Intellectual Property (IP)
Intellectual property (“IP”) plays an important role in the world of modern commerce. Market advantage is acquired through the creation of IP, be it a business name, an innovative product or service, a trade mark or brand used in association with the product or service, a domain name, a trade secret, a client list or simply just know-how. These are the cornerstones of any business, differentiating it from competitors and providing a sustainable commercial edge in a competitive environment.
Whether you are starting a business or already running an established business, the following checks should be undertaken and routinely re-undertaken to ensure that you are adequately safeguarding the cornerstones of your business.
Choosing a Business Name
In most instances, a business name will also function as a trade mark, in that it will be used in connection with a commercial product or service.
Prior to registering a business name, you should carry out the following checks:
- Carry out a search of the business name register to ensure that your proposed business name is available for registration.
- Carry out a search of IP Australia’s trade mark database and of the internet to ensure that your proposed business name is available for registration as a trade mark and, more importantly, that your proposed business name does not conflict with any third party’s existing trade mark rights.
- Carry out a check to see that the domain name containing your proposed business name is available for registration.
Put simply, there is no point registering a business name if it cannot be used as intended, i.e., as a trade mark/brand. Carrying out the above checks may avoid a lot of heart ache and added cost by identifying a conflict early on and providing an opportunity to choose another name before you are committed.
Branded Products and Services
Prior to launching a branded product or service, checks should be undertaken to ensure that your proposed brand/trade mark does not infringe any existing trade mark rights. Again, check 2 outlined above should be carried out.
Put simply, if your proposed brand/trade mark is likely to infringe a third party IP right, you may need to choose a different brand/trade mark.
Innovative Products and Services
Prior to launching a (branded or unbranded) innovative product or service, checks should be undertaken to ensure that your proposed product or service does not infringe any existing IP rights (e.g., one or more registered patents or designs) of a third party.
Prior to launching, you should carry out the following “freedom to operate” checks:
- Carry out a search of IP Australia’s patents database.
- Carry out a search of IP Australia’s registered designs database.
Put simply, if your proposed innovative product or service is likely to infringe a third party IP right, you may wish to reconsider launching that product or service into the marketplace.
Protection of Trade Marks and/or Innovative Products and Services
Whatever is likely to distinguish your business from others and is likely to provide you with a competitive edge is important IP. Important IP ought to be safeguarded as much as possible against competitors. The following checks should be undertaken:
- Identify all IP that is likely to be of importance to your business, e.g., business name, trade mark/brand, innovative product or process, business practice, customer list, etc.
- Check your employment contracts and other agreements for suitable provisions protecting your business’ confidential information and trade secrets.
- If after undertaking check 2 above, your business name or proposed brand is available for registration as a trade mark — register it.
- If after undertaking checks 4 and 5 above, your proposed innovative product or process does not infringe any existing IP rights — protect it by way of a registered patent or design.
Generally, businesses engage graphic designers, industrial designers or other consultants to develop important IP, such as, trade marks/branding, products or processes. Careful consideration should be given to any consultancy agreements to check for ownership provisions concerning IP generated. Put simply, there may be little to no point using a consultant if ultimately you will not own the IP generated (and cannot stop them using it or selling it to another party later on).
Ideally, agreements with consultants should be in writing and include clear provisions addressing IP ownership and the transfer of that IP to your business.
Jack King-Scott BSc (Hons) PhD MIP is a registered patent and trade marks attorney in Cullens’ life sciences, applied chemistry & pharmaceutical, and medical technologies & devices practice groups. He maintains a broad practice in all aspects of IP law, including patents, trade marks and other IP rights. His day to day practice involves assisting clients with the preparation and prosecution of patent, trade mark and design applications and the management of IP portfolios throughout the world.
Disclaimer: This blog is intended to provide general information only. The contents should not be relied upon as detailed legal advice for any specific case. While every effort has been made to ensure that the contents are correct at the time of publication, please note, the relevant laws and practice are subject to change. Specific advice should be sought from your legal advisor.