Intellectual Property

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.

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.

Intellectual property rights in Australia are primarily regulated through provisions of the following Acts: Copyright Act, Patents Act, Trade Marks Act, Designs Act, Plant Breeder’s Rights Act and Circuit Layouts 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 the right of attribution, the right to prevent false 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. Australia’s criteria of patentability for standard patents is closely aligned with international standards.

Alternatively, a patentee may apply for an innovation patent which provides protection for a term of eight years. However, the Australian Government’s response to the Productivity Commission’s inquiry into Intellectual Property arrangements suggests that the Australian Government may abolish the innovation patent system.

For both types of 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. Registering a trade mark provides the owner with the exclusive right to use and commercialise that mark about specified classes of goods and services.

Trademark registration usually lasts for an initial term of 10 years and can be renewed on an ongoing basis. If the owner of a registered trade mark does not use their mark, however, it may be removed from the register for non-use.

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 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.

Plant breeder’s rights

The plant breeder’s rights scheme allows certain varieties of plant species to be registered, granting the breeder exclusive commercial rights concerning that variety of plant.

Registration requires that the variety be distinct, and for propagations to be uniform and stable, and gives the breeder a series of exclusive rights including producing, selling and exporting the plant material. Protection may last for up to 25 years depending on the plant species.

Circuit layouts

Circuit layouts are automatically conferred protection under the Circuit Layouts Act, so there is no requirement to register the layout to be granted the exclusive right to copy, commercially exploit in Australia, or make an integrated circuit of the layout. Circuit layouts may be protected for a term of up to 20 years.

Key Takeouts

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