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Brand Protection 101
- 1. BRAND PROTECTION 101 Presenter:Dominic Woolrych
- 2. Australia’s Leading OnlineLegal Service Provider LAWYERS 650 USERS 23,000 SAVINGS $6,000,000 LAWPATH
- 3. BRAND PROTECTION 101 DOMINICWOOLRYCH
- 4. AGENDA 1. How tolegally protect your brand, invention or idea a. Trademarks b. Patents c. Designs / Copyright 2. Assigning intellectual property 3. Licensing intellectual property
- 5. WHAT IS INTELLECTUALPROPERTY? “property of your mind or proprietary knowledge and is a productive new idea you create”. For example, brand logos, slogans or invention ideas are all examples of intellectual property. Intellectual Property is intangible = cannot be seen or touched. Intellectual Property is the general names given to laws covering: 1. Patents; - ‘Requires Registration’ 2. Trademarks; - ‘Requires Registration’ 3. Designs; - ‘Requires Registration’ 4. Circuit layouts; - ‘Requires Registration’ 5. Plant breeder’s rights; and - ‘Requires Registration’ 6. Copyright. Each of these forms of intellectual property is protected by a specific Act of the Commonwealth Parliament. The framework for these Acts is largely based on Australia's obligations under international treaties.
- 6. What is atrademark? Trademarks are a valuable marketing resource that promotes and protects your products and services. Any feature or combination of features that distinguishes your products or services from your competitors can be registered as a trademark. Trademarks can be a particular name, word, phrase, letter, number, shape, smell, sound, colour, image or aspect of packaging. Iconic trademarks include the Cadbury shade of purple, Toyota’s ‘Oh What a Feeling’ jump and McDonald’s golden arches. TRADEMARKS
- 7. 5 benefits ofregistering a trademark 1. Economically beneficial to your business 2. Registration protects your brand nation-wide 3. The exclusive right to use, sell and licence your trademark 4. Protection from unauthorised use 5. Prevent competitors from registering a similar trademark TRADEMARKS - BENEFITS
- 8.
- 9. Why Register aTrademark? Only a trademark can provide proprietary protection for your brand and prevent any unauthorised use by others in Australia. As a trademark owner you have the exclusive right to use, sell and licence your trademark. TRADEMARKS
- 10. Step 1. Conducta Search - Before applying you should conduct a search of the Australian Trade Mark Online Search System to see if your trademark has already been registered or if there are any similar trademarks. Step 2. Applying - Anyone can make a trademark application, however the owner of the trademark must make the claim. The owner can be: an individual; a company; an incorporated association; or a combination of the above. The application is online and it must include: Your name and contact details; A representation of the trademark; TRADEMARKS - HOW TO REGISTER
- 11. Step 3. Determiningthe Class - To register a trademark you will need to determine the classes of goods and services appropriate to your business. Goods and services are categorised into 45 classes (34 goods, 11 services). Step 4. Examination - Once your application has been made it will be examined by IP Australia. A trademark will be rejected if it: Contains prescribed or prohibited signs; Cannot be represented graphically; Is not distinctive; Scandalous or contrary to law; Likely to deceive or cause confusion; or Identical or similar to registered trademarks. This process takes usually 3 to 4 months after filing the application. If there are no grounds for rejection your trademark will be registered. The trademark will be entered into the Australian Official Journal of Trade Marks (AOJTM) and listed under the ATMOSS. TRADEMARKS - HOW TO REGISTER
- 12. TRADEMARKS - PICKLIST What is the IP Australia Pick List? In order to apply for a trademark, a business must provide a description of the goods or services the trademark will be used for and identify them into the classes provided by the Intellectual Property Goods and Services Pick List. The pick list has over sixty thousand entries and is subdivided into various different classes to comprehensively cover a large number of goods and services. Classes The goods and services under the pick list are divided into 45 classes. Most goods and services are covered under the pick list but it is not exhaustive. Before an applicant proceeds to file their trademark application, it is important that they have carefully decided which class they want to file their trademark. This avoids classification errors which may prevent the trademark from being registered and cause unnecessary delay for the application.
- 13. TRADEMARKS - INTERNATIONAL InternationalTrademarks Jurisdictions (host countries) Classes Which one first? Madrid Protocol
- 14. TM HEADSTART SERVICE IPAustralia’s TM Headstart Service? The TM Headstart service is an assessment service offered by the IP agency to give businesses a prior assessment of their trademark application before they publicly file to register a trademark. The service allows businesses to identify and correct any potential mistakes and issues on their application before filing, saving time and money for applicants. This is beneficial given that applications containing mistakes or errors are usually rejected and need to be re-filed resulting in a lengthy and expensive process. The assessment requires an additional cost and amendments will attract an extra fee due to the additional assessments that need to be made by the IP examiner.
- 15. NEW FEES FORAUS TRADEMARKS What are the changes? Under the new fee structure (Monday 10 October 2016), there is no trademark registration fee. However, applicants will still need to pay a fee for the initial trademark application. Once this application is assessed by IP Australia and following no opposition being filed, the trademark will be automatically registered. Upon registration, the $300 fee will no longer apply and instead will be free of charge. Applicants should be aware that in order to offset the removal of the $300 registration fee, other fees relating to trademarks have increased. The majority of trademark application fees will increase by $130 per class in an effort to offset the fee removal.
- 16. PATENTS Patents The Patents Act1990 grants monopoly rights to inventors of new inventions such as improved products or devices, substances and methods or industrial processes, provided that the invention is a manner of manufacture, is new, is not obvious and is useful. A registered patent provides exclusive rights to the owner to exploit the invention for the life of the patent, which is 20 years. The innovation patent provides protection for incremental and lower level inventions for a period of 8 years.
- 17. PATENTS - TYPES ThePatents Act 1990 (Cth) offers inventors two forms of patent protection for inventions: standard patents and innovation patents. Standard Patents Standard patents are the most commonly used form of patent protection in Australia. A standard patent can protect and maximise the economic potential of your invention. They have been used to protect inventions across a range of industries such as manufacturing, construction and technology. Under the Act, the patentability of an invention for a standard patent claim must be: Novel; Useful; and Involve an inventive step when compared to the prior art base. The process of granting a standard patent can take up to 5 years, offering protection for a term of 20 years. This is a longer process than an innovation patent claim due to the substantive examination and opposition period. The pre-grant examination, however, does provide applicants assurance that their
- 18. PATENTS - TYPES InnovationPatents Innovation patents are a quicker and lower cost form of patent protection. Innovation patents are common with inventions that have a short commercial life, particularly in the technology sector. If your invention involves a modification on an existing technology within your industry, an innovation patent may be suitable. A claim of patentability for an innovation patent requires the invention to be: Novel; Useful; and Involve an innovative step when compared to the prior art base. The patent application process can take 1 month, with a protection term of 8 years. Unlike standard patents, innovation patents do not require a substantive examination and are granted after a formalities check. Seeking action against infringement and enforce your rights will require a substantive examination.
- 19. PATENTS What kind ofinventions can be patent protected? In Australia, patents can be granted for a wide range of inventions including chemical compounds, business methods or everyday utensils. Traditional patents such as materials, textiles and appliances are often used alongside other existing patents such as computer processes or manufacturing methods to create a unique, functioning invention. However other revolutionary patents may include biological inventions such as bacteria and micro-organisms as well as digital and computer processes.
- 20. PATENTS What cannot bepatented? In Australia, despite the wide range of inventions that can be patented, there are a few categories of inventions that are restricted from being patented, including: Human beings and/or the biological processes for their generation; Artistic creation; Mathematical models; and Plans, schemes or other purely mental processes. Notably, the Commissioner of Patents reserves the power to prohibit publication of inventions involving military aspects in the interest of the defence force which will prevent the patent from being granted.
- 21. PATENTS Patent Costs Provisional patent= $4000-$5000. (90% of the patent specifications are completed in this period) Standard patent = $2000-$2500 NB: these prices will differ depending on the extent to which the provisional patent specifications need altering.
- 22. DESIGNS Designs The Designs Act2003 grants protection to the visual appearance or design of a manufactured article if it is new or original. It protects the features of shape, pattern or ornamentation applied to an article. Protection is based on a system of registration and can last for up to 10 years. Some designs for articles may qualify for both designs and copyright protection. Before registering a design of an artistic work under the Designs Act, you should seek legal advice on whether registration would affect copyright protection of any articles related to the design.
- 23. CIRCUIT LAYOUTS ANDPLANT BREEDERS Circuit Layouts The Circuit Layouts Act 1989 protects the layout-designs of integrated circuits (also referred to as computer chip designs or semi-conductor chips). The Act protects plans which show the three dimensional location of the electronic components of an integrated circuit and gives the owner of the plans certain rights, including the right to make an integrated circuit from the plans. There is no requirement for registration for the granting of rights to the owner of a layout. Plant Breeder's Rights Plant breeder's rights are exclusive commercial rights to market a new plant variety or its reproductive material. The rights are administered under the Plant Breeder's Rights Act 1994. Holders of plant breeder's rights have exclusive rights over the production, sale and distribution of the new variety.
- 24. COPYRIGHT Copyright forms partof the area of law known as intellectual property. Copyright refers to the automatic protection of the expression of original ideas (but not the ideas themselves, they must be in ‘material form’ to be protected by copyright). Once an original idea is manifested on paper or electronically, it is automatically protected by copyright; you do not need to register anything. Copyright can apply to written material such as books, articles, and journals, as well as designs, artworks, music, films and media broadcasts among others.
- 25. COPYRIGHT What Happens WhenI sell my Copyright? When you sell your copyright you lose the right to reproduction and also lose the right to profit financially off your artwork. However, you will continue to have non-financial rights in your artwork these are known as moral rights. Licensing Your Copyright Under a licensing agreement you will have greater control over how your copyright is assigned. For example, you may assign to the economic right to reproduce and distribute your work but could limit the right to have your work displayed in public. You will be able to receive payments from other’s use of your work, in the form of royalties. Essentially, this can allow you to receive profit from your artwork without undergoing the hassle of the ground work associated with production costs.
- 26. ASSIGNING / LICENSING Bothlicensing and assigning IP involves some transfer of the use of IP. However, the key difference is that licensing IP does not involve the transfer of IP ownership whereas an assignment does. Hence, the assignor no longer has exclusive rights to the IP after assigning. This means they can be held liable for unauthorised use of a trademark they once held rights to. Licensing intellectual property works involves the licensor transferring the right to use the IP, for example a trademark, to the licensee. Typically, this will involve a long-term business relationship between the licensor and licensee. Assignment involves the complete transfer of IP ownership from the assignor to the assignee. It is therefore extremely important to draft an IP assignment agreement properly, ensuring that both parties understand their obligations.
- 27. WHAT IS TRADEMARKLICENSING? What Is Trademark Licensing? Trademark licensing refers to the process where the owner of a trademark (the licensor) gives another person (the licensee) the right to use the trademark. Common examples of trademark licensing include merchandising partnerships and plant breeders. 3 Types of Trademark Licence 1. Exclusive Licence 2. Sole Licence 3. Non-exclusive Licence
- 28. DOMAIN NAMES Limitations ofa domain name One of the key limitations of a registered domain name is the lack of proprietary ownership.. Having a registered domain name does not give the registered party any proprietary rights to the name. Instead, the registration is a contract between the registered party and the domain registrar which entitles the party to use the domain name for a specific period of time or until their ‘license’ expires. No ownership of the name is ever transferred to the registered party which limits their use or ability to license or sell their domain name. Furthermore given that domain names are licensed from a registrar for a set period of time, they will expire after the contractual period ends. In situations where a domain name is heavily sought after or has been appropriated by other businesses, the brand or business identity may be vulnerable to encroachments from other competitors.
- 29. IP OWNERSHIP ANDASSIGNMENT Intellectual Property Who built your website? Designs / Content Assigning IP Investors
- 30. Problem 1: Moonlightingproblem If you work on your startup while currently employed by another company, your employer may have rights to your intellectual property/invention INTELLECTUAL PROPERTY
- 31. Problem 2: Zuckerbergproblem? IP is not assigned to the company by the founders and/or third-party developers (including foreigners) INTELLECTUAL PROPERTY
Editor's Notes
- #6 IP Australia defines intellectual property as the “property of your mind or proprietary knowledge and is a productive new idea you create”. For example, brand logos, slogans or invention ideas are all examples of intellectual property. IP rights protect the exclusive creations of businesses. This allows businesses to innovate and enhance their brand. IP protections are evident through the use of patents, copyright, as well as registered designs and trademarks
- #8 Here are 5 benefits of registering a trademark Economically beneficial to your business As a business owner you want to stand out from your competitors. If you are intending to commercially market your product or services you will need a trademark. A trademark protects the unique aspects of your business, such as your brand name and logo, and as a result increases the value of your brand. Protecting what makes your brand unique can give you that competitive edge in a crowded market. Registration protects your brand nation-wide Any feature or combination of features that distinguishes your products or services from your competitors can be registered as a trademark. With a registered trademark, these features will be protected throughout Australia. Having a registered trademark in Australia can also be beneficial for any future international applications. If you intend to expand your brand internationally, as a trademark owner, these applications will be simpler and take less time. The exclusive right to use, sell and licence your trademark As a trademark owner you have a range of exclusive rights over your trademark. The control of your brand and how it is to be used is valued by all businesses. Through registration, you have the right to commercially use your trademark. This is valuable when executing marketing strategies to increase brand recognition and grow your business. You also have the right to capitalise on the positive reputation of your products and services by selling your trademark to others. When commercially marketing and distributing your products or services, a range of third parties such as manufacturers, distributors and franchisees will handle your brand. The exclusive right to license your trademark is helpful when dealing with these third parties and ensures that your brand is always protected. Protection from unauthorised use Only a trademark can provide proprietary protection for your brand and prevent any unauthorised use by others in Australia. Competitors and other businesses may take advantage of your reputation and use your brand or elements of your logo, brand design and image for their own products. This can confuse and mislead your customers into thinking that the products or services they are purchasing are your own. Without a registered trademark, protecting your brand from this unauthorised use can be an expensive and ineffective use of your resources. As a trademark owner you have the right to initiate proceedings against competitors and other businesses that are infringing your trademark. Prevent competitors from registering a similar trademark The earlier you register your trademark, the better protected you will be. Under the Trade Marks Act 1995, a competitor or any other business, cannot register any trademark that is identical or similar to a registered trademark. Without registration your unique brand or elements of it may be registered by another, or worse, challenged by a registered owner with a similar trademark. Applying for a trademark can be a time-consuming and complicated process. At LawPath we make registering a trademark quick and easy, offering fixed fee quotes with a fast turn around.
- #12 Step 3. Determining the Class - To register a trademark you will need to determine the classes of goods and services appropriate to your business. Goods and services are categorised into 45 classes (34 goods, 11 services) and the relevant classes must be precisely identified in your application. This is an important selection as you can only commercially use your trademark within the classes it is registered. Step 4. Examination - Once your application has been made it will be examined. Your application will be accepted unless the application has not been made in accordance with the Act or there are grounds for rejection. An examination report will be sent identifying the problems or success of your application. A trademark will be rejected if it: Contains prescribed or prohibited signs; Cannot be represented graphically; Is not distinctive; Scandalous or contrary to law; Likely to deceive or cause confusion; or Identical or similar to registered trademarks. This process takes usually 3 to 4 months after filing the application. If there are no grounds for rejection your trademark will be registered. The trademark will be entered into the Australian Official Journal of Trade Marks (AOJTM) and listed under the ATMOSS. Final Step. Registered Trademark = Protected Trademark With a registered trademark, your brand will be protected nation-wide. Your trademark is protected for a term of 10 years and this can be renewed. If you intend to commercially expand your business internationally, you will need to make further applications. As the owner of a trademark you will have the confidence to expand your brand nationally and internationally.
- #13 What class is right for me? When deciding what class a trademark application falls under, it is important to consider what is the nature of your business. In order for a trademark to offer continued protection to your goods and services, an application should take into account whether the class is broad enough to cover the specific products and services that the business will provide. For example, a trademark application for scarves under Class 25 would cover a broad range of scarf designs and materials. This would create flexibility and allow the business to continue to grow and evolve their existing designs.
- #15 The Australian Government’s Intellectual Property Agency administers intellectual property rights and legislation relating to patents, trademarks, designs and plant breeder’s rights. It allows businesses to trademark their goods, services or brand through an online application process and search for existing trademarks in the registered database. Registering a trademark has many benefits for a business including: enhanced brand protection from unauthorised use; strengthened brand identity; and improved brand marketing. What is IP Australia’s TM Headstart Service? The TM Headstart service is an assessment service offered by the IP agency to give businesses a prior assessment of their trademark application before they publicly file to register a trademark. The service allows businesses to identify and correct any potential mistakes and issues on their application before filing, saving time and money for applicants. This is beneficial given that applications containing mistakes or errors are usually rejected and need to be re-filed resulting in a lengthy and expensive process. The assessment requires an additional cost and amendments will attract an extra fee due to the additional assessments that need to be made by the IP examiner. What is the Process? After an assessment request is sent through the online service, a trademark examiner who will assess the request and contact the applicant within 5 working days. After receiving the assessment, the applicant may choose whether they wish to continue with their application request and make amendments. If they decide to continue with the request, a Part 2 fee must be made within 5 working days of the results to proceed with the trademark application. Upon proceeding, the request becomes a standard trademark application to be filed and published. Benefits The main advantage to using the TM Headstart service is the flexibility it gives to applicants who are unsure of the trademark process. During the initial assessment, the application submitted remains confidential and will not be submitted until after the applicant decides to proceed. Furthermore it allows applicants to amend their applications prior to formal submission and publication to avoid potential mistakes and issues. Exceptions to the TM Headstart There are certain circumstances where an trademark application cannot use a TM Headstart for an initial assessment. These include: Special kinds of signs; Series trademarks; Certification trademarks; Collective trademarks; Defensive trademarks; and Divisional applications. Conclusion A registered trademark is an invaluable business asset that protects a business’s brand, goods or services from unauthorised use. The TM Head start service is a useful tool for applicants who are uncertain about their trademark application and can provide useful feedback to help save time and money.
- #16 After an extensive review of its fee structure this year, IP Australia revealed a revised fee structure that is proposed to take effect from 12:00am on Monday 10 October 2016. All business owners should be across these changes to take advantage of the $0 registration fee for trademarks. However, just because it’s free doesn’t mean that it isn’t a time-consuming and complicated process. Our trademark guide can give you an idea of what’s required. If you are still unsure, LawPath can connect you with a trademark attorney to help you save time and the confusion. What are the changes? After IP Australia’s review, there were changes put in place affecting trademarks, patents, designs and plant breeder’s rights. However, the most significant changes are those regarding the registration of a trademark. Currently, the fee for registering a trademark is $300. Any applicant who submits a trademark application prior to 10 October 2016 will still be required to pay the $300 fee even if the trademark becomes officially registered after this date. Under the new fee structure, there is no trademark registration fee. However, applicants will still need to pay a fee for the initial trademark application. Once this application is assessed by IP Australia and following no opposition being filed, the trademark will be automatically registered. Upon registration, the $300 fee will no longer apply and instead will be free of charge. Applicants should be aware that in order to offset the removal of the $300 registration fee, other fees relating to trademarks have increased. The majority of trademark application fees will increase by $130 per class in an effort to offset the fee removal. Due to the increase in the application fee per class it is now as important as ever for business owners to ensure that they are applying to register their trademark in the correct class. LawPath can connect your with a number of IP lawyers who can help you navigate the 45 different trademark classes that IP Australia has to offer. Despite this some increases, the changes reduce the overall up-front cost to register a trademark. This process is also simplified which means that there is one less point of interaction with IP Australia. International significance This change harmonises Australia’s trademark requirements with the rest of the world too. Removing the registration fee brings IP Australia into line with other international IP Offices. More specifically, Australia is now aligned with 95 out of the 97 member countries of the Madrid Protocol, making it easier to protect your brand internationally. Final recommendations We urge that all business owners and potential business owners be aware of any changes that IP Australia bring into force. It can significantly affect not only the price you might pay for things, but also the legal requirements that must be adhered to. With LawPath you can make sure you’re taking all the right steps by consulting with a trademark attorneywho is an expert in the field.
- #18 The Patents Act 1990 (Cth) offers inventors two forms of patent protection for inventions: standard patents and innovation patents. Both standard and innovation patents provide owners with the exclusive right to exploit their invention and enforce this right. The patents however, are distinguishable by the duration of their process, protection term and eligibility requirements, notably the inventive and innovative steps. Standard Patents Standard patents are the most commonly used form of patent protection in Australia. A standard patent can protect and maximise the economic potential of your invention. They have been used to protect inventions across a range of industries such as manufacturing, construction and technology. Under the Act, the patentability of an invention for a standard patent claim must be: Novel; Useful; and Involve an inventive step when compared to the prior art base. The process of granting a standard patent can take up to 5 years, offering protection for a term of 20 years. This is a longer process than an innovation patent claim due to the substantive examination and opposition period. The pre-grant examination, however, does provide applicants assurance that their claim will be examined and rights enforceable once granted.
- #20 What kind of inventions can be patent protected? In Australia, patents can be granted for a wide range of inventions including chemical compounds, business methods or everyday utensils. Traditional patents such as materials, textiles and appliances are often used alongside other existing patents such as computer processes or manufacturing methods to create a unique, functioning invention. However other revolutionary patents may include biological inventions such as bacteria and micro-organisms as well as digital and computer processes. Before applying for a patent, it is important to research whether your invention has already been patented in Australia or another country and examine existing patents that may be similar to your invention. What cannot be patented? In Australia, despite the wide range of inventions that can be patented, there are a few categories of inventions that are restricted from being patented, including: Human beings and/or the biological processes for their generation; Artistic creation; Mathematical models; and Plans, schemes or other purely mental processes. Notably, the Commissioner of Patents reserves the power to prohibit publication of inventions involving military aspects in the interest of the defence force which will prevent the patent from being granted.
- #21 What kind of inventions can be patent protected? In Australia, patents can be granted for a wide range of inventions including chemical compounds, business methods or everyday utensils. Traditional patents such as materials, textiles and appliances are often used alongside other existing patents such as computer processes or manufacturing methods to create a unique, functioning invention. However other revolutionary patents may include biological inventions such as bacteria and micro-organisms as well as digital and computer processes. Before applying for a patent, it is important to research whether your invention has already been patented in Australia or another country and examine existing patents that may be similar to your invention. What cannot be patented? In Australia, despite the wide range of inventions that can be patented, there are a few categories of inventions that are restricted from being patented, including: Human beings and/or the biological processes for their generation; Artistic creation; Mathematical models; and Plans, schemes or other purely mental processes. Notably, the Commissioner of Patents reserves the power to prohibit publication of inventions involving military aspects in the interest of the defence force which will prevent the patent from being granted.
- #25 Copyright forms part of the area of law known as intellectual property. Copyright refers to the automatic protection of the expression of original ideas (but not the ideas themselves, they must be in ‘material form’ to be protected by copyright). Copyright can apply to written material such as books, articles, and journals, as well as designs, artworks, music, films and media broadcasts among others. Therefore, once an original idea is manifested on paper or electronically, it is automatically protected by copyright; you do not need to register anything. Copyright confers on the owner of their intellectual property the exclusive right to publish, reproduce, adapt and distribute their work, it prevents others from claiming the work as their own, and the right to take legal action against someone who uses or claims their work without permission. Copyright is automatic and lasts for 70 years after the owner’s death
- #26 Once an original idea is manifested on paper or electronically, it is automatically protected by copyright; you do not need to register anything.
- #27 The Difference Between Licensing and Assigning IP Both licensing and assigning IP involves some transfer of the use of IP. However, the key difference is that licensing IP does not involve the transfer of IP ownership whereas an assignment does. Hence, the assignor no longer has exclusive rights to the IP after assigning. This means they can be held liable for unauthorised use of a trademark they once held rights to. LawPath offers a free online IP agreement template for your customisation to assign IP. Alternatively, you can receive up to three fixed-price quotes from a team of expert IP attorneys to assist in drafting this agreement. Licensing Intellectual Property Licensing intellectual property works involves the licensor transferring the right to use the IP, for example a trademark, to the licensee. Typically, this will involve a long-term business relationship between the licensor and licensee. The licensee pays for the right to use the IP, by way of either lump-sum or instalment payments. A licensor has the discretion to grant either an exclusive, sole or non-exclusive licence, which places limits on how many parties can use the IP. Further restrictions can be placed so that IP can only be used for a particular class of product or geographical location. Assigning Intellectual Property Assignment involves the complete transfer of IP ownership from the assignor to the assignee. It is therefore extremely important to draft an IP assignment agreement properly, ensuring that both parties understand their obligations. LawPath recommends getting in touch with an experienced IP attorney to assist with finalising an agreement. IP assignments involve an irrevocable transfer of commercial rights to the assignee, as part of a one-time agreement. It is not expected that the parties will have future business dealings on how the IP will be used after assignment. Rather than receiving instalments of royalties for your IP through an ongoing transaction with a licensee, the assignor will receive a lump-sum payment from the assignee. This payment is therefore technically a “purchase price” for the IP. Since all profit components and market value of the IP are transferrable, the price should be determined with proper negotiation and care. Conclusion Given the importance of IP to how you differentiate your business and continue to develop it, agreements to transfer its use to others must be drafted with caution, particularly in the case of an assignment. As a licensor or assignor, you should always perform due diligence checks and negotiate properly with potential licensees or assignees. LawPath recommends contacting an experienced IP attorney to discuss your IP business decisions and how they can affect your brand.
- #28 You are a business owner with a trademark. Did you know you can license the rights that flow from your trademark to others and receive royalties for commercialisation? Or perhaps you are a small business owner wishing to gain rights to use someone else’s trademark. Upon registration of your trademark, you have the ability to use, sell and license your brand. Trademarks are an important business asset that offers protection to your brand. Licensing your trademark can be a beneficial business strategy that can enhance your brand and allow for expansion into new markets. If you do not have a trademark to protect an original aspect of your business, LawPath offers a simple trademark application process which will be reviewed by a trademark attorney. What Is Trademark Licensing? Trademark licensing refers to the process where the owner of a trademark (the licensor) gives another person (the licensee) the right to use the trademark. Common examples of trademark licensing include merchandising partnerships and plant breeders. Under the Trade Marks Act 1995 (Cth) the licensor must hold control over the authorised use of the trade mark. This includes quality control in relation to goods and services, as well as financial control over trading activities. The importance of needing to exercise and enforce control was highlighted in the ongoing 2016 case of Lodestar Anstalt v Campari America LLC, following registration from both parties for the word mark ‘WILD GEESE’. Benefits of Trademark Licensing There are a range of benefits of licensing a trademark, such as: Access new markets: in the case of marketing and distributing channels, allowing licensees the right to use your trademark can help to expand your business; Increase consumer recognition; Distribute workload; and Partnerships: trademark licensing can lead to benefits for the business life and functioning of parties involved. 3 Types of Trademark Licence 1. Exclusive Licence This grants the rights to commercial use of the trademark solely to the licensee. In effect, it also excludes the licensor from using it. The licensor receives a sum for licensing and the licensee receives any future profits or incurs losses arising from commercialisation. Limitations can be placed on exclusive licences so that the licensee is restricted to use the mark within a certain class of product or geographical area. 2. Sole Licence A sole licence is an adaptation of an exclusive licence where both the licensor and licensee can use the trademark. However, the licensor is not permitted to licence the trademark to another third party. 3. Non-exclusive Licence As the name suggests, a licensor can grant a non-exclusive licence to multiple licensees. Trademark Licensing Agreement If you are a licensor, it is important to conduct a due diligence check on a potential licensee to ensure that they have the necessary managerial and financial capacity to use the trademark in a beneficial way. However, irrespective of whether you are a licensor or licensee, it is vital that the trademark licensing agreement is drafted concisely to help avoid problems. Some of the essential clauses which your agreement should contain are: Date of commencement of the licensee to use the trademark and date of expiry if applicable; Details of the parties and their firm structure; Grant clause – defining whether the terms of licence are exclusive, sole or non-exclusive; and Payment details – for the licensor, in the form of a lump-sum payment or royalties. Conclusion Trademark licensing can help you expand your business reach and processes. In order to better navigate trademark licensing agreements and protect your rights, it is best to negotiate with the other party and draft a clear contract to reduce chances for future dispute. LawPath has access to a team of experienced trademark attorneys who can help you negotiate and finalise an agreement.
- #29 Having a registered domain name is an important asset to every business but in many cases, the registration itself may not be able to protect your business’s exclusive use over your registered domain name. A registered domain name and a registered trademark may look similar at first glance but the nature of protection offered to a brand or business differs greatly between the two. Legal disputes and conflict can often arise as a result of confusion between the two for both businesses and individuals. For example, when the 18 year old Kylie Jenner tried to trademark the name “Kylie” and landed herself in hot water with A-lister Kylie Minogue. In order for business owners to better protect themselves, it is important that they are informed of the different degrees of protection, rights and consequences afforded by each. LawPath’s experienced trademark and intellectual property attorneys can advise you on how to protect your domain name. Limitations of a domain name One of the key limitations of a registered domain name is the lack of proprietary ownership.. Having a registered domain name does not give the registered party any proprietary rights to the name. Instead, the registration is a contract between the registered party and the domain registrar which entitles the party to use the domain name for a specific period of time or until their ‘license’ expires. No ownership of the name is ever transferred to the registered party which limits their use or ability to license or sell their domain name. Furthermore given that domain names are licensed from a registrar for a set period of time, they will expire after the contractual period ends. In situations where a domain name is heavily sought after or has been appropriated by other businesses, the brand or business identity may be vulnerable to encroachments from other competitors. How can I protect my domain name? Apply for a trademark The only way for a business party to gain permanent ownership of their domain name is by registering as a trademark. A registered trademark provides the owner with the exclusive right to use, sell and license a trademark. Only a registered trademark provides proprietary protection against unauthorised use in Australia. It also allows owners to effectively protect and promote the reputation of a brand or business. However not all domain names are entitled to being registered as a trademark. In order to be registered as a trademark, the domain name must be more than merely a direction to the source of the webpage or information regarding the webpage. LawPath’s experienced trademark attorneys can help you examine whether your domain name can qualify for a trademark. What should I do? The best way to find out whether your domain name can be protected under a trademark registration is by speaking to a trademark attorney. From there, the lawyer will assess the nature of your domain name and business to provide you with advice on how to best protect your domain name.
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