How protected is your intellectual property?
You recognise the value in the name of your business as well as your logo, client list, etc. What have you done to protect it?
We have had a number of clients recently who have not paid enough attention to their intellectual property (“IP”) and this has landed them in some sticky situations. We run through some key areas of, and common misconceptions around, IP protection below.
Many people mistakenly think that the registration of their company name or business name is all that they need to keep their name safe. In reality this gives them almost no protection. The only thing that it does is that it stops someone from registering an identical or nearly identical name. Tiny changes in the name can result in it getting through ASIC, even if it looks or sounds the same. You may think that this is a little ridiculous. However, the registration is not designed to protect you, but rather to protect the consumer. The system is there so that the consumer can know who they are dealing with, it’s that simple.
So, registering a company or business name with ASIC does not:
- give you the exclusive right to the use of that name;
- allow you to stop others from using that name in relation to their goods or services; or
- protect you from claims by others that you are infringing their rights to the use of the name.
These are the functions of a trade mark. A trade mark is the strongest ‘sword’ you can wield against an infringing competitor who is starting to use an identical or similar mark somewhere in Australia, in connection with the goods and/ or services that you provide. It is also a powerful ‘shield’, providing a strong defence against a claim that you have infringed upon someone’s mark.
There are a variety of different things that you can get a trade mark over. Two of the most common ones are the name that the business trades under and its logo. Let’s take Nike for example. Now, unsurprisingly Nike have more trade marks than you can poke a stick at. These especially include the name “Nike” and their logo, the Nike “swoosh” (the world-famous tick-like symbol). Generally, we recommend registering at least both the name and the logo of a business. This is because a competitor could take your name but not your logo (or vice versa: your logo but not your name), and it is crucial to protect both. However, each business is different and it is important to consider what trade marks will give the business the best “bang for their buck”. With the fees for registering a trade mark being reduced by IP Australia in October, 2016, now is a great time to consider your trade mark protection. Also, the sooner your protection is in place, the better it is and the stronger your rights.
In addition to trade mark protection, it is crucial for you to protect your confidential information. Your list of clients is a good example – you would not want that falling into the wrong hands. Some businesses have certain methods, systems and inventions that they keep secret. KFC have their eleven secret herbs and spices. Each business is different, but we are yet to see one that does not have something that they want to keep confidential (and do not want to see in their competitors’ hands or on the front page of the paper). Internally, employment agreements with solid and suitable confidentiality clauses are key. These should deal with the return of information if the employee is fired or leaves (including phone numbers of clients on their mobile phone, for example). Externally, you may need to have confidentiality agreements in place with your contractors. For example, we recently prepared a confidentiality agreement for a designer to take to their laser cutter, to ensure that their designs are kept confidential, only used for their products, returned if they move to another cutter, etc.
There are a range of other IP protections (e.g. patents) and strategies (e.g. IP holding companies) that can be put in place. What is suitable for one business may not be suitable for another. Accordingly, it is important to receive the right advice.
McKays regularly puts tailored IP protections and strategies in place for clients. They also conduct IP audits for clients, where they assess and analyse the IP that is held and provide advice on best ways to protect it.
For further information or if you wish to meet with one of our lawyers, please contact us.