Hello Zenn!
The information youi're looking for isn't copyright law, it's
trademark law. They're easily confused (given that both are
complicated), but the best way to tell them apart is to remember that
copyright applies to publications and works of art (including music),
while trademark applies to brand and business names:
“Trade Mark registration provides the owner with legal rights to
exclusive use, and/or control of the use of the trade mark throughout
Australia for the goods or services for which it is registered. A
trade mark has value as an asset so long as it used by the owner for
the goods or services registered.
An owner has the right to legally protect their trade mark and may sue
for infringement if another person uses their trade mark, or a similar
trade mark, on the same or similar goods or services. A letter from a
lawyer or patent attorney may be all that is needed to deter
infringement.
Copyright automatically gives you rights to the protection of your
original works of art, literature, music, films, broadcasts and
computer programs against copying and certain other uses. It protects
the original expression of ideas, not the ideas themselves.
While making copies of copyright material can infringe exclusive
rights, a certain amount of copying is allowed under the fair dealing
provisions of the legislation. Copyright doesn't protect you against
independent creation of a similar work. Legal actions against
infringement are complicated by the fact that a number of different
copyrights may exist in some works.”
Q. What is the difference between trade mark protection and copyright
protection?
http://www.ipaustralia.gov.au/trademarks/faq_index.shtml#copyright
I found a terrific resource which explains Australian trademark laws
and procedures. As you can imagine, it’s quite large and complex, but
written in plain English and very well organized. I strongly
recommend that if you are seeking to register a trademark, you both
consult with a reputable attorney specializing in trademark laws * and
* read over the IP Australia Trademark Information site:
IP Australia
http://www.ipaustralia.gov.au
In the meantime, I can provide you with the relevant citations to help
you with your query.
Much like US trademark laws, Australian trademark laws require that
when you register a trademark, you do so with the full intent of using
the name in business or trade – for instance, if you plan to use
“Tiger, Inc.”, you must show evidence of intent to actually use the
trademark:
In Australia, if you do not use your trademark for a period of three
years after registration, your registration may be revoked:
“Don't risk losing your trade mark rights on grounds of non-use!
Use your trade mark in a bona fide way or risk making your trade mark
vulnerable to removal on the grounds of non-use.
If your trade mark has not been used by you, or on behalf of you, for
a period of 3 years, an application for removal from the Trade Marks
Register can be made.
Usually, this is initiated by an applicant whose registration is being
held up by the registered trade mark.”
Maintaining your registered trade mark – Use it or lose it!
http://www.ipaustralia.gov.au/trademarks/maintaining_index.shtml#useit
(This is helpful if the Australian trademark office rules that your
proposed trademark is too similar to one already registered. If
“Tiger Looks Back” hasn’t been used in trade for 3 years, you may
petition to have their registration rescinded.)
How can you tell if your proposed trade mark is too similar to one
already registered? It depends on a number of factors:
“Q. What does an examiner consider when raising conflicting trade
marks (citations) against an application?
Under Section 44 of the Trade Marks Act another trade mark can be
raised as a ground for rejecting an application if all of the
following apply:
* it is substantially identical or deceptively similar to the trade
mark which is the subject of an application; and
* it covers goods or services which are similar or closely related to
those covered by the application; and
* it has an earlier date than the application.
Q. How do you work out if the goods or services are similar or closely
related to those of another application?
Examiners rely on tests established through Court cases to see if
goods or services are of a similar description. Some of the factors
examiners consider are:
* what do the goods/services consist of?
* what is the origin of the goods/services?
* what is the purpose of the goods/services?
* are the goods usually made by one manufacturer?
* are the services usually provided by one and the same business or
person?
* are the goods distributed by the same wholesale houses?
* are the goods/services provided from the same sources, during the
same season, in the same area or district and to the same customers?
* do the manufacturers, distributors or providers of the
goods/services consider they belong to the same trade?
[…]
Q. How do you decide if a trade mark is substantially identical or
deceptively similar to another trade mark?
Court cases and precedent are used to guide examiners on the tests for
deceptive similarity and substantial identity. Some of the things an
examiner will consider are:
* a visual comparison of the trade marks. What are the differences and
similarities?
* an aural comparison of the trade marks, i.e. how they would be
pronounced by consumers, sales persons etc. Will slurred or varied
pronunciations cause confusion of the 2 trade marks?
* the type of customer who would buy those goods (eg. adults,
children, professional people, qualified tradepersons). Does their
level of knowledge enable them to differentiate between the trade
marks or will they be confused?
* the way the goods or services are offered for sale and how this will
affect the likelihood that the marks will be confused, eg. will they
be sold side by side on a supermarket shelf enabling closer comparison
of the trade marks or do you need a doctors prescription to buy the
goods?
* the idea of the trade marks, i.e. the concept or idea that will stay
in the purchaser's mind. Is this idea similar?
Conflicting trade marks (trade marks which are substantially identical
or deceptively similar)
http://www.ipaustralia.gov.au/trademarks/faq_index.shtml#conflicting
The section is careful to note that Australian courts do not consider
any single similarity to be conclusive. Depending on any or all of the
factors above, they may decide that “Tiger, Inc.” is not similar
enough to “Tiger Looks Back” to warrant rejection of your application,
or they may decide that everything is entirely too similar, and send
you back to square one. It’s important to discuss the matter fully
with a trademark attorney.
To register your trademark internationally, you need to register under
the Madrid Protocol, which allows you to register your trademark in
any or all of 52 member nations with a single application through
Australia’s trademark office. You cannot, however, register
internationally until * after * your trademark has been granted in
Australia.
“The application must be:
* filed through the Office of Origin;
* based on a registration or an application for registration filed
with the Office of Origin by the same person; AND
* must designate the Contracting Parties in which protection is
sought.
An International Application must be based on an application for
registration or on a registration for the same trade mark in the
'home' country. It must be filed through that country's Trade Marks
Office which is known as the Office of Origin. At least one
Contracting Party must be designated in the International Application.
The Country of Origin cannot be designated.”
Requirements for an International Application
http://www.ipaustralia.gov.au/trademarks/international_how.shtml#requirements
When properly completed, an International Registration will have the
same effect as if you had registered for trademark protection in each
country individually.
This is, of course, only an overview of the requirements for
registering your trademark in Australia. IP Australia offers a number
of in depth publications to assist you:
Trade Marks Publications
http://www.ipaustralia.gov.au/resources/forms_trademarks.shtml
…and once you’ve gone over all of the details and are ready to
register, you can file your trademark registration application online:
Apply for your trade mark online
http://www.ipaustralia.gov.au/trademarks/online_index.shtml
I hope this has sufficiently answered your questions! If you need
further assistance, please don’t hesitate to ask for clarification.
I’ll be happy to help you!
Good luck with your application!
--Missy
Search terms: [ “trademark law” Australia ] |
