Gilbert + tobin

13. Intellectual propertyIn Australia, intellectual property rights are protected by federallegislation and the common law. Australia is also a signatory to theWorld Trade Organization Agreement on Trade-related aspectsof Intellectual Property Rights (TRIPS) which sets minimumstandards for intellectual property protection and enforcement.13.1 CopyrightThe Copyright Act 1968 (Cth) (Copyright Act) protects alloriginal literary works, dramatic works, musical works, artisticworks, sound recordings and films broadcast or published by anAustralian or first published in Australia. Under the Copyright Act,copyright protection is automatic and does not requireregistration. Literary, dramatic, musical and artistic works areprotected for the life of the author plus 70 years. If the works arepublished after the death of the author, they are protected for 70years after first publication. Australia is also a signatory to theBerne Convention for the Protection of Literary and ArtisticWorks which sets minimum rights to works first published in orcreated by citizens of other member countries.13.2 Trade marksThe Trade Marks Act 1995 (Cth) enables any person to register amark or sign used in connection with their goods or services. Theowner of a registered trade mark has the exclusive right to use,and authorise others to use, the trade mark for 10 years. Trademarks can then be renewed for potentially indefinite periods of 10years. Unregistered trade marks are protected by our equivalentof unfair competition law, namely, the tort of passing off and themisleading and deceptive conduct provisions of the CCA discussedbelow.Australia is one of the 75 members of the Madrid Protocol whichestablishes an international system for the registration of trademarks. Under the Madrid Protocol, an applicant for a trade markmay designate Australia as a country for which protection is soughtand that trade mark becomes registered in Australia upon the filingof the international trade mark application. A foreign companyshould check whether its trade marks have already beenregistered in Australia by virtue of a Madrid Protocol registrationbefore troubling themselves with a national Australian registration.Foreign companies should always consider acquiring registrationfor their trade marks in Australia prior to the commencement ofany dealings.13.3 PatentsThe Patents Act 1990 (Cth) enables an inventor, or a personentitled to be assigned the invention, to apply to protect a device,substance, method or process which is new and inventive. Like thetrade marks system, it is a registration-based form of rightsprotection. Two types of patents may be granted: a standardpatent for 20 years (or 25 years for a pharmaceutical patent) or aninnovation patent for renewable periods of two years up to amaximum of eight years. Australia is one of 120 members to thePatent Cooperation Treaty, which establishes an internationalpatent protection system in member states.13.4 Registered designsThe Designs Act 2003 (Cth) (Designs Act) enables the ownerof a “new and distinctive” design to apply for the exclusive right touse the design through a registration system. “New anddistinctive” essentially means that a design must look different tothe eye when compared with other products available on themarket and that it must not be publicly disclosed or advertisedbefore an application is filed, except at an internationallyrecognised industry exhibition. The Designs Act protects the visualappearance (not the function) of the design for up to 10 years.Australia is also a party to the Paris Convention, which can berelied upon when applying for design registration overseas. Underthis Convention, the filing date of an Australian design applicationcan usually be used to establish priority for corresponding designapplications made overseas if done within six months of filing theAustralian application.There is no unregistered design right in Australia and designs thatshould have been registered under the Designs Act will be deniedcopyright protection. The Australian courts have held that onlyvery limited protection of designs is available under our unfaircompetition laws. Foreign companies wishing to protect theirdesigns should apply for a design registration before the designsare published or released elsewhere or within six months ofapplying to register their designs in their home markets.PAGE 33