Your trademark, business name, company name and domain name are among the most valuable assets of your business.

When your customers want to find you, they will look for your names. When a new customer tries your product or service, and wants to buy it again, the customer will look for your names.

If you introduce a new product or service, customers will try it because of the reputation of your other products that they already buy.

Recognisable trademarks and other names help you achieve:

• repeat business
• new business
• greater earnings and profits.

Your names represent the largest part, or sometimes the only part, of the goodwill of your business. A new business that needs to get recognition in the marketplace and develop goodwill will gain that recognition and goodwill through its name.

While you are developing recognition and goodwill, and when you achieve it, you will not want:

• a competitor to 'free ride' on your reputation, and use your goodwill, by using your name or a similar name
• a person, whether a competitor or not, employing your name, or a similar name to confuse the marketplace, whether intentionally or unintentionally, thereby possibly damaging your reputation and goodwill.

Trademarks, business names, company names and domain names are a part of a branding strategy that may include other things such as packaging, jingles, music, catch phrases, personalities, etc.

A trademark can be registered for any of the following:

Business names and trademarks serve quite different purposes:

• Registering a business name is a legal obligation, if you choose to identify your business with a name that is different to the name of the legal entity that owns the business.
• Registering a trademark is a choice you make as part of a branding strategy for your products and services.

You could use your business name as an unregistered trademark, but that would not give you the benefits of a registered trademark.

The differences between a business name and a trademark are described below:

The registration of a trademark confers a number of advantages over the use of an unregistered trademark.

Ownership

You can 'own' a registered trademark. That is, you own the right to use the registered word, phrase or letters etc. in relation to the classes of goods and services in respect of which it is registered. Registration is proof of ownership. You cannot own an unregistered trademark.

Sale

Because a registered trademark is an asset, you can sell it. You cannot sell an unregistered trademark.

Gift by will

Like any other property that you own, you can make a gift of your trademark in your will.

Licensing

You can license the use of a trademark. Generally, it is harder to license an unregistered trademark.

Balance sheet

Because a registered trademark is an asset, a trademark that is acquired can have its value reflected in its owner's balance sheet. An unregistered trademark cannot easily be reflected on a balance sheet.

Rights across Australia

A registered trademark operates throughout Australia. This means that when a registered trademark owner pursues an infringer, the registered trademark owner need not prove its business reputation across the whole of Australia, since the trademark registration operates Australia wide.

In contrast, an unregistered trademark user will have to prove its business reputation for each part or region of Australia in which it wants an infringer stopped.

Criminal offence

The improper use of a registered trademark is a criminal offence, unlike the improper use of an unregistered trademark.

Customs assistance

The owner of a registered trademark can obtain the assistance of the Department of Home Affairs to seize foreign shipments of goods that bear fraudulent or deceptive trademarks.

Pursuit of infringers

An owner of a registered trademark can pursue an infringer without having to prove its business reputation, or to prove there has been misrepresentation or deception.

If a user of an unregistered trademark wants to pursue another user free riding on its reputation, it has to prove its business reputation, and misrepresentation or deception.

The following factors may influence your decision to register a trade mark.

Trademarks that cannot or may be hard to register

The following types of names might be difficult to register, or simply cannot be registered as trademarks:

• a person's surname, if it is a common name
• a word that is descriptive of products or services, such as 'organic', since everyone should be entitled to use that description
• a trademark that is deceptively similar to a registered trademark or one already applied for
• names that are protected and are therefore not available, such as 'Olympic'.

Trademarks that are easiest to register

A trademark that is an invented word will be easiest to register. Examples are: Google, Toyota, Starbucks, Caltex, Coca-Cola etc.

A trademark that is a common word, but is applied to identify unrelated goods and services will also be easier to register. Examples are: Apple (used in relation to computers); and Shell (used in relation to petrol and oil products).

Use or intention to use

To register a trademark, you must already be using it as an unregistered trademark, or intend to use it.

If you register a trademark and do not use it, this will be a ground for the cancellation of its registration.

Classes of goods or services

When you apply to register a trademark, you must nominate the class or classes of goods or services that will be identified with the trademark.

There are 45 classes under the International Classification of Goods and Services for the Purposes of the Registration of Marks, and you are able to nominate one or more classes in which you intend to use the trademark.

Where do I register my trademark?

To apply for the registration of a trademark, you must submit an application with IP Australia.

You can apply by choosing a Pre-application service (TM Headstart) or a standard application on IP Australia's website. You can also engage a trademark attorney to file the application on your behalf.

What happens after I file my application?

After the application is filed, the application is examined.

The trademark examiner considers whether there is compliance with all the requirements of the Trade Marks Act 1995 (Cwlth).

After that examination process, in Australia, the application is accepted and is published in the 'Australian Official Journal of Trade Marks'.

Other parties have 3 months to seek to oppose or challenge the registration of your trademark.

After a successful examination, if there is no opposition or challenge, your trademark is registered. Or, if there has been opposition, after the trademark examiner's decision is affirmed, your trademark is registered.

No 'worldwide' trademark registration is currently available.

A trademark is registered by a government of a country.

The Australian Government, for example, does not have power to register a trademark that would apply in the United States. Nor does the United States Government have the power to register a trademark that would apply in Australia.

Applying for registration in other countries

There are 2 ways of applying for registration of a trademark in other countries. You can either:

1. file a separate application in each country where you decide to pursue registration, or
2. file an application under the Madrid Protocol, and in due course nominate those countries where you want to pursue registration.

It is not mandatory to file a Madrid Protocol application.

You can file the application online from IP Australia's website. You can also engage a trademark attorney to file the application for you.

The advantage of a Madrid Protocol application is that it is a single application in English to IP Australia, instead of a separate application for each country in that country's language. This makes the application process less expensive, and simpler.

In practice, you would consider registering a trademark in those countries where you anticipate:

• selling the products or services related to the trademark
• exporting the products or services related to the trademark
• licensing the products or services related to the trademark.

Initially a trademark is registered for 10 years.

Registration can be renewed for successive 10 year periods, subject to the payment of renewal fees. As there is no limit to the number of renewals, it is possible for a trademark to be registered indefinitely.

As a registered trademark holder you have the right:

1. to obtain a court order (injunction) to stop a competitor unlawfully using (infringing) your registered trademark
2. to grant a licence to another person (e.g. in other parts of Australia, in other industries, or in other countries) to use your registered trademark, in return for licence fees, royalties, or other payments
3. to sell your trademark
4. to give your trademark away in your will
5. to mark your trademark with the ® symbol to indicate that the trademark is registered (someone who does so without having a registered trademark commits an offence).

If you use an unregistered trademark, you cannot use the ® symbol; however, you can use the ™ symbol.

What is a domain name?

A domain name is an internet address that is used to direct:

• internet users to your website
• emails to your email account.

What are the components in a domain name?

A domain name typically combines a number of components.

For example, the domain name 'www.example.com.au' has the following components:

• www - to indicate it is a worldwide web address
• example - the domain name that you register
• com - to indicate the category of domain name you have registered, which is also called a top level domain name
• au - to indicate the domain name's country of origin.

What are the top level domain names or categories?

The following top level domain name categories can be used by the following types of domain name users:

How is a country of origin identified?

The last component of a domain name indicates its country of origin by using a country's abbreviation. Some examples of abbreviations of countries of origin are:

Can the country of origin component be omitted from a domain name?

Generally, domain names that originate in the United States do not have a country of origin component to the domain name (e.g. 'www.example.com').

Registration of a domain name without the country of origin component is not confined to United States domain name holders. Anyone can register a domain name that omits the country of origin. For example, an Australian applicant can apply for a domain name with the '.com' without any country of origin component.

What type of domain name can I have?

A business will often want its domain names to be the same, or similar to:

• its trademark
• its company name, or
• its business name.

This will obviously make it easier for the business's customers to remember the domain name. As well, a domain name can be a powerful part of an overall branding strategy. A business that has a number of trademarks and other names, may in fact seek to have all the corresponding domain names.

Who is entitled to a domain name?

An applicant for a domain name can be:

• an owner of a registered trademark
• an applicant seeking registration of a trademark
• a company
• the owner of a business name
• a sole trader
• a partnership
• an incorporated association.

What do I need to apply for a domain name?

To apply for a domain name you need:

• an ABN (Australian business number)
• an ACN (Australian company number)
• an Australian business name, or
• an incorporated association number (if you are an incorporated association).

How do I register a domain name in Australia?

A domain name can only be registered through a domain name registry.

How do I register a domain name in other countries?

The closest thing to an 'international' domain name, is one that omits the country of origin component of the domain name (e.g. 'www.example.com' instead of 'www.example.com.au').

Such a domain name is registered with one domain name registry only, and, once registered, it will not be available to anyone else in the world through any other domain name registry.

However, if you want to register a domain name that contains a country of origin extension of a specific country, you have to register each separate domain name with a domain name registry that is accredited in each respective country.

You do not have to apply through a separate domain name registry for each country. Rather, you must apply through domain name registries accredited in each country.

For example, if you sought to register 'www.example.com.au', 'www.example.com.nz' and 'www.example.com.sg', you would need to either:

• select 3 domain name registries accredited in each of the 3 countries, or
• select a single domain name registry that is accredited in all 3 countries.

In practice, an Australian domain name registry will be either accredited in other countries, or can engage registries in other countries on your behalf.

What is a business name?

A business name is a name that you use to identify your business (as opposed to your products or services).

When do I need a business name?

The legal entity that owns a business can identify the business under the legal entity's own name, without the need to have a registered business name.

But if the legal entity that owns a business wants to identify the business with a different name, that different name must be registered as a business name. For example:

If I register a business name do I need to register a trademark?

Business names and trademarks serve quite different purposes:

• Registering a business name is a legal obligation, if you choose to identify your business with a name that is different to the name of the legal entity that owns the business.
• Registering a trademark is a choice you make as part of a branding strategy for your products and services.

Using your business name as an unregistered trademark would not give you the benefits of a registered trademark.

The differences between a business name and a trademark are described in the following table:

Where do I register a business name?

You can register a business name online with the;

• Australian Government Business Registration Service
• or
• Australian Securities and Investments Commission.

Who can register a business name?

A business name can be registered by:

• a person (e.g. a sole trader)
• a partnership or joint venture
• a company or other incorporated entity
• unincorporated entity, including a trust, superannuation fund or unincorporated body or association

Searching before registering a business name

Before registering a business name you should consider doing a number of searches.

Copyright protects the way in which something is expressed. It does not protect ideas.

For example, if you wrote a new computer program to perform a function, the software code would be protected by copyright. Someone else could then write their own computer program to perform the same function. They would not infringe your copyright unless they copied the software code of your computer program.

The following are just a few examples of works in which copyright subsists:

Artistic works

• A novel
• A poem
• A photograph
• A movie
• Lyrics to a song
• A musical composition in the form of sheet music
• A sound recording
• A painting
• A plan for a building

Computing

• Computer software application
• Software code for a programming tool or software application
• Software code for a website
• Software code that manages a database

Business

• A database
• Text of a marketing plan or business plan
• Numbers and calculations in a financial forecast
• Architectural plans
• Annual reports
• A manual for the operation of equipment
• Technical specifications for a device
• Business proposals
• Letters and emails sent by a business

For copyright to subsist:

1. there must be an expression of ideas in a literary, dramatic, musical or artistic work, or in subject matter other than works, such as in an audio-visual performance
2. the work must be original
3. the work must be recorded in a 'material form', for example
   1. written down on paper or something else
   2. recorded by keystrokes saved on a computer
   3. recorded on film
   4. recorded on tape
   5. recorded as software code saved on a computer
   6. recorded digitally onto a device
4. there must be an author or artist.

When does copyright protection start?

Copyright commences automatically as soon as the copyright work is recorded in a material form.

There are no formalities such as registration, publication, or examination (as occurs with trademarks and patents), and there are no fees payable.

When does copyright protection end?

The duration of copyright differs from one type of copyright work to another.

Duration of copyright

Under the Copyright Amendment (Disability Access and Other Measures) Act 2017 (Cwlth) which amended the Copyright Act 1968 (Cwlth), new terms of protection apply in Australia to copyright materials, including materials made before 1 January 2019 and materials created or made public on or after that date.

'Copyright materials' includes works (including literary, dramatic, musical and artistic works), sound recordings and cinematograph films.

These duration rules do not apply to material in which copyright expired by 1 January 2019.

Find out more about the duration of copyright in Australia from the Australian Copyright Council.

There is an international treaty called the Berne Convention.

Countries that have signed the treaty have agreed to pass laws in their own countries that will extend to nationals of other signatory countries the same copyright protection that is extended to their own nationals.

Australia is a party to the Berne Convention, so Australians enjoy the same protection that is given in other countries that are parties to the Berne Convention.

The Berne Convention and other treaties also require treaty member countries to maintain minimum levels of copyright protection. With those minimum standards, and international harmonisation of copyright laws, by and large, Australians enjoy the same copyright protection in other countries as they do under Australian copyright law.

Accordingly, just as there are no formalities such as registration, publication, or examination of copyright works in Australia, and no fees are payable, so also, there are no such formalities in other countries, and similarly, no fees are payable in other countries.

View a list of member countries of the Berne Convention on the World Intellectual Property Organization website.

A copyright holder has the right to use the © symbol to indicate that copyright subsists in the work upon which the symbol is used, and to indicate who owns the copyright. The use of the © symbol, however, is not mandatory.

Someone who employs the © symbol when not an owner would be liable for engaging in misleading or deceptive conduct.

Your other rights as a copyright holder include the right:

1. to obtain a court order to stop someone unlawfully using (infringing) your copyright (this kind of order is an injunction)
2. to grant a licence to another person (e.g. in other parts of Australia, in other industries, or in other countries) to exercise some of your rights as a copyright holder, in return for licence fees, royalties, or other payments
3. to sell your copyright
4. to give your copyright away in your will

Other rights depend upon the nature of the copyright work; for example:

Moral rights are an author's non-economic rights:

• to be attributed (that is, credited) for the work (the right of attribution)
• not to have the work falsely attributed
• not to have the works treated in a derogatory way (the right of integrity).

Who has moral rights?

Moral rights are held by the authors or creators of the copyright work, and always stay with the author or creator.

Moral rights cannot be sold or transferred. They are personal rights held by the author or creator.

The sale or assignment of the copyright in a work does not affect the author's moral rights, which continue.

Are moral rights relevant?

Moral rights can easily be understood in the context of literary, musical and artistic works.

Moral rights are less easily understood in the context of business-related works (e.g. computer programs) or business documents (e.g. marketing plans and business plans).

Nevertheless, moral rights apply equally to computer programs and these business documents.

How do moral rights arise?

Moral rights arise at the same time as copyright arises, that is, upon the creation of copyright material.

How long do moral rights last?

Moral rights have the same duration as copyright.

Can moral rights be waived?

The Copyright Act 1968 (Cwlth) permits moral rights to be waived by authors, either in relation to all moral rights, or in relation to specific acts.

Confidential information is any type of information that you regard as confidential. Confidential information has value because you know the information, and others do not. Trade secrets and know-how are subsets of confidential information.

Place names that identify the origin of a product are called 'geographical indications'. While not strictly an intellectual property right, they sometimes resemble trademarks.

When a geographical indication is available and used in relation to a product, it indicates the origin of the product, and communicates to a consumer the quality, reputation or other characteristics of products from that geographical origin.

Often, for a product to be permitted to be branded as a geographical indication, it must do more than originate from the geographical region. In addition, it must meet certain minimum quality, or ingredient, production, or other requirements.

Examples of geographical indications

There are many examples of geographical indications from all over the world.

In Australia, some examples of geographical indications are:

In Australia, geographical indications are protected by:

• specific legislation
• certification trademarks
• consumer protection laws.

Specific legislation

Pursuant to international treaties and agreements to which Australia is party, specific legislation in Australia regulates the use of both Australian and foreign geographical indications in relation to wine.

It is an offence therefore, if a seller, exporter or importer of wine sells, exports, or imports it with a false description.

A description will be false, for example, if it:

1. indicates that wine originated in Australia or another country, when it did not originate in the indicated country
2. indicates a registered geographical indication, when it did not originate from the geographical region associated with that registered geographical indication.

In each case, a criminal offence is committed.

Certification trademarks

A certification trademark can be applied for, owned and used much like ordinary trademarks.

The purpose of the certification trademark is to indicate that a product or service is certified as having met a specific standard. The standard that it is required to meet could relate to its quality, its content, the method by which it is made, or its geographical origin.

The following table includes examples of certification trademarks that indicate geographical origin.

Consumer protection laws

The Australian Consumer Law makes it unlawful for a person to:

• engage in conduct that is misleading or deceptive or likely to mislead or deceive, or
• make false or misleading representations.

A person engages in misleading and deceptive conduct if, for example, the person makes a statement in trade or commerce that is misleading or deceiving or likely to mislead or deceive.

Accordingly, making a claim that a product has a certain origin, when that is not the case, is misleading or deceptive or likely to mislead or deceive, and contrary to the Australian Consumer Law.

It can also be a false or misleading representation.

That will be so, whether the origin that is incorrectly claimed is an Australian origin, or an overseas origin.

Contravention can lead to:

• damages (paying monetary compensation)
• an injunction (an order that certain conduct stop)
• in some circumstances, a fine (pecuniary penalty)
• other orders.

What is meant by 'traditional knowledge'?

Traditional knowledge refers to:

• knowledge or practices passed down from generation to generation that form part of the traditions or heritage of Indigenous communities
• knowledge or practice for which Indigenous communities act as the guardians or custodians.

The type of knowledge that is considered within this scope includes:

• knowledge about the medicinal properties or effects of flora and fauna
• knowledge about hunting or fishing techniques.

What is meant by 'Indigenous cultural expression'?

Indigenous cultural expression refers to:

• ways in which Indigenous communities express their traditional culture
• ways that are part of their heritage or identity
• ways that are passed down from generation to generation.

Indigenous cultural expression might, for example, take the form of song, stories, dances, art, designs, crafts, etc.

Who owns traditional knowledge and Indigenous cultural expression?

Indigenous communities regard themselves as the guardians and owners of traditional knowledge and Indigenous cultural expression on behalf of their communities.

The intellectual property framework does not easily protect traditional knowledge and Indigenous cultural expression.

Sometimes, the opposite is the case, where the intellectual property framework might operate to allow traditional knowledge and Indigenous cultural expression to be commercially exploited, for great profit, without any economic benefits accruing to the Indigenous communities that made it available in the first place.

For example:

• An Indigenous community might have knowledge that a particular plant has a medicinal effect. Scientists, with the benefit of that knowledge, undertake research on the plant. They identify the compounds that have the medicinal effect and develop a drug. The pharmaceutical company that produces and markets the drug realises significant profits, and its shareholders benefit financially. However, there are no economic benefits for the Indigenous community that made this possible.
• The music of an Indigenous folk song might be adapted so that the adaptation is subject to copyright. The copyright holder earns royalties and income from the recording, as well as its performance. However, no royalties or income are shared with the Indigenous community that 'owned' the music before its adaptation.

There is some protection of traditional knowledge and Indigenous cultural expression by the intellectual property system, for example:

However, intellectual property laws offer limited protection for traditional knowledge and Indigenous cultural expression.

More information

For more information on this topic, read:

• Traditional knowledge and biodiscovery
• Reform of the Biodiscovery Act 2004.

A confidentiality agreement is a legally binding contract. If you disclose confidential information to another person under a confidentiality agreement, they are required to keep that information secret and confidential, and not misuse it.

The table below includes some examples of the types of confidential information that you can protect through a confidentiality agreement, the consequences of not having a confidentiality agreement, and the advantages of a confidentiality agreement to your business.

The following checklist will help you understand the different parts of a confidentiality agreement.

The comments below apply to all categories of intellectual property: trademarks, copyright, software, patents, trade secrets and confidential information, designs, circuit layout rights, and plant breeder's rights.

As a general rule, an employer will own the intellectual property created by its employees in the course of their employment.

However, intellectual property that is created by an employee, other than in the course of employment, is owned by the employee, not the employer.

What does 'in the course of employment' mean?

The most important single factor in deciding ownership of intellectual property created by employees is whether or not the employee had a duty to create intellectual property as part of their employment duties.

An employee who creates intellectual property in the normal course of their duties cannot claim to own that intellectual property.

However, if the employee is not employed to create intellectual property, but does so, then the employee will own the intellectual property.

Consideration needs to be given to all the circumstances:

1. How are the employee's duties described in any written employment contract?
2. Are there duty statements that record the duties of the employee's position?
3. Did the employer direct the employee's activities that led to the creation of the intellectual property?

The fact that an employee used the employer's equipment is not enough by itself to show that the employer should own the intellectual property created with the use of that equipment.

Whether the intellectual property was created during working hours, or outside working hours, does not affect ownership. Whether it was created at the employer's premises, or at the employee's home, does not affect ownership.

For an employer to protect its intellectual property in relation to its employees, every employment contract should deal with the following 6 essential terms.

While some categories of employees are more likely than others to create intellectual property in the course of employment, some employers require all their employees to enter into written employment contracts covering the 6 essential terms.

When deciding to include intellectual property terms in employment contracts consider:

• the nature of your business
• the positions that your employees have
• information your employees can access
  
• whether your employees could set up a competing business
• all other factors that may affect your own circumstances.

You will need to decide whether:

• all employees must sign agreements covering all 6 terms
• all employees must sign a document to maintain confidential information in confidence, not extending to intellectual property issues
• a restraint clause is necessary or not.

A solicitor will be able to advise you, as well as prepare an employment agreement covering the terms that you need.

The following are practical steps you could take to help protect your intellectual property.

While an employer owns intellectual property created by employees in the course of employment, the same rule does not apply when engaging a contractor or consultant.

In the absence of a contract to the contrary, a contractor or consultant will own the intellectual property that the contractor or consultant creates.

If the agreement by which a contractor or consultant is engaged is silent about the ownership of intellectual property, at best the law will imply a licence from the contractor to you, to enable you to use the intellectual property created by the contractor or consultant.

But you will not own that intellectual property.

When you engage a contractor or consultant, and you expect to own the intellectual property arising from the engagement, you must expressly provide for this in the engagement agreement.

How far should ownership of intellectual property be claimed in a contractor's agreement?

Some intellectual property created by a contractor in the course of an engagement, or included in what is delivered to you, will be the contractor's 'tools of trade' or other pre-existing intellectual property in which the contractor will expect to retain ownership.

Where this is legitimately the case, the contractor's agreement should not provide for ownership of all intellectual property to be transferred to you.

Instead, the contractor's agreement should make a distinction between the following:

1. The contractor's intellectual property that is in the nature of a 'tool of trade'. Ownership of this 'tool of trade' intellectual property should be retained by the contractor.
   However, the contractor must grant a licence to you to enable you to use that 'tool of trade' intellectual property to the extent required for you to be able to use your new intellectual property without infringement.
   This licence should be non-exclusive, not require any further payment, be irrevocable, and be able to be sub-licensed.
2. The new intellectual property arising in the course of the contractor's engagement, that is, all the intellectual property created by the contractor for you, other than 'tool of trade' intellectual property.
   This new intellectual property should be owned by you.

Who is a volunteer?

A volunteer is anyone who:

• creates intellectual property for, or with you
• is not your employee, or an independent contractor or consultant.

For example, a relative, a friend, or a neighbour whom you have made aware of your innovation may make an innovative suggestion, or you may work with them on your innovation, and they may make contributions to your innovation.

Another example is that your business may have provided an internship or work experience to someone who contributes to an innovation in your business.

What are volunteers' rights to intellectual property they create?

As the volunteer is not your employee, and you are not the volunteer's employer, the general rule that an employer owns the intellectual property created by an employee in the course of employment does not apply.

The position with a volunteer is similar to the position with an independent contractor or consultant.

An independent contractor or consultant owns the intellectual property that they create, unless other arrangements have been agreed.

If the person who engages an independent contractor or consultant seeks to own the intellectual property created in the course of the engagement, specific provisions in the engagement contract need to address this.

In the same way:

• a volunteer owns the intellectual property that the volunteer creates
• if you need to own the intellectual property created by the volunteer, you need to have the volunteer transfer ownership of it to you, in writing.

You should see a solicitor to do this for you.

The joint ownership of intellectual property can arise in 2 different ways:

1. An agreement may provide that intellectual property will be owned jointly by the parties, regardless of whether they were joint authors, joint inventors or joint creators.
2. The parties may contribute jointly to the creation of the intellectual property and so are joint authors, joint inventors or joint creators.

What should an agreement address if there is to be joint ownership?

Sometimes, parties have an agreement, and agree on joint ownership of the intellectual property, but do not regulate their joint ownership relationship any further.

If joint ownership is to be agreed, it is critical that the agreement also address the following 3 questions:

1. Can a joint owner exploit the jointly owned intellectual property?
   1. only with, or without the need for, the other joint owner's consent?
   2. only with the obligation, or without the obligation, to pay royalties (or other fees)?
2. Can a joint owner grant a licence of the jointly owned intellectual property to another person?
   1. only with, or without the need for, the other joint owner's consent?
   2. only with the obligation, or without the obligation, to share the royalties (or other fees) received from the licensee?
3. Can a joint owner assign its share of the jointly owned intellectual property to another person only with, or without the need for, the other joint owner's consent?

If an agreement does not address these questions, the joint owners will be regulated by the different and sometimes inconsistent laws that apply in relation to joint ownership.

It is therefore always prudent to specifically address the 3 questions above in your agreement, so that the jointly owned intellectual property is regulated in the manner that the joint owners agree, instead of the sometimes unpredictable and disadvantageous way that the law might regulate the jointly owned intellectual property.

Ownership proportion

The other matter that an agreement should specifically address is the ownership proportions held by the joint owners.

If the parties do not specify a joint ownership proportion, it will be presumed that they are equal joint owners.

However, joint owners do not always seek to be equal joint owners. Sometimes, one may make a larger contribution than the other (in money, resources, or an innovative contribution), which may justify an unequal ownership proportion.

In that case, it will be important to specify what the joint ownership proportion will be, or how it is to be determined, to avoid it being presumed to be equal.

Unless the joint owners of a patent agree otherwise, the law provides they have equal shares in the patent and can exploit it for their own benefit without accounting to each other. However, 1 owner cannot grant a licence under the patent, or assign an interest in it, without the consent of the other owner.

Now let's consider the case of 2 joint owners who collaborated on a project and expected their relationship, because it was based on joint ownership, to be joint, mutual, and with equal benefits.

They either:

1. had no agreement governing their joint ownership rights, or
2. had an agreement, but were silent on their respective joint ownership rights.

That being the case, the law will step in to provide a default position on 3 critical questions:

One joint owner is a large company ('L') with manufacturing, marketing and selling capability.

The other joint owner has a small family company ('S') without that manufacturing, marketing and selling capability.

They can both exploit the patent and retain the profits, without accounting to the other for those profits.

L has the capability to do so, but S does not.

S asks L for permission for S to grant a licence to another person, but because that would result in L having a competitor to contend with, L declines.

S and L expected their joint ownership relationship to be one of joint and mutual equal benefits.

But practically, L has all the benefits of ownership, and S has none.

The lesson is that it is not desirable to be silent on these issues of exploitation, assignment and licensing, but rather, to specifically address them, and for a joint ownership agreement to regulate in an agreed manner the respective rights of the joint owners in relation to these 3 critical questions.

Now let's consider the case of 2 software engineers, or other authors who jointly write a copyright work, and therefore jointly own the copyright in that work.

Again, they expect their relationship, because it was based on joint ownership, to be joint, mutual, and with equal benefits.

As before, they either:

1. had no agreement governing their joint ownership rights, or
2. had an agreement, but it was silent on their respective joint ownership rights.

That being the case, the law will step in to provide a default position on 3 critical questions:

The result now is that neither joint owner can realise any economic benefits whatsoever, without them doing so together.

Sometimes this might operate fairly, ensuring that the joint owners benefit together.

But it could just as likely operate unfairly, with an uncooperative joint owner placing roadblocks that prevent the joint owners realising economic benefits from their joint copyright.

The lesson is that it is not desirable to be silent on these issues of exploitation, assignment and licensing, but rather, to specifically address them, and for a joint ownership agreement to regulate in an agreed manner the respective rights of the joint owners in relation to these 3 critical questions.

Trade secrets, know-how and confidential information are not 'property' so it is not entirely accurate to ascribe to them any joint ownership characteristic, but we nevertheless need to do so.

It is not unusual for a collaboration agreement to broadly describe 'intellectual property' in a way that includes trade secrets, know-how and confidential information, and for a provision to be included in the collaboration agreement stating that all intellectual property will be jointly owned.

Suppose that the only outputs of the collaboration are trade secrets, know-how and confidential information.

The collaborators having agreed that all 'intellectual property', including trade secrets, know-how and confidential information were to be jointly owned, what meaning is to be given to those terms?

The relationship between the collaborators could be described as one of confidence - dealing as it were with confidential information.

The use or disclosure of the confidential information by one collaborator, without the sanction of the other, could well destroy the confidential character of the confidential information.

A court would therefore be likely to step in, to prevent the confidential character of the information being destroyed if the other collaborator had not consented to its use.

That being the case, these 3 questions might well be answered by a court in the following way:

These questions are answered in a similar way to those answered in relation to copyright.

The result again is that neither 'joint owner' is able to realise any economic benefits whatsoever, without acting together.

Sometimes this situation might operate fairly, ensuring that the 'joint owners' benefit together.

But it could just as likely operate unfairly, with an uncooperative 'joint owner' impeding the joint owners realising economic benefits from their joint copyright.

The lesson, again, is that it is not desirable to be silent on these issues of exploitation, assignment and licensing, but rather, to specifically address them, and for a joint ownership agreement to regulate in an agreed manner the respective rights of the joint owners in relation to these 3 critical questions.

What are the implications of joint ownership of trademarks, designs, integrated circuits, or plant varieties?

Each of these categories of intellectual property is governed by its own legislation.

However, none of the 4 relevant pieces of legislation deals with joint ownership.

If there was joint ownership of any of these types of intellectual property, it could be the outcome of the joint owners being partners, or again, standing in relation to each other in a position of trust and confidence, as is the case with confidential information.

That being so, where the joint owners are silent about their respective rights and obligations as joint owners of intellectual property, the position may be not unlike that which applies in relation to copyright, and confidential information, that is:

The result again is that neither 'joint owner' can realise any economic benefits whatsoever, without doing so together.

The lesson, again, is that it is not desirable to be silent on these issues of exploitation, assignment and licensing, but rather, to specifically address them, and for a joint ownership agreement to regulate in an agreed manner the respective rights of the joint owners in relation to these 3 critical questions.

Most businesses have intellectual property of some type, but they do not always recognise it. An IP audit is a review of the intellectual property 'state of affairs' in your business.

Failing to recognise intellectual property you have means it may not be working as hard as it could to benefit your business.

It also may mean that you are at risk of losing the competitive advantage that your intellectual property may give you, should you lose or fail to protect your intellectual property.

Below are a series of questions and activities that will help you undertake an IP audit of your business.

You might need to refer to the reports that you have generated to help answer some of the questions. You may also need the help of a professional adviser to answer some questions.

Does my business have any processes in place to identify intellectual property?

• Do you have a process in your business by which your employees recognise intellectual property and identify it to you?
• Do you have a register or database of intellectual property (IP register) that has been identified, with details about how it is protected?
• Do you periodically review your IP register to ensure that it is up to date?
• Do you periodically explore with your employees new ideas and processes that they have, or refinements on existing ideas and processes?

How do I identify intellectual property?

Consider the operations and activities of your business, and progressively list all the intellectual property that you have under the following headings, allocating a name to each, and a description.

Include all the intellectual property that you believe that you own, intellectual property that you are developing, as well as intellectual property that you use, even if you are unsure of its ownership. Your list should include:

• names (registered or unregistered) including trademarks, business names, company names, and domain names
• copyright
• new products, processes or patentable inventions
• trade secrets, know-how and confidential information
• designs (registered or not)
• circuit layout rights
• new plant varieties (registered or not)
• traditional knowledge.

Is my intellectual property being used effectively?

Ask yourself the following questions:

• Is my intellectual property being used to its best advantage?
• Do staff who need to know about intellectual property actually know it, or is its use 'hit or miss'?
• What steps can I take to ensure my intellectual property is being used to its best advantage?

Do I own the intellectual property I have identified?

Consider each item that you have identified.

• Was it created by your employees in the course of their employment? If so, have you ensured that you have captured ownership of the intellectual property in the employment agreement, and protected it with confidentiality and other clauses in the employment agreement?
• Was it created by independent contractors or consultants in the course of their engagement? If so, have you ensured that you have captured ownership of the intellectual property in the engagement agreement, and protected it with confidentiality and other clauses in the engagement agreement?
• Is it jointly owned? If so, do you need permission to use it in the way that you do, and do you already have that permission?
• Is it someone else's intellectual property? If so, have you been granted a licence to use it in the way that you do?

Registered intellectual property

Include the registration details of any intellectual property that you have registered (trademarks, business names, company names, domain names, patents, registered designs, and plant breeder's rights).

Record in a diary or calendar when renewal or maintenance fees are due. Learn more about renewing IP.

Unregistered intellectual property

For each item of intellectual property that is unregistered, consider whether it would be prudent to register it, and whether it is eligible for registration.

Overseas protection

Consider whether any intellectual property should be protected in other countries, and if so, the steps you should take to proceed to do so.

Other protection strategies

Consider all the other protection strategies mentioned in this tool, both contractual as well as practical.

Identify which strategies should be employed to protect each item of intellectual property.

Assess whether those strategies are being employed well, and assess whether steps should be taken to improve protection.

Are there opportunities to share my intellectual property?

If your intellectual property benefits you in your business, it might well benefit other people in their business, but at the same time you do not want to better equip your competitors.

Consider whether there are businesses that do not compete with you that may be interested in licensing your intellectual property.

A business in an entirely different industry might benefit from your intellectual property.

A business in the same industry sector, but located elsewhere in Australia (so that it may not really be a competitor), might benefit from your intellectual property.

A business in another country might benefit from your intellectual property.

Are other people using my intellectual property without my permission?

If so, consider whether there are steps you can take to deter them, to stop them, or to receive compensation from them.

An IP register is a living document

Your IP audit and IP register should not be something that you do once and then put away.

The most intellectual property-savvy businesses regularly undertake IP audits and reviews. Treat your IP register as a living document, periodically updating and adding to it, to ensure that all your intellectual property advantages are recognised.

What is an infringement of intellectual property?

An infringement occurs when your intellectual property is used without your permission by:

• a competitor
• an employee or former employee
• a contractor or consultant that you have engaged, or previously engaged
• anyone else.

When should I enforce my intellectual property rights?

You might consider enforcing your intellectual property rights to:

1. Protect the value of your intellectual property
   • If anyone can use your trademark, patent, PBR, or other intellectual property rights without compensating you for that use, your intellectual property rights do not maintain value.
   • Your intellectual property rights maintain value only for as long as the use of your intellectual property is not free.
2. Stop an infringer
   • If you know that your intellectual property rights are being infringed, you can seek a court order to stop the infringer using your intellectual property rights.
   • This type of court order is called an injunction.
3. Seek compensation
   • If your intellectual property has been infringed, you can seek a court order to be financially compensated by the infringer.
   • This type of court order refers to paying damages.
4. Protect your reputation
   • If your trademark has a reputation in the marketplace, the misuse of the trademark may impact negatively upon that reputation. You may want to stop that misuse by seeking an injunction.
5. Prevent infringing products entering Australia
   • If you know of products entering Australia that infringe your trademark or copyright, you can ask Australian Customs to seize the infringing products and stop them entering Australia.
6. Deter misuse
   • If you have a reputation for enforcing your intellectual property rights, it may deter infringers.
   • Conversely, if you have a reputation for not enforcing your intellectual property rights, it may encourage infringers.

If I have to enforce my intellectual property rights, why should I bother having them to begin with?

Not every holder of intellectual property rights incurs legal fees in enforcing their intellectual property rights.

In fact, relatively few people ever need to seek legal help. Having intellectual property rights in the first place deters infringers.

Most people will not intentionally infringe your intellectual property rights because they know that you are able to seek an injunction to stop them, and obtain damages against them for their misuse of your intellectual property rights.

This explains the high number of trademarks, patents, plant breeder's rights, etc. that are granted, and the relatively small number of infringement actions that are brought.

Should I just threaten someone I think is infringing my rights?

You need to think carefully before making threats against someone you suspect may be infringing your intellectual property.

Making threatening demands without evidence is unlawful. If you assert that your intellectual property has been infringed, you need to have evidence that that is the case.

You should therefore always obtain legal advice about the adequacy of your evidence, before making threatening demands of someone you suspect may be infringing your intellectual property rights.

What is the range of court orders I can seek?

There are a number of different types of court orders that might be available depending on your specific circumstances:

1. Injunction
   • There are 2 types of injunctions: interim and permanent.
   • An interim injunction is an urgent but temporary order that requires an infringer to stop infringing.
   • This is called an interim injunction because a court must be persuaded that there is urgency, and that there is sufficient evidence of infringement. A court will defer ordering a permanent injunction until all the evidence has been presented.
   • Once all the evidence has been presented, if the court continues to be satisfied that infringement has occurred, a permanent injunction can be ordered.
2. Damages
   • Damages is an order that financial compensation be paid by the infringer to the intellectual property rights holder for the loss that the intellectual property rights holder has suffered as a result of the infringer.
3. Account of profit
   • This is also a financial compensation order, but instead of the infringer paying damages, the infringer must hand over the profits they made from their infringing conduct.
   • This amount could be much larger than the damages that might have been ordered.

Is court action the only way that I can enforce my intellectual property rights?

You may need to go to court to seek an order to protect your intellectual property rights, but not everyone who enforces their intellectual property rights has to go to court.

All of the following approaches are possible:

1. Issuing a letter of demand
   • You can demand by letter that an infringer stop infringing your rights. The infringer may not have known that they were infringing until receiving your letter. Even if they were aware that they were infringing, they may decide not to test your resolve to protect your intellectual property rights. In both cases, a letter may stop their infringement.
2. Granting a licence
   • An infringer may respond to a letter of demand by asking that you grant them a licence, and offering to pay you a royalty.
   • Depending on whether their use of your intellectual property was in competition with your own business, you might consider that request, and earn an additional source of profit from your intellectual property.
3. Alternative dispute resolution
   • Before going to court, you may want to consider alternative dispute resolution (i.e. to avoid the expense of litigation).