Intellectual property rights are protected in Australia by both federal statutes and common law. Australia is also a member of the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which establishes essential intellectual property protection and enforcement requirements.
Copyright
All original literary works, theatrical works, musical works, creative works, sound recordings, and films broadcast or published by an Australian or first published in Australia are protected by the Copyright Act 1968 (Cth). Copyright protection is automatic under the Copyright Act and does not need registration. The Copyright Act refers to creators as ‘authors’ in general because of its history; literary, dramatic, musical, and artistic works are protected for the author’s lifetime plus 70 years. The works are protected for 70 years after initial publication if they are published after the author’s death. As of early 2019, ‘orphan works,’ such as sound recordings and films by unknown writers, are protected for 70 years from the date of first publication or 70 years from the date of creation if they have not been made public. Australia is also a signatory to the Berne Convention for the Protection of Literary and Artistic Works, which establishes minimum rights for works first published in or created by citizens of other member countries, including moral rights (to attribution and non-derogatory treatment of a work).
Trademarks
Any owner may register a mark or sign used in connection with their products or services under the Trade Marks Act 1995 (Cth).
For ten years, the owner of a registered trademark has the exclusive right to use the mark and authorize others to use it (which is renewable, potentially indefinitely).
The tort of passing off and the misleading and deceptive behavior provisions of the Competition and Consumer Act 2010 (CC Act), described below, may protect unregistered trademarks. In other countries, they are similar to unfair competition laws or antitrust concepts. Previously, trademarks had to be registered for at least five years before they could be withdrawn for non-use, but the legislation changed on February 24, 2019, allowing unused trademarks to be revoked after just three years of registration. Companies from other countries who want to register a trademark in Australia should obtain legal advice on the implications of these developments.
The Madrid Protocol, which creates an international framework for registering trademarks, has 107 signatories, including Australia. An applicant for a trademark may identify Australia as a country in which protection is sought under the Madrid Protocol, and the trademark is registered in Australia after a successful local assessment.
Before pursuing registration in Australia, a foreign business should check to see whether its trademarks have previously been registered in Australia via the Madrid Protocol. It may be feasible to claim the same priority date as foreign applications if submitted in Australia within six months under the Paris Convention for the Protection of Industrial Property. Prior to engaging in any business in Australia, foreign companies should consider registering their trademarks there.
Patents
An inventor, or a person authorized to be assigned the invention, may file for a patent for a device, substance, technique, or process that is new and includes an inventive or creative step under the Patents Act 1990 (Cth). Patents, like trademarks, are a registration-based type of rights protection in which applicants may get a basic patent for up to 20 years (or up to 25 years for a pharmaceutical patent), with yearly renewal costs.
The innovation patent system, under which applicants may be awarded patent protection for “second-tier” innovations (for a maximum of 8 years) based on suggestions made by the Productivity Commission in 2016, is being phased down. The deadline for filing new invention patents is August 25, 2021. Existing innovation patents that were filed on or before this date will be valid until they expire. This implies that Australia’s final invention patent will expire on August 25, 2029. The Patent Cooperation Treaty, which provides a simplified, worldwide mechanism for acquiring patent protection in member nations, has 153 signatories.
Registered designs
The Designs Act 2003 (Cth) (Designs Act) allows the owner of a “new and distinctive” design to apply for the exclusive right to use the design or to authorize the use of the design via a registration system. “New and distinctive” refers to a design that stands out from other goods on the market and has not been publicly revealed or promoted prior to the filing of the application, except at an internationally recognized industry show. The Designs Act protects the design’s aesthetic appearance (but not its function) for up to ten years.
Australia is also a signatory to the Paris Convention for the Protection of Industrial Property (Paris Convention), which governs the registration of designs in other countries. According to the Paris Convention, the filing date of an Australian design application may establish precedence for comparable design applications filed abroad if pursued within six months of the filing date of the Australian application.
There is no such thing as an unregistered design right in Australia, and copyright does not cover works that should have been registered under the Designs Act. Under our version of unfair competition statutes, Australian courts have ruled that only very little protection of designs is provided. Foreign businesses that want to safeguard their designs should file for a design registration before publishing or releasing them abroad or within six months after registering them in their home markets.
Confidential information
No law in Australia protects sensitive information. Instead, protection stems from a common law concept that recognizes a duty to keep information secret when a person transmits data to another with the explicit or implicit knowledge that the information would be used for a specific purpose. When an unauthorized revelation of private information causes harm to the original discloser, legal recourse is possible. A mix of contractual, physical, and technical measures to preserve secrecy is often suggested to help businesses protect their private information (and better their chances of achieving legal remedies if things go awry). It is critical to obtain legal counsel to ensure that proper written agreements are in place to safeguard such data.
Domain names
Domain names ending in.com.au are the most relevant to Australian companies. These are licensed on a first-come, first-served basis by a limited number of authorized Australian registrars. Applicants must, however, meet the qualifying and allocation criteria. They must: (i) be an Australian registered business, (ii) be a registered foreign trader in Australia, or (iii) possess an Australian registered trademark; request the domain name for a practical commercial purpose, and have a genuine intention to use it.
There must also be a “close and significant” link between the domain name and the applicant’s name or business operations.
On behalf of the Australian government, auDA (.au Domain Administration Limited) manages the.au domain area. To combat cyber-squatting and better safeguard the rights of company name and trademark owners, auDA has placed strict restrictions on the usage of.com.au domain names. It’s also set up a specialized dispute resolution process for.com.au domain name disputes.
Asn.au,.net.au, and.org.au are some of the other domains accessible in Australia.
The Australian Domain Authority (auDA) is scheduled to open registrations for the second-level domain name.au on April 12, 2021. The.au domain names will be leased in a similar manner to existing Australian domain names such as com.au and.org.au, with three significant differences:
If the registrant relies on trademark rights to satisfy the ‘Australian Presence’ eligibility criterion, the trademark must be a wordmark or include words and remain pending/valid. This means that registrants will not be able to use logo marks without any verbal elements to establish their eligibility to hold a.au domain name. If the registrant uses trademark rights to satisfy the ‘Australian Presence’ eligibility criterion, the domain name applied for must be an exact match of that wordmark (or word(s) within the mark). As a result, a foreign company that is not otherwise operating in Australia but owns the Australian trademark ABCD will not be able to register the domain name WXYZ.
Competition and Consumer Act 2010 (Cth) (CC Act)
The CC Act includes the Australian Consumer Law (ACL), which offers additional reasons for protecting intellectual property rights in addition to particular laws established in this area. Intellectual property rights owners may use specific laws to prohibit third-party behavior that is misleading or deceptive, as well as false statements. These clauses are often compared to the common law tort of passing off and other countries’ unfair competition/antitrust laws.
The list of Australia IP Firms can be found here.