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Doing Business in Australia | Intellectual property

5 mins  15.05.2018

Australia’s laws provide comprehensive protection for intellectual property, including copyright patents for inventions, trade names and trademarks, domain names, trade secrets and confidential information, and registered designs.


Key takeouts


Copyright arises automatically on creation of a work and generally continues for 70 years after the death of the author.
A standard patent confers on the patentee the exclusive right to exploit commercially the patented invention for a term of 20 years.
Australia protects reputation and goodwill in names through passing of law and consumer protection laws that prohibit misleading commercial conduct.

Overview

Australia’s laws provide comprehensive protection for intellectual property, including copyright patents for inventions, trade names and trademarks, domain names, trade secrets and confidential information, and registered designs.

Australia’s intellectual property laws meet its international trade and treaty obligations (for example, under the General Agreement on Tariffs and Trade and the TRIPS Agreement) and have also been amended in the light of the free trade agreement between Australia and the USA.

Australia’s intellectual property laws address the significant developments in technology and the internet, primarily through provisions of the Copyright Act.

Copyright

Copyright is the exclusive right to reproduce, publish, perform, communicate and adapt original literary (including computer programs), artistic, dramatic and musical works, together with other protected subject matter such as films and sound recordings. Australia’s copyright laws also provide for the protection of moral rights, which give authors both the right of attribution and the right to have copyrighted works treated with integrity.

Copyright arises automatically on creation of a work and generally continues for 70 years after the death of the author. Australia is a member of the various international conventions on copyright and so affords reciprocal protection for copyright recognised in other member countries.

The Copyright Act has been through a number of reforms to address copyright issues arising in the ‘internet age’ and as a result:

  • protects copyright owners from the unauthorized digitisation of their works and unauthorised communication of their works over the internet and other electronic means
  • limits the liability of internet service providers and software manufacturers for copyright infringement by users of their facilities and software, and
  • prohibits the making, sale, distribution and use of circumvention devices for the purpose of circumventing a technological protection measure.

Prohibition of unauthorised imports is subject to significant exceptions. The Copyright Act permits the parallel importation of overseas published books and sound recordings, as well as, more recently, electronic literary and music items and computer software.

Patents

A standard patent confers on the patentee the exclusive right to exploit commercially the patented invention for a term of 20 years. Recent legislative changes have aligned Australia’s criteria of patentability for standard patents more closely with international standards. A number of patent law reviews are also currently underway, including whether the threshold for patentability should be raised for innovation patents to the same level as standard patents.

The invention must be detailed in a specification (which may be provisional, later followed by a complete specification) describing the invention and concluding with claims that determine the ambit of the monopoly afforded by the patent.

The invention must be novel and amount to a manner of manufacture as that phrase is understood. The invention must also involve either an inventive step (for a standard patent) or an innovative step (for an innovation patent). The specification must be clear and not ambiguous and the claims fully supported by the information disclosed in the specification.

Trade names and trade marks

Australia protects reputation and goodwill in names through passing of law and consumer protection laws that prohibit misleading commercial conduct.
In addition, Australia has a registered trade mark system for names, logos, devices, sounds, smells, colours and shapes that distinguish the goods or services of an owner from those of other owners.

Australia follows the international system of classification of goods and services. Early trade mark registration is desirable for those seeking to enter the Australian market. Australia also has a federal system for registering business names for persons carrying on business under a name other than their own name or company name.

Registered designs

The Designs Act provides for the registration and protection, for a period of up to 10 years, of any design that is both ‘new’ and ‘distinctive’. A design is the ‘overall appearance of a product resulting from one or more visual features of a product’, including shape, configuration, pattern and ornamentation.
Registration in Australia requires that the design be novel and not have been publicly used in Australia or published in a document anywhere in the world prior to applying for registration in Australia.

A person infringes a registered design if they deal in certain ways with a product that embodies the design or a substantially similar design. A defence applies for spare parts, allowing third parties to manufacture legitimate spare parts for complex products without infringing the registered design in the complex product.

Domain names

Various classes of domain names ending in .au may be registered. Domain names ending in .com.au and .com are the most popular as addresses for commercial entities operating in Australia.

For a .com.au domain name, a substantial and close connection must exist between the commercial entity and that entity’s domain name, which can be demonstrated by reference to the trade marks, ‘nicknames’ or acronyms of an entity not just its company or business name.

Registration of a .com.au domain name does not create any proprietary rights in the name. Australian courts will, however, recognise rights in domain names where there is a reputation or goodwill in the name (see trade names and trade marks).

Trade secrets and confidential information

Both through contract and where information is imparted in confidential circumstances for a limited purpose, effective protection can be provided for technical know how, customer lists and other confidential information against disclosure and use for an unauthorised purpose.

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