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Key Considerations for Investing in Australia – Intellectual Property & Brand Protection

Melissa McGrath, Catherine Sedgley

Relevant law (state/federal/awards/policies etc). Key regulatory bodies (ASIC, APRA, ACCC etc). Broad outline of how easy it is to work within this framework, whether subject to high level of public scrutiny etc.

The Australian legal system, legislation and government bodies dealing with intellectual property rights in Australia all supports innovation and favours the protection of intellectual property rights.

Australia provides a comprehensive legal framework for the protection of intellectual property rights and technology, not only for local inventors in Australia, but for many other countries by which Australia has multilateral and bilateral treaty arrangements. The intellectual property laws of Australia are governed by several pieces of Commonwealth legislation, the content of which has been strongly influenced and guided by Australia being a signatory to various international intellectual property treaties, for example the Madrid Protocol for the protection of trade marks. Australia has a statutory framework for the registration of patents, trade marks and designs. Whereas, material is automatically protected by copyright in Australia under the legislative framework, and no specific registration is required.

1. Availability of your brand

Before commencing use of a new brand in Australia, the brand owner should ensure that the brand can be used in Australia without risk of trade mark infringement and is available for registration by conducting due diligence searches of the Australian Trade Marks Register and local marketplace enquiries. International brand owners should not take for granted that their brand will be available for use and registration in Australia.

2. Ownership and licence arrangements for your brand

International brand owners will need to consider whether any intellectual property rights will be owned by the parent company or by a local subsidiary.  If an international brand owners were to grant a licence to its local subsidiary to use its intellectual property, it should ensure that any use is authorised with clear evidence of control by the registered trade mark owner, as opposed to relying on an informal or unwritten licence arrangement, even between related entities.

3. Registration of your IP rights

Australia has a statutory framework for the registration of patents, trade marks and designs, which is administered by a single Government agency, IP Australia. Patents, designs and trade marks are issued and protected nationally. The process for registering patents, designs and trade mark can be complex for brand owners and it is recommend to consult a suitably trained legal professional before applying.

4. General enforceability of your IP rights

International brand owners should closely monitor the activities of competitors, to keep an eye out for anyone who could be infringing their IP rights. The actions of others and the release of imitation products could easily erode your market share and worst-case scenario ruin your reputation in the Australian marketplace. Brand owners should develop an infringement strategy and consider investing in an IP insurance policy.

5. Monitoring and enforcement of your IP rights against the parallel importation of goods

“Parallel importation” refers to the practice of unauthorised importers importing into Australia branded goods that were intended by the brand owner to be sold overseas but not in Australia. The goods are not counterfeit – they are simply goods which have been approved for sale only in certain countries. Parallel importing is legal in many cases in Australia.

To protect your brand in Australia, international brand owners should consider lodging a Notice of Objection with Australian Customs and Border Protection Services (Customs). Once a Notice of Objection has been lodged by the brand owner, Customs can seize goods either when they suspect, or when the trade mark owner notifies them, that the goods are infringing trade marks.

If you have any questions or require assistance with any of the above, please do not hesitate to contact a member of Coleman Greig’s Commercial Advice team, who would be more than happy to assist you.