MARCH 2019 LEGAL UPDATE: INTELLECTUAL PROPERTY PROTECTION
This month, we’re looking at Intellectual Property Protection in Australia and Internationally!
Check out our latest Legal Update on our YouTube channel here:
The information contained in this communication does not constitute advice and should not be relied upon as such. Professional advice should be sought prior to any action being taken in reliance on any of the information. Should you wish to discuss the content of this communication and how it applies to your situation, please feel free to contact us.
MARCH 2019 LEGAL UPDATE: FASHION DESIGN: HOW TO PROTECT YOUR INTELLECTUAL PROPERTY
In Australia, there are measures in place to help fashion brands protect their creative work. These include Trade Mark protection, Industrial Design protection, Copyright and Patent protection. However, the protection offered through these measures are limited in their application and will only apply within Australia.
If you are considering expanding your brand outside of Australia, you should take all precautionary measures to ensure that you are the owner of any intellectual property in association with your brand, especially if you decide to expand into a market that is notoriously known for trade mark and design infringement.
EXPANDING OVERSEAS: HOW TO PREVENT PEOPLE FROM USING YOUR TRADE MARK
A Trade Mark is a sign, used or intended to be used in trade or commerce, to distinguish a product from other products. This may be the name of the brand or even a phrase that is in association with the brand, that is used to distinguish your brand from others. To stop other individuals from using the Trade Mark, owners of the mark should apply for Trade Mark protection.
2.1. TRADE MARK APPLICATION REQUIREMENTS
The process of registration for a Trade Mark will include searching the Registry’s records to determine if the Trade Mark(s) have been registered or if there are similar Trade Marks in the respective country. An application for the registration of Trade Mark(s) must contain a graphical representation of your Trade Mark, and the class of the designated goods and/or services. The application must be in made in compliance with the regulatory authority in the respective countries.
2.2. EXPANDING INTO ASIA
As most countries in Asia are signatory to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid System”), an owner of a mark may use the Madrid System to apply for registration for Trade Mark protection in several countries through one application. This can simplify the process for obtaining protection of Trade Marks in countries where Trade Mark infringement is common such as India, and the People’s Republic of China.
However, not all areas in Asia are signatory to the Madrid System and will require separate applications for Trade Mark protection. In some countries, if the owner of the mark does not have a registered address in the respective country, they will have to authorise an agent to act on their behalf. This is the process for any Trade Mark applications for Hong Kong, Taiwan, and Macau.
Once registered, the owner of the mark will have the exclusive right to use the Trade Mark and they can allow third parties to use the Trade Mark under certain conditions. If the registered Trade Mark is used by an unauthorised person, the registered owner may file for infringement and obtain relief.
HOW TO PREVENT YOUR DESIGNS FROM BEING USED WITHOUT YOUR CONSENT?
A Design refers to the overall appearance of the product resulting from one or more visual features of the product. Only Designs that are ‘new’ and ‘distinct’ may be protected.
3.1 DESIGN APPLICATION REQUIREMENTS
An application for the registration of the Design(s) must contain a clear representation of the Design and the class of the designed goods and/or services. The application must include a supporting document that outlines what aspect of the Design is ‘new’ and ‘distinct’.
3.2 PROTECTION IN KNOWN INFRINGING COUNTRIES
Due to regulations under most legislation in Asia, if an owner of a Design does not have a registered address in the country they wish to apply for protection, the owner must authorise an agent to act on their behalf. However, this should not deter from the registration of the Design(s). It is valuable that a fashion brand holds ownership of the Design(s) used as it will give the fashion brand the legal right to stop a third party from making, using, and importing a product which is similar or identical. As such, a fashion brand can take legal measures to help prevent and stop third parties from using their Designs.
BONUS PROTECTION – WELL-KNOWN TRADE MARKS
If your fashion brand has taken off and before you knew, people internationally recognised your Trade Mark, you may rely on protection as your Trade Mark is ‘well-known’. All parties who are signatory to the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) have an obligation to protect unregistered well-known Trade Marks. This means that a country has an obligation to cancel or refuse registration of a Trade Mark if it is identical or deceptively similar to yours, if your mark is ‘well-known’.
If you are planning on applying for protection in Australia:
- Are you the owner of your mark and/ or Designs?
- Is your mark unique and not similar to another?
- Does your Design feature something ‘new’ and ‘distinct’?
If you are planning on expanding outside of Australia:
- Have you determined what countries you would like to expand to?
- Are the countries signatory to the Madrid System?
- Will you require an agent to act on your behalf for any application for intellectual property?
If you are in the process of establishing your own fashion brand or need help protecting and upholding your intellectual property rights, please feel free to get in touch with our experienced team so we can assist you in the matter.
The information contained in this communication does not constitute advice and should not be relied upon as such. Professional advice should be south prior to any action being taken in reliance of any of the information. Should you wish to discuss the content of this communication and how it applies to your situation, please feel free to contact us.