Protecting your intellectual property is one way to help distinguish you from your competitors
by Suzie Leask, Senior Associate - Corporate + Commercial
Whether you’re a start up or have been in business for a while, it is likely that one of your most valuable assets is your intellectual property or “IP”. One of the first things business owners often do is get Business Insurance, but what about protecting your ideas, inventions, brand, business name or logo?
These are all things that you spend a lot of time building, marketing and promoting, so they are certainly worth protecting. Protecting your IP can help distinguish you from your competitors, ensure you are obtaining the most commercial benefit possible from your business and ultimately increase the value of your business and its ‘goodwill’ should you wish to sell or approach investors in the future.
What is IP?
First, you need to work out what IP you have. Intellectual Property can be registered or unregistered and includes the following main types:
|
Type of IP |
What is protected |
Registration? |
|
Patents |
Inventions with an “innovative” or “inventive” step that have practical application (e.g. device, machine, method, substance, business process) |
Yes |
|
Copyright |
Original form or expression of an idea (e.g. books, articles, lyrics, software, film, music, painting, choreography, photographs, plans) |
No |
|
Trade marks |
Badges of origin to distinguish goods and services of one trader from others in the market place (e.g. word, phrase, number, letter, shape, brand name, logo or any combination of these) |
Yes |
|
Designs |
Visual appearance or shape of an article that is unique or new (e.g. classic Coca Cola bottle) |
Yes |
|
Names |
Business Name, Company Name, Domain Name |
Yes |
|
Confidential information |
Trade secrets, know-how and confidential information |
No |
Myth buster: “I already have a Business Name registered so I’m protected”
Trademarks v Business Names. Most people are unaware that registration of a business name, company name or domain name is not enough to give you exclusive IP rights to that name. In fact, if chosen poorly, these names could infringe someone else’s rights to that name - for example, someone else’s trade mark. Conversely, registering a business name does not stop someone else from trade marking that name and then enforcing their IP rights against you. Any person can use a business name so long as it does not infringe a registered trade mark, or constitute ‘passing off’ or breach of the Australian consumer laws. So at the very least, we highly recommend you register the trade marks used by your business. The saying “use it or lose it” applies here too - you can lose your trade mark registration in certain circumstances, for example, for ‘non-use’ if it hasn’t been used for the period of time prescribed by law (currently 3 years) or if you fail to pay the renewal fee. Are you likely to want to do business internationally? If so, you may wish to consider applying for international trade marks as well.
“They copied my idea!”
Copyright & Moral Rights. Copyright does not protect works that are not recorded in a ‘material form’. This means that just because you thought of something first, does not mean others can’t use it. A common example is having a great idea for a book, however the owner of the copyright will be the person that actually writes the book! Also, give some thought to who owns copright or moral rights to materials that you use in your business - this may involve reviewing employment and contractor agreements to ensure IP that you’ve paid someone to create is actually owned by or assigned to you or your company.
Beware Publicity!
Designs & Patents. Remember if you demonstrate, sell or discuss your invention or design publicly before your ownership is confirmed and registered, this could jeopardise your ability to claim a patent or design right before you even file an application. This means keeping it out of the public domain, so no tweeting, Facebooking or sharing it on LinkedIn or trade journals. You can talk to employees, business partners, investors or advisors about your invention, design or idea but only on a confidential basis. For this reason, Confidentiality Agreements are very important. Alternatively, you may prefer to keep your invention a secret rather than disclosing it in a patent application - this is known as a trade secret, for example, the recipe for Coca-Cola.
Shhh! It’s a secret!
Trade Secrets & Confidentiality. In practice, trade secrets are difficult to protect and you are vulnerable when employees or contractors with this knowledge leave your business. It is critical you ensure all contractors, services providers and employees have appropriate agreements in place or sign a Confidentiality Agreement to prevent them from disclosing your idea without permission and which also includes a non-compete clause.
Recommended strategy for IP Protection
- Identify the types of IP used in your business.
- Assess the value of that IP to your business.
- Decide what IP you will protect and how you will protect it.
- Act. Do some market research, talk to a commercial lawyer, conduct searches of IP registers to ascertain availability, put Confidentiality Agreements in place, file registrations over your IP where applicable.
- Be the first. Don’t wait for your competitors to beat you to it.
Infringement of your IP Rights
What can you do if someone infringes your rights?
- Get expert help - talk to a qualified IP lawyer about your options
- Send a letter of demand or a ‘cease and desist’ letter to the offender
- Consider potential legal proceedings for:
- breach of relevant laws (e.g. Copyright Act or Trade Marks Act)
- passing off (if someone uses your name or trade mark)
- breach of the Competition and Consumer Act (e.g. for misleading or deceptive conduct)
Remember there are often a combination of strategies you can use to maximise your IP protection and the potential commercial value to your business, so it is important to get expert advice so you don’t miss a crucial step when navigating complex intellectual property laws.
Get Australian Business Lawyers & Advisors (ABLA) involved from the start. Contact one of our Corporate and Commercial lawyers on +61 2 9458 7005 or email [email protected] to discuss how we can help you with your company’s IP protection strategy today
