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August 3, 2016 at 10:35 pm #995079Up::0
Hello,
I am uncertain where best to post, but would love some feedback on the following;
I am in the early stages of developing a design based consultancy, with business name, identity, graphic representation etc. My question is regarding Copyright, Registered and Trademark please, the differences and what i actually require..??
I have secured business name and domain address, and preparing for an initial business Landing Page, and concerned about a few start-up features and thing I need to do
Thank you kindly, Jack
August 4, 2016 at 12:41 am #1199886Up::0Hi Jack,
Firstly welcome
I know there is a trademark expert on here somewhere so hopefully they will post.
Not everyone does a trademark, I personally do as I have products I sell and I do it to protect my brand.
I have many registered trademarks and I use https://www.ipaustralia.gov.au/ as a good source of information and to do the registrations myself, or your can get a trademark lawyer/company to do it for you.
TM and ®
Trademarked IE the TM next to a name, logo or brand is to be used when the trademark registration is in progress. Once the registration is complete and you receive confirmation you then use the ® next to the name, logo or brand.
One of the most important parts is choosing the trademark categories and doing a trademark search. You can do a search on the website below yourself just as a start point.
TM SEARCH:
http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start
Click on the Search as GuestCopyright:
In Australia, copyright law is contained in the Commonwealth Copyright Act 1968 (Copyright Act). In Australia, copyright protection is automatic. There is no need for copyright registration in Australia. Even though it is not needed I always put the Copyright symbol on all my documents at the footer ©
Let us know what other start topics you want to cover and there will be someone here to help.
Cheers
August 4, 2016 at 6:18 am #1199887Up::0Hi Jack,
Not sure if I’m the expert referred to, but, hopefully I can help
Completely agree with Mischelle’s comments to conduct trademark searches – and to do so as early in your process as possible. It is one thing to learn whether a trademark is available to register, another to learn that using that trademark might infringe the rights of others – searches will help rule out these issues.
That said, to come back to the question:
My question is regarding Copyright, Registered and Trademark please, the differences and what i actually require..??
Generally speaking copyright and trademarks will cover different things.
A trademark by its very definition exists whether you register it or not. A trademark is a ‘sign’ you use or intend to use (such as a name, logo, image etc) in a way that distinguishes your goods/services from the similar products or services of other traders. A registered trademark however is achieved by formally registering through IP Australia (per the links Mischelle’s placed above). Once registered you are granted the right to use the trademark for the relevant goods/services you’ve nominated and also gain the right to take trademark infringement action against others where appropriate. There are some rights afforded to unregistered trademarks, but they can at times be more challenging to prove (as they may require you to hold a certain level of reputation in the name/logo/symbol etc) – trademark infringement action does not, however, dictate you must have a level of registration. So, in short my point here is a registered trademark can be easier to enforce than an unregistered trademark.
You are entitled to use a ™ symbol against unregistered marks, and as above the ® once registered. Note: It is actually an offence to represent a name/logo or other sign to be registered when it’s not, so, reserve use of the R symbol until registration is complete (which takes a minimum of 7.5 mths).
Copyright as Mischelle says is automatic. Generally you won’t enjoy copyright protection over a brand name though. Some things are considered too short or unoriginal to be protected under Copyright. Names, titles, slogans etc will usually fall back to Trademarks for protection.
Logos are perhaps the sometimes exception. Copyright covers (amongst a range of other things) artistic works. We would usually picture things like paintings, sculputures, photographs etc as ‘artistic works’, but, design elements within a logo could be considered copyright here. Each logo would likely be different. For ‘safety’ we would suggest logos are registered still as trademarks to be sure of the protection instead of relying on copyright protection for logos, and, this way you do get a recorded ownership and strengthen your position in the brand.
With all of that said you mention you are starting a design based consultancy. So, in your case there may be other sides to copyright (or even design registration depending on precisely what you’re designing for your clients) you need to consider as a designer. If you are designing graphics, images, logos, promotional materials etc for your clients then you may, automatically, be viewed the copyright owner as the creator of those things. Lots of designers will include terms that their clients take ownership of copyright on payment for the work etc and others might not do this and rather retain ownership and ‘license’ the use then to the client. In your line of work, ensuring appropriate terms & conditions would be necessary so there’s no argument down the track about IP ownership in anything you design.
I hope this helps and feel free to reach out if I can be of any assistance.
Best,
August 4, 2016 at 10:50 pm #1199888Up::0JacquiPryor, post: 236699, member: 20176 wrote:Copyright as Mischelle says is automatic. Generally you won’t enjoy copyright protection over a brand name though. Some things are considered too short or unoriginal to be protected under Copyright. Names, titles, slogans etc will usually fall back to Trademarks for protection.Brilliantly explained, Jacqui, and yes you were the person I was trying to remember, the old brain got fuzzy on the your name
August 12, 2016 at 6:20 am #1199889Up::0Jacqui you mentioned it was illegal to display the R symbol for unregistered trademarks. The question I have is …. are you aware of a single prosecution for this offence? (as I see it being done regularly).
Thanks in advance.August 12, 2016 at 8:53 am #1199890Up::0Brilliant question! It is an offence (s151 of the Trade Marks Act 1995) for a person to make false representations about a trademark, which includes making a representation that a trademark is registered unless the person knows or has reasonable grounds to believe it is registered – this includes use of the “R” symbol.
In a 1999 submission IP Australia themselves stated that they were “… not aware of the statistics on prosecutions under these provisions, however, it
appears that, as with copyright enforcement, the Australian Federal Police are most likely to target for investigation large-scale operations, especially where they have assistance from the intellectual property owners”As this is an offence, it would need to be handled criminally. The penalty is in line with a criminal offence rather than a civil action around, for example, infringement. Therefore, real concerns around someone using the ® symbol could be referred to the Australian Federal Police, but, depending on circumstances this of course might not be a priority for investigation.
I am not aware of a case being prosecuted for this, no. I suspect there would be cases around Australian Consumer Laws claiming misleading conduct that might include that a person has ‘misled’ consumers by representing a trademark to be registered when it’s not and become a part of that rather than the referral to the police for investigation of the actual offence.
It may also be something that comes up with respect of infringing imports into Australia where a person is importing a counterfeit product with a ‘trademark’ (same or similar to a registered trademark) that is seized by customs – where the whole conduct is one that is infringing, passing off, misleading etc – in those situations the ‘offender’ might go as far as to incorporate an R symbol on the brand and it might be an added point discussed in those cases – whether though it is prosecuted as a stand alone offence separately to those claims is a different story. I think, and this is simply my view, it’s something more likely to be investigated in large scale operations per the above, rather than the average business owner that simply ‘didn’t know’ – who, likely would change or cease use of the R symbol once put on notice.
I’ll keep searching and see if I come up with any cases including successful prosecution around this!
August 12, 2016 at 11:39 am #1199891Up::0Thanks – but yes I am in the situation where when I have complained to authorities (Fed pol / ACCC / ASIC), they simply came back and said words to the effect of “we don’t care about it”.
Hence my question.
On a related matter, I complained to the ACCC in 2006 about a company claiming to be the best at what they do (our business) and backed this up with testimonials spanning 30 years.
But the company had only been in business for a month and the testimonials had all been fabricated!
I gave the evidence of the fake testimonials and the like to all the “appropriate authorities” and while all agreed with my evidence, (It couldn’t be refuted) none were interested in the matter at all.
All the bestAugust 12, 2016 at 10:14 pm #1199892Up::0Hi Snakeman,
When it comes to trademarks, it almost always up to the person holding the TM to take action, as you said, no one really cares about it, other than the holder of the TM.
I had someone use my TM one time, in the same category as my business, I got my lawyer to write a cease and desist letter. They came back arguing they used it first, we clearly showed them we had the trademark for over 10 years, they had only been operating for 5, so they had to stop.
If they didn’t stop we would have had to take further legal action.
August 13, 2016 at 11:49 pm #1199894Up::0Michelle,
You appear to have misread my query (above) as it does NOT relate to person/s using my trademark/s.
What I have in mind is the following scenario.
A person applies for one or more trademarks (to register) and as the phrases are generic, they are refused (as they should be).
The person then advertises all over the place, including their webpage that they own the registered trademark/s with explicit statements to this effect and the R symbol wherever the phrase/s are used.
No trademark owner is affected, but the trader is engaging in misleading and deceptive conduct, which is something the police and ASCC and ASIC in theory should be stopping – and also potentially illegally stopping others from using phrases they are entitled to.
All the bestAugust 14, 2016 at 12:49 am #1199895Up::0Hi Raymond,
Yes, I feel for the situation and know precisely the conduct you mean. It IS misleading and IS an offence, but, of course we can’t force the authorities to take action even in situations where they might agree.
It is a factor we’ve included in letters of demand sent on behalf of clients in the past, as we’ve had times where the unregistered party is considered to be infringing our client’s rights – and, the situation is made worse when they do so to include “R” symbol or similar. At that level, which is of course not a formal action it does at least have them stop using the symbol quickly.
If you do find yourself with complaint of a person using the R symbol or claiming a mark is registered when it’s not and that person is, in your view, infringing your registrations I would point out that it’s an offence in any letter of demand.
If you become aware of a ‘repeat’ offender of the offence, then perhaps the authorities would be more inclined to investigate? I suggest as per my earlier post the ‘once offs’ who perhaps just didn’t know better won’t feel the full brunt of the penalties, as it wouldn’t be a priority for investigation. Those continually engaging in unlawful conduct are more likely – one way or another – to be penalised.
I’ll keep looking and have my eyes open for a case either solely around this, or incorporating this and let you know if I come across anything!
As to your 2006 ACCC complaint – that’s frustrating. it’s quite clear that fabricating testimonials/reviews etc is a no-no, as is of course engaging in conduct that is misleading or deceiving (or likely to mislead and deceive). Whilst again the one offs might not warrant the resources to fully prosecute for the conduct, it would be good if they could have at least issued a warning or similar if they had agreed with your ‘evidence’.
August 15, 2016 at 5:25 am #1199896Up::0Thanks again – the case I have in mind is a business in our area, but not actually using our trademarks (so far so good). What they are doing is claiming ownership of registered trademarks that they do not own (or anyone else as they are generic phrases). They applied for them a long time ago and were refused and yet post on their site that they own them….
(It doesn’t actually impact on us as we do not use the said phrases – others do)
All the bestAugust 15, 2016 at 5:58 am #1199897Up::0Have you considered sending a letter still? Or, having someone do so?
Perhaps a sternly worded letter around the fact this is an offence and likely amounts to misleading/deceptive conduct etc might be enought? (Perhaps not though if they are that way inclined in the first place!)
Also – just to be certain they are using R symbol? I assume they are, but just be mindful that they CAN use the TM symbol against an unregistered trademark (and, in the case of generic/descriptive names this is often recommended to help later ‘prove’ use as trademarks to try and then register them on the basis of evidence of use).
If you want to send me a PM with the details I’m happy to look at their website etc further and see if anything else jumps out to me that could be done?
August 15, 2016 at 11:54 am #1199898Up::0Jacqui thanks for the reply.
Also thanks for the offer of help, but I’ll run through it again (and keep your invite open and probably call in a few weeks with some other unrelated queries).
In terms of the case in question, the person is definitely using the ® symbol and not TM. And they do not own any registered trademarks.
As for me taking action against them, there is no real point in that I am not suffering in any way from their actions (other businesses are, but to the extent that A/ it is their problem and B/ I am snowed under under several fronts, I wouldn’t bother pursuing them for no obvious benefit.
I have been gathering evidence for an unrelated series of trademark cases involving our registered trademarks and hope to post something of relevance and interest on those matters on FS forums shortly (time line of next few months). All the bestAugust 15, 2016 at 9:50 pm #1199899Up::0Hi Snakeman, Opps my bad So Sorry It appears that Jacqui has answered your questions and Jacqui is the key person for TM’s anyway.
August 16, 2016 at 12:21 am #1199900Up::0No worries Raymond. As you note, this sounds like the problem of others if they’re being affected… happy to hear from you if/when suits on other matters
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