Gilbert + tobin - Gilbert and Tobin

13. Intellectual property
In Australia, intellectual property rights are protected by federal
legislation and the common law. Australia is also a signatory to the
World Trade Organization Agreement on Trade-related aspects
of Intellectual Property Rights (TRIPS) which sets minimum
standards for intellectual property protection and enforcement.
13.1 Copyright
The Copyright Act 1968 (Cth) (Copyright Act) protects all
original literary works, dramatic works, musical works, artistic
works, sound recordings and films broadcast or published by an
Australian or first published in Australia. Under the Copyright Act,
copyright protection is automatic and does not require
registration. Literary, dramatic, musical and artistic works are
protected for the life of the author plus 70 years. If the works are
published after the death of the author, they are protected for 70
years after first publication. Australia is also a signatory to the
Berne Convention for the Protection of Literary and Artistic
Works which sets minimum rights to works first published in or
created by citizens of other member countries.
13.2 Trade marks
The Trade Marks Act 1995 (Cth) enables any person to register a
mark or sign used in connection with their goods or services. The
owner of a registered trade mark has the exclusive right to use,
and authorise others to use, the trade mark for 10 years. Trade
marks can then be renewed for potentially indefinite periods of 10
years. Unregistered trade marks are protected by our equivalent
of unfair competition law, namely, the tort of passing off and the
misleading and deceptive conduct provisions of the CCA discussed
below.
Australia is one of the 75 members of the Madrid Protocol which
establishes an international system for the registration of trade
marks. Under the Madrid Protocol, an applicant for a trade mark
may designate Australia as a country for which protection is sought
and that trade mark becomes registered in Australia upon the filing
of the international trade mark application. A foreign company
should check whether its trade marks have already been
registered in Australia by virtue of a Madrid Protocol registration
before troubling themselves with a national Australian registration.
Foreign companies should always consider acquiring registration
for their trade marks in Australia prior to the commencement of
any dealings.
13.3 Patents
The Patents Act 1990 (Cth) enables an inventor, or a person
entitled to be assigned the invention, to apply to protect a device,
substance, method or process which is new and inventive. Like the
trade marks system, it is a registration-based form of rights
protection. Two types of patents may be granted: a standard
patent for 20 years (or 25 years for a pharmaceutical patent) or an
innovation patent for renewable periods of two years up to a
maximum of eight years. Australia is one of 120 members to the
Patent Cooperation Treaty, which establishes an international
patent protection system in member states.
13.4 Registered designs
The Designs Act 2003 (Cth) (Designs Act) enables the owner
of a “new and distinctive” design to apply for the exclusive right to
use the design through a registration system. “New and
distinctive” essentially means that a design must look different to
the eye when compared with other products available on the
market and that it must not be publicly disclosed or advertised
before an application is filed, except at an internationally
recognised industry exhibition. The Designs Act protects the visual
appearance (not the function) of the design for up to 10 years.
Australia is also a party to the Paris Convention, which can be
relied upon when applying for design registration overseas. Under
this Convention, the filing date of an Australian design application
can usually be used to establish priority for corresponding design
applications made overseas if done within six months of filing the
Australian application.
There is no unregistered design right in Australia and designs that
should have been registered under the Designs Act will be denied
copyright protection. The Australian courts have held that only
very limited protection of designs is available under our unfair
competition laws. Foreign companies wishing to protect their
designs should apply for a design registration before the designs
are published or released elsewhere or within six months of
applying to register their designs in their home markets.
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