As a business owner, it is likely you will, at some point, create or use intellectual property (IP). This might include:

  • adopting a brand name;
  • manufacturing a unique product; or 
  • describing your business on your website. 

However, you must not inadvertently infringe someone else’s IP rights. This can be tricky, so this article will outline how you can take the correct precautionary measures in protecting your IP and avoiding infringement.

Knowing Your IP

Intellectual Property (or “IP”) is a collective term for intangible assets created by the mind. This can include things like:

  • trade marks;
  • patents;
  • designs; or 
  • copyright.

It can also cover knowledge and trade secrets that are specific to your business, such as:

  • formulas;
  • policies; and
  • customer lists. 

Knowing Where to Search and What IP to Secure

Before establishing your IP, it is important to perform comprehensive searches of any relevant databases or registers to know what other individuals or businesses have created or registered.

More often than not, the first piece of IP that a business creates is a business name. As such, ensure you perform searches of your name, or anything similar to your name. This way, you can see if any existing brands might pose a problem for you. 

As a starting point, you should search:

  • domain names;
  • business names; and
  • trade marks.

As a catchall, it is also helpful to do a generic search of your chosen name against listings in the phonebook and online search engines. Below, we have listed some potential places to perform your searches and why they are important to do. 

Domains

As most businesses trade online, it’s important to secure a domain name that appropriately captures your new name. This means making sure that the .com, .com.au, .nz, .co.nz, .co or any other domains you consider to be relevant for your brand business and brand are available. 

If your domain or name is taken by another business, and that other business offers similar goods or services, adding another word on the end of your business name may not be enough to distinguish your business from theirs. This is especially if you operate in the same market. It may also result in you inadvertently infringing on someone else’s IP. 

For example, adding the word ‘MEDIA’ at the end of ‘FACEBOOK’, does not mean that you won’t be infringing on Facebook’s IP. This may even be the case when the domain name of your choice is available.

In this regard, it is important to conduct additional searches (as suggested below) after you have completed the initial domain name search.

Business Name Register

You can look for current or historical business names by searching the Australian Business Register (ABR). However, the ABR will only show you whether a business name currently exists, and will not inform you of that business’ goods and services. It may be worth researching a certain business further on other databases.

Trade Mark Register

Searching the trade marks register can be tricky, as you will first need to understand classes. Many businesses seek professional advice from a trade mark lawyer or attorney before applying for a trade mark or securing a business name or domain.

Search Engines and Phone Books

As a last precautionary measure, you should also quickly browse search engines (like Google) or phone books (like Yellow Pages), to ensure no small businesses are using your business name that have not sought to register a:

  • trade mark;
  • business name; or 
  • domain.

Although unlikely, if your name is available on the trade marks register and you apply for a trade mark, your application can still be opposed by a small business that did not register its IP but was trading for many years before you.

If your business name is available on all of the above databases, it is likely that you are not infringing on someone else’s IP. As such, you should secure your business name, domain, and trade mark as soon as possible. However, we also recommend that you seek legal advice to ensure this is the case.

Unique Products

Many businesses manufacture or sell unique products, either through:

  • their stores;
  • online; or
  • through retailers.

You must ensure an existing patent does not already protect the product you’ve created. A patent is a legal right to exclude others from making, using or selling an inventive product, substance, method or process.

Searching the Australian patents database is a useful place to start, but may not be necessary if your product is widely used or has been around for many years. Patents only last 20 years, so if you sell common items like cutlery or chairs, you may not need to worry about a search. However, if you think your product is new or inventive, you should seek professional advice from a patents lawyer or attorney to ensure you have the freedom to operate. 

Some products may have also been registered as a design. As with patents, design searches can be tricky, and often requires technical expertise.

If your product meets the threshold requirements for patent or design registration, we recommend seeking legal assistance and filing for an application immediately. There are many disqualifying criteria when applying for a patent or design, so ensure you apply before revealing your product to the public or third parties. You can read more about the criteria for patents here and designs here.

Other Forms of IP

Another common form of IP is copyright, which is a legal right to make copies of creative, artistic or literary works. To ensure you avoid copyright infringement, we recommend always creating, writing or designing your own original work. The original author does not necessarily need to register their works, as copyright is automatic in Australia. Crediting the original author or requesting permission may not always be enough. 

Common forms of copyright infringement include:

  • copy-pasting excerpts from other people’s websites;
  • using another individual or business’ song or video; or
  • featuring someone else’s photographs on your social media page.

Remember, IP does not always need to be registered to be enforceable. If you are assisting another business (for example, if you are a software developer), working for a business (for example, as an employee or contractor), or purchasing another business, you must ensure you review the IP clause in any contract or agreement to understand the limit to your use or reproduction of certain IP. 

Key Takeaways

IP law is a difficult and complex area. There are many issues to consider to avoid infringing someone’s IP. It is wise to seek legal advice from an expert IP lawyer if you believe you have infringed another’s IP rights or if you need help understanding your rights and responsibilities as a business owner. If you have any questions about IP infringement, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.

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