purpose. Legal remedies are available where an unauthorised disclosure of confidential information causes detriment to the original discloser. A combination of contractual and where applicable, physical and technological mechanisms, to maintain secrecy is often recommended to bolster companies’ safeguarding of their confidential information (and better their chances at achieving legal remedies if things do go awry). It is important to seek legal advice to ensure that appropriate written agreements are in place to protect such information.
The most relevant domain names to Australian businesses are .com.au domain names. These are licensed by a small number of accredited Australian registrars on a “first come, first served” basis. However, applicants must also satisfy eligibility and allocation requirements. They must:
- have an Australian connection (which includes either (i) being an Australian registered company, (ii) being a registered foreign trader in Australia, or (iii) owning an Australian registered trade mark);
- seek the domain name for an appropriate commercial purpose; and
- have a genuine intention to use it.
There must also be a “close and substantial” connection between the domain name and the name or business activities of the applicant.
The .au domain space is regulated by auDA (.au Domain Administration Limited) on behalf of the Australian Government. auDA has imposed stiff regulations on the use of .com.au domain names to limit the problem of cyber-squatting and to better protect the rights of business name and trade mark owners. It has also established a specialised dispute resolution procedure for conflicts over .com.au domain names.
Other domains available in Australia include: asn.au; . net.au; and .org.au.
auDA is expected to launch registrations for second level domain name .au in 12 April 2021. The .au domain names will be licensed in substantially the same way as other Australian domain names such as the com.au and .org.au domains, with 3 key changes:
- a new expansive concept of ‘Australian Presence’ is introduced setting out 17 different eligibility categories – each domain name registrant will have to satisfy the requirements of at least one such category;
- if the registrant relies on trade mark rights to satisfy the ‘Australian Presence’ eligibility criterion, then the trade mark must be a word mark or incorporate words and remain pending/validly registered throughout the domain name licence period. This means that registrants will not be able to rely on logo marks without any verbal elements to establish their eligibility to hold the .au domain name; and
- if the registrant relies on trade mark rights to satisfy the ‘Australian Presence’ eligibility criterion, then the domain name applied for must be an exact match of that word mark (or word(s) within the mark). Thus, a foreign entity not otherwise trading in Australia but holding an Australian trade mark ABCD will not be entitled to register the domain name WXYZ;
Competition and Consumer Act 2010 (Cth) (CC Act)
In addition to specific legislation enacted in relation to intellectual property rights, the CC Act contains the Australian Consumer Law (ACL), which provides additional grounds upon which to protect such rights. Certain provisions can be utilised by intellectual property rights owners to prevent misleading or deceptive conduct and/or false representations by a third party. These provisions are often likened to the common law tort of passing off and unfair competition/ antitrust legislation in other jurisdictions.
Recent legal changes
There have recently been a number of important changes to Australia’s intellectual property laws, including changes to:
- the phasing out of the innovation patent system;
- the duration of copyright in certain circumstances;
- parallel importation and site blocking laws.
We will assist our clients to navigate the implications of these changes for their businesses.
This guide is current as of April 2021.