Online Learning: Protecting Your Business Online

Online Learning: Protecting Your Business Online

Online Learning: Protecting Your Business Online

anti-spam

Spam is an electronic commercial message that can include email, phone and even online chat platforms.
 
When done incorrectly it can be easy to create marketing that your audience may categorise as spam.
 
If you want to avoid this we recommend watching our below video to see our Principal Lawyer, Jeanette Jifkins, explain anti-spam in more detail.

consumer protection

Did you know that all businesses must comply with consumer protection laws?
 
Do you understand how consumer rights affect your business?

managing testimonials, comments, and reviews

Let’s talk testimonials and no, you can’t make them up.
 
How do you manage them? Are you allowed to use testimonials for advertising? Can you edit them?
 
Watch our video to see our Principal Lawyer, Jeanette Jifkins, answer all these questions.

understanding copyright law

Watch the full video on Understanding Copyright Law below.

PRIVACY FOR SMALL BUSINESSES

All business owners must understand their obligations under Australian Privacy Laws.
 
To ensure your business stays on the right side of the law, watch our video to see our Principal Lawyer, Jeanette Jifkins, explain Privacy Law in Australia in more detail.

TERMS AND CONDITIONS

Terms and conditions help protect you and your consumer. So what do you need to include on your website?

Watch our video to see our Principal Lawyer, Jeanette Jifkins, explain.

website ownership basics

Who owns your website and what does that mean?
 
Did you know there is a difference between your domain name and what people see on your website?
 
Watch our video to see our Principal Lawyer, Jeanette Jifkins, discuss website ownership.

How can Onyx Legal help you?

We’re interested in strategies that support you and your business to grow and get stronger. If you receive a nasty letter of demand and want help in figuring out how to respond, contact us to help you map the way forward.

Trade Marks and Copyright: The Difference Explained

Trade Marks and Copyright: The Difference Explained

Trade Marks and Copyright: The Difference Explained

Trade marks and copyright: the difference explained

For many businesses, intellectual property is one of their most valuable assets. We often get questions from our clients on how they can best protect their intellectual property, but what we have noticed is that many of them struggle to identify what specifically they are trying to protect.

This is completely understandable because intellectual property comes in many different forms. The two most commonly used types of intellectual property protection are trade marks and copyright.

In Australia, we refer to trade mark in two words, consistent with the legislation. Overseas, it is common to combine the words to ‘trademark’. They each refer to the same thing.

Some of the frequently asked questions we get include ‘What can I trade mark?’, ‘Can I sue someone for using my trade mark?’ or ’How do I protect my copyright?’. In this article, we will answer these questions for you.

Firstly, let’s explore the difference between the two.

Trade marks – protection of your brand

If you have been running your business for some time and have established substantial goodwill and reputation, your business name becomes your brand. Your brand is your trade mark. Two of the fastest growing trade marks in 2020 were TikTok and Zoom. When you hear those names, you can immediately bring to mind the kind of services each platform offers, even if you haven’t used them yourself.

Think of a trade mark as a ‘badge of origin’. It is anything that distinguishes your goods and services from those offered by other traders in the market. It can be your business name, logo, slogan, colour or even a sound, or a smell – although scent marks are very rare.

Your trade mark is a valuable marketing tool. The purchasing decisions of consumers are often influenced by the brand, so the higher your brand recognition, the more you may want to prevent your competitors from using a similar brand to provide similar services and benefit from your hard-earned success.

Think about how people by cars, or shoes. Many people favour a particular brand of motor vehicle because it is either something they have always driven, or it has a brand promise that they believe in or relate to. For example, Toyota is known for reliability, and Ferrari is the world’s most well known racing car. In shoes, people will often favour a brand like Asics, or Adidas, or Nike depending on their preferred sport, or sports stars.

So, how do you gain the exclusive right to use your trade mark and take actions against those who infringe it?

The answer is by registration. We will talk about this further below, first lets look at how copyright is different from trade marks.

Copyright – protection of your original creative works

Copyright has more substance that a trade mark and is more likely to be judged on the amount of creative input required to develop the work to be protected. Where a word can be a trade mark, a word by itself won’t be protected under copyright.

Copyright protects the creation of literary, dramatic, musical, artistic, and certain other types of intellectual works.

When you write a book, you are the copyright owner of that book (unless you have agreed to transfer your copyright to someone else). When you create online education materials, all your materials, including videos or audios, are your copyrighted material.

Just like trade marks, your copyright materials can be extremely valuable to your business. But unlike trade marks, you do not need to register copyright to gain protection. Copyright is generated automatically upon creation of the work.

There is one exception to that rule, and that is the registration of digital works in the United States. If you want to claim protection of a digital representation of your work in the United States, you must first register that work with the Electronic Copyright Office.

To have copyright protection, you must document your ideas and have it in some sort of tangible form. The easiest way would be to write it down. A visual or audio recording is also sufficient. It is important to understand that a mere idea is not protected. This is part of the reason that businesses rely on non-disclosure agreements and confidentiality deeds. Those sorts of agreement can provide you with protection of an idea before it is discussed and before it has been documented or produced in some other form capable of copyright protection.

What protections do you need?

As you can see, trade marks and copyright are two very different types of intellectual property. What you can do to protect them is very different too.

Trade marks – protection by registration

A trade mark can exist without being registered; however registration gives you the exclusive right to use your trade mark and makes it much easier to defend.

What this means is that you will have the legal right to stop others from using your trade mark and when necessary, take legal action against them to defend your rights. Just be aware that it is your responsibility as the trade mark owner to keep an eye on the marketplace and identify any infringement or potential infringement of your trade mark. When you see someone using your brand, or something very similar to your brand, you should tell them promptly, and request that they ‘cease and desist’ the infringement.

From time to time, we have clients who have already contacted someone they believe to be infringing their mark without persuading that person to stop their infringement. Sometimes, this is because our client doesn’t have the rights they thought they did, and sometimes it is because they have stated their rights incorrectly. It is important to check what rights you have first, before making any claims. We have a number of strategies for communicating with infringers to bring about a quick resolution to your concerns.

In Australia, if you do not have a registered trade mark, it can be an offence for you to threaten legal action against someone for using your trade mark. If you do have a registered trade mark, you should be notifying infringers that you do, and asking them to stop infringing your trade mark. This is usually done with a cease and desist letter.

Copyright – protection by documenting your ideas and creating tangible material

Registration is not required to protect copyright. Copyright material is protected as soon as it is created (in tangible form, that is). As the copyright owner, you have the exclusive right to reproduce your work, commercialise it, and be recognised as its creator.

As already mentioned, the one exception is the requirement to register a digital work with the Electronic Copyright Office in the United States if you want to take action against someone in the United States for copyright infringement.

Unlike trade marks, we are not aware of any countries outside the United States that have official registers or databases for copyright, so in most cases, people won’t be able to conduct searches to see if something is an original creation.

Because there is no form of registration and in pursuing someone for infringement you might be required to demonstrate that you are the original creator of the work, it is especially important for you to use one or more of the following strategies to protect your copyright:

  • keep a record of your evolution of ideas – as evidence of the progression of your work
  1. drafts, sketches, rough recordings, plans etc
  • insert footprints into your work (eg. deliberate mistakes or hidden data that identify you as the author)
  • watermark your work
  • use technology to make it harder to copy your work electronically
  • include a copyright statement on your work – this alerts people to the fact that your work is subject to copyright and you intend to protect it © [your name] and [the year the work was created]
  • include copyright use provisions in the terms of use or terms and conditions of your website that clearly set out what people can and cannot do with your published work
  • provide your contact details so people can ask for permission to use your work
  • if your work gets used regularly in educational institutions, government or big business, then register your work with the Copyright Agency to receive any royalty payments collected on your behalf
  • have template cease and desist letters you can send to people you believe to be infringing your work, politely asking them to stop.

What happens if you don’t take steps to protect your interests?

Under both trade mark and copyright law, if you don’t take steps to protect your interests you can lose your rights.

For trade marks, you must use the mark in the form registered, and take steps to stop others using your mark in order to keep the protection that registration provides.

For copyright, if you don’t let people know that they are infringing your copyright, you can make it harder to prove that you created the work in the first place, and if you knowingly let things pass, you may be deemed to have given permission for use.

Consider creating an intellectual property register for your business so that you can keep track of your different types of intellectual property, when they were created, who created them, and what you have done to protect it. Your intellectual property is an asset to your business.

How long do protections last?

Trade marks – 10 years

A trade mark registration lasts for 10 years from when you first file your application. You can renew your trade mark registration by paying renewal fees any time before the expiry of six months after the date your registration is due to lapse.

Copyright – creator’s life plus 70 years

The duration of copyright can vary depending on the type of work and whether the owner is an individual or a company, but generally in Australia, it is the life of the author plus 70 years.

Summary

To summarise the differences between trade mark and copyright protection:

  • your brand and logo are protected as trade marks, upon registration
  • your content and materials are protected by copyright, upon creation
  • you can and should take a variety of different steps to protect your intellectual property

Need help?

If you would like help identifying your valuable intellectual property, creating an intellectual property register and protecting your intellectual property, contact Onyx Legal.

Intellectual Property Protection – What is it? & Why You Need it

Intellectual Property Protection – What is it? & Why You Need it

Intellectual Property Protection – What is it? & Why You Need it

What IS INTELLECTUAL PROPERTY? 

If you are a business owner, it is important for you to understand that your intangible assets, the ones you can’t pick up and hold, are just as valuable as your physical property.


If you haven’t appreciated the value of your intellectual property before now, you might not have taken any steps to protect it. Unfortunately, the point where you recognise value is often when it’s already too late and other people are already exploiting your name, or your brand, or your ideas, and reaping all the benefits.

WHAT RISKS DO YOU FACE IF YOU DON’T PROTECT YOUR INTELLECTUAL PROPERTY?

Almost all businesses you have heard of or are looking for are either offering products or services online or marketing their business online in order to reach as broad an audience as possible. But not all businesses realise that the higher the exposure, the higher the risk of your content being copied, misused or stolen.

You do not want to put yourself in a situation where you make it too easy for someone to infringe your intellectual property or even worse, have them infringe your intellectual property without you even realising it’s happening; consider the current feud between McDonald’s and Hungry Jack’s over the ‘Big Jack’ burger.

HUNGRY JACK’S ‘BIG JACK’ TOO MCDONALD’S BY SURPRISE

Whilst McDonald’s did take action back in the 1970’s to register the trade mark ‘Big Mac’ after years of comfortably holding sway with the name, they stopped checking their core competitors’ trade mark registrations and November 2019 Hungry Jack’s dared to see if they could get the ‘Big Jack’ through.

Surprisingly, they did! Examination was expedited, and although an adverse report was initially issued the response was filed, considered and accepted within days, resulting in registration in about half the time typical for current filings. Sales were initiated in late July 2020 and McDonald’s filed a claim in the Federal Court opposing the trade mark within a month.

Regular monitoring of filings might have enabled McDonald’s to object before registration, with the opportunity to stop the application getting through, stopping the Hungry Jack’s campaign before launch, and saving the cost of having to start court proceedings.

In November 2020 the case was still ongoing and mediation had been ordered. In the meantime, the Big Jack is on menus around the country.

Apart from trade mark infringement, one of the most common complaints we see is copying of contenT… 

… usually by someone who has been involved with your business as an employee or contractor, or as a customer.

Customers tend to take your information and think they can do it better, but without the grounding you have in the history of the product or service, often fail after a short period. With millennial employees, our experience has been sheer ignorance on the part of the employee of what is expected of them, even if it was clearly written into their employment contract. With contractors and more mature employees, our experience suggests that intellectual property theft tends to be based more in what they think they can get away with and has been conducted on an assessment that you won’t take action.

So, if you are still doing nothing to protect your intellectual property, then you are exposing your business to a significant amount of risk and the potential for the high costs of enforcement as compared to prevention.

Not only could your business lose its competitive advantage in the market, but poor-quality imitations of your content can also ruin your business’s reputation.

DON’T PANIC 

This article helps you consider what intellectual property you need to protect and offer some tips on how you can do that.

WHAT IS INTELLECTUAL PROPERTY?

It is important you understand the scope of your intellectual property.

As the name suggests, intellectual property is any property or creation of your mind or intellect. Whenever you develop a new product, service, process or idea, that is considered your intellectual property and belongs to you.

From small things such as the name on your door, to bigger things like your secret recipe, or an innovative invention, these may all be your intellectual property. These are the things that differentiate your business from other businesses in the market and therefore give your business its commercial value.

Common examples of Intellectual Property for online business:

  • brand name and byline
  • logo and colour choices
  • website meta information
  • website content – visual, video, written, downloadable
  • content – planning, drafts, upgrades
  • customer lists – email, SMS, FB messenger, push notification
  • customer service – processes, scripts, emails
  • internal operating processes and procedures
  • business delivery methodology
Intellectual property can be divided into the following categories. Which category you need to seek protection under for your creation will depend on your product or service.

1. Trade Marks

Many businesses register trade marks to protect their interests. The value of your trade mark increases with the success of your business, so consider when the best time will be for you to register your trade mark.

A trade mark is a form of brand recognition that distinguishes your product or services from your competitors. It helps consumers recognise the source or quality of your products or services. It could be a word, logo, phrase, letter, number, picture, or even a smell. For example, both Google and Facebook have registered their names as trade marks to protect their exclusive rights.

You may wish to do the same and register your business name as your trade mark to prevent anyone else from using it. You could also register the name of your core product or your core service as a trade mark. Think ‘Big Jack’.

Do not confuse trade mark registration with registering a business name with the Australian Securities and Investments Commission (ASIC). Registering a business name with ASIC is your legal obligation, which would allow you to use that name to identify your business. However, it does not stop others from using the same or similar name the way a trade mark registration does.

Similarly, registering a domain name does not give you the exclusive right to use it the way a registered trade mark does, and there are limits on the way trade marks can be used in domain names and on websites.

2. COPYRIGHT

Copyright is a bundle of rights in creative work such as text, artistic work, music, computer programs or films. For example, if you draw a sketch, write a book, a journal article or a movie script, those would be protected by copyright. (Copywriting is writing of copy, usually with the objective of making someone want to buy. Two different concepts.)

As the copyright owner, you have the exclusive right to reproduce your work, decide how it will be published and distributed, and keep it from being used or modified by others. If you allow other people to use your work, you still have the right of attribution. What this means is that anyone using your work has to give you credit by for example, putting your name or photo on or next to your work. Commercial exploitation and attribution rights are separately enforceable, not linked.

Be aware that copyright does not protect what are merely ideas or concepts. Your work has to be in some material form (ie. written down or recorded in some way) to be protected. So even if you have a brilliant idea in your head for a movie, but you have not written it down as a script or storyboard, then that idea will not be protected by copyright.

3. patents

If you have an invention or innovation that you wish to protect, then you should look at patent registration. You may need a patent when you have developed a new device, substance, method or process. For example, it may be a solar panel, a new textile, or even medicine. Patent registration gives you the exclusive right to exploit your product for commercial gain.

Onyx Legal doesn’t specialise in patent registration and we can instead refer you to a patent attorney.

4. DESIGNS

Designs are like a mixture of copyright and patents, but what you are protecting is the design or appearance of your product. That may include its shape, colour, configuration, pattern or ornamentation. Sometimes, the overall visual appearance of your product may be so new and distinctive that it forms a valuable asset of your business. Examples of designs include the ball chair, the mankini, or the Tiffany box.

Design registration gives you the exclusive right to make, import, sell, hire, use or keep a product based on that design.

5. TRade secrets and confidential information

All businesses have trade secrets and confidential information. Your employee, client and supplier data are examples of your confidential information. Trade secrets might be secret formulas, practices, processes or any other information that has commercial value because it is not generally known by others. Trade secrets are also a type of intellectual property.

As the holder of trade secrets and confidential information, you need to take steps to protect that information and maintain its secrecy. For example, you can prepare confidentiality or non-disclosure agreements to help ensure that whoever you disclose trade secrets to must keep it confidential. It is also advisable to ensure you have provisions in employment agreements and contractor agreements if you have others contributing to your business. 

COCA-COLA PROTECTING ITS INTELLECTUAL PROPERTY

To give you an illustration of how important it is for businesses to protect intellectual property, let’s take the familiar brand of Coca-Cola as an example.

The Coca-Cola company owns the trade mark ‘Coca-Cola’, as well as the trade mark on the graphic designs of their name, and even the shape of their bottles. You may think that it is being overly cautious, but these are all valuable assets of its business which distinguish it from other cola brands.

Imagine what would happen if Coca-Cola’s competitors are able to use its unique bottle shape, logo, brand name or design to mislead consumers into thinking that they are the real Coca-Cola.

Of course, Coca-Cola’s formula is a trade secret. The company has high security measures to protect its secret formula and ensure that it remains completely confidential.

The success of Coca-Cola depends largely on its ability to obtain protection of its intangible creations and assets. The key takeaway here for you is, if you want your business to stay competitive in the market, it is crucial for you to consider effective protection of your intellectual property.

HOW DO YOU PROTECT YOUR INTELLECTUAL PROPERTY?

You must be prepared to spend money.

  1. Protection by registration

Patents, designs, and trade marks can be protected through registration. In Australia, registrations are made with IP Australia.

Registration offers you the most secure legal protection, with codified exclusive rights. If someone infringes your rights, you are entitled to take legal action against them.

Be aware that in design registration there is an extra step which requires your registration to be certified before you can enforce your rights.

If a dispute ever arises, it is less costly to defend a registered right than an unregistered one because your registration serves as proof of your ownership.

  1. Automatic protection

There is no system of registration for copyright in Australia.

If you are the creator of copyright work, you automatically get copyright protection in the work upon its creation (ie. as soon as it is written down or recorded). Copyright vests in the employer for works created in the course of employment. 

If you sell into the United States market, you must register digital products with the Electronic Copyright Office before you can enforce your rights in the United States.

Because there is no registration system to protect your copyright in Australia, consider placing a © symbol or label on your work to indicate that copyright belongs to you and you intend to protect it. This can act as a deterrent to potential infringers.

There is no right order. Consider including a copyright statement that looks something like this:

“© the year of first publication and your name ”

For example, “© 2020 Onyx Legal”.

Similarly, there is no system of registration for trade secrets either. You will need confidentiality agreements for people to sign so that they do not disclose your trade secrets without your permission, as well as provisions in your employment and contractor agreements.

  1. Confidentiality/ Non Disclosure Agreements (NDA)

Whenever you share trade secrets or any confidential information with your employees, contractors or business partners, you need to ensure that they don’t share it with anyone else.

The most effective way to prove their agreement to protect your intellection property is to prepare an NDA which holds the other party liable for intentionally or unintentionally disclosing any confidential information without your consent.

However, keep in mind that no contract or agreement is any protection against human misbehaviour, so whilst it will remind most people to do the right thing, it does not offer 100% protection of your intellectual property.

4. PRACTICAL MEASUREs

The more effort you put a potential copycat to, the less attractive your product or service is to being copied. Within your business, it might be cheaper to educate staff and contractors rather than taking them to court. Some practical measures you could apply are:

  • watermarks
  • PDF rather than text downloads
  • a pay wall before access
  • terms and conditions on your website and for access through pay walls
  • contracts and agreements
  • employee education and training
  • internal policies
  • an intellectual property register
  • creating a method or framework eg. Six Sigma
  • keep an eye on competitors
  • create your own enforcement process map
  • regularly search for your core product or service
  • give cease and desist or take down notices to infringers

WHAT IF YOU WANT TO LET SOMEONE USE YOUR INTELLECTUAL PROPERTY?

You may wish to grant licenses for individuals or businesses to access or use your intellectual property for either personal use or commercial use. For example, Disney grants licenses to toy makers to use Disney characters for commercial purposes. Or if you are an online educator, you may grant to your customers a license to access your online classes for personal use.

Creative Commons licencing is one option to define your licence terms for public online content, but other content is usually protected by drafting a clear and appropriate license agreements.

From an asset protection perspective, you might extablish a separate holding entity to hold your business intellectual property and licence use of it to your trading entity. 

When you license your materials to others, it is important for you to define the parameters of  use of your intellectual property, including timing and payment. 

IT IS YOUR RESPONSIBILITY TO ENFORCE YOUR INTELLECTUAL PROPERTY RIGHTS

Don’t think that by having your intellectual property registered or protected by a NDA, you can sit back and relax. That is only the first part of it. As the owner of intellectual property, you are responsible to identify infringements and enforce your rights.

What constitutes an infringement varies depending on the circumstances.

Whenever you are not sure about grounds to allege an infringement, then you should always be cautious and get legal advice before sending out any correspondence to the offending party. It the action in question does not constitute an infringement, your accusation may be considered as a groundless or unjustified threat. If that is the case, then the other party might be in a position to bring a claim against you.

Want more information?

A good understanding of the scope and value of your intellectual property can help you decide what steps to take to protect it, and improve the long term value of your business.

Make an appointment with us at Onyx Legal to discuss appropriate strategies for the protection of your intellectual property. 

AU$ Trademark Fees Have Changed

AU$ Trademark Fees Have Changed

AU$ Trademark Fees Have Changed

IP Australia Fees for Applying to Register a Trade Mark? 

A few quick things you should know before making an application for a trade mark:

  • Registration has local affect (Australia) only, unless you specifically make and pay for an international application
  • The cost of international applications vary depending upon the countries you want to cover
  • Generic or commonly used words and phrases are unlikely to achieve registration
  • The assessment process takes six to twelve months and, if successful, is backdated to the date of your application
  • There are 45 classes of registration and each class attracts a fee

Until October 2016 you had to pay both an application fee when you lodged your application and a registration fee six to twelve months later once it was accepted.

For applications made after 10 October 2016, you pay a higher application fee, but no additional registration fee, so overall its cheaper! Just a bigger up front cost than previously.

In 2020 your IP Australia standard trade mark application fees are either:

– $250 per mark applied for, per class applied for if you use IP Australia pre-set descriptions, or

– $400 per mark, per class if you use your own unique descriptions 

Example: You have one brand name you want to register for printed material, clothing and the delivery of entertainment online. That covers at least three separate classes. If you use pre-set descriptions from IP Australia, your fee to IP Australia for that one brand will be $750. If you use your own descriptions, your fee will be $1200. Your legal fees are separate. 

As soon as you use a unique description in one class, the unique descriptor fee applies across each class, unless you make separate applications for other classes. 

If you’re not sure whether you are ready, or even need to register a trade mark at this stage, check out our guest article in ProBlogger “How (and When) to Register a Trademark Without Hiccups” where we take you through a 5 step process –

Step 1: Is your brand capable of trade mark protection?
Step 2: Does your brand have value?
Step 3: Is there anyone else out there using your brand, or likely to?
Step 4: Is there any other form of protection in place?
Step 5: Is now the right time?

How can Onyx Legal help you?

We can help you apply for trade mark registration in Australia, object to someone else’s application, respond to an objection, or respond to an adverse examination report.

To get started, we will need from you – your trade mark, any image marks you wish to register and a description of the products or services you wish to have covered by the mark. Your description can include products and services you expect to develop during the next three years.

Pause Before You Threaten Legal Action for Stolen Intellectual Property

Pause Before You Threaten Legal Action for Stolen Intellectual Property

Pause Before You Threaten Legal Action for Stolen Intellectual Property

Stop and Pause: being too quick to assert your Intellectual Property rights could land you in hot water

Do you think that someone is using your work in an illegal way? Stop and pause before you threaten them with legal action, as accusing someone of infringing your intellectual property rights may leave you in the firing line.

Law exists in Australia to protect people from making dubious claims in relation to patents, designs, copyright and trademarks. This extends to sending cease-and-desist letters, sending circulars and advertisements.

The idea behind this legislation is to stop rights holders from misusing their position.

For example, it may be easy to scare off a competitors by having lawyers draft a cease-and-desist that the competitor cannot afford to investigate, even if your competitor has not technically infringed your intellectual property.

A 2016 case of CQMS Pty Limited v Bradken Resources Pty Limited shows that if you wrongly allege infringement, the person you complained about may bring a claim against you.

In that case, CQMS alleged that Bradken had infringed a number of their patents. Their lawyers sent out a letter of demand, setting out the basis for their claim. The letter of demand was “fairly standard” and of the kind often sent by patent attorneys. When Bradken did not comply with their request, CQMS then pursued the claim in court.

CQMS lost the case and was then counter-sued by Bradken, who asserted that they had been the victim of an “unjustified threat”. The fact that CQMS had lost the case was evidence of the “unjustified threat”. It did not matter that CQMS firmly believed that they had a good case against Bradken and were prepared to follow it through in court.

Likewise, the 2016 case of Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd should serve as a warning to be careful. What you may think infringes intellectual property rights may not in fact, do so.

In that case, craft beer brewers Stone & Wood had a beer called “Handcrafted Stone & Wood Pacific Ale” and they alleged that competitor craft brewers Elixir had infringed their intellectual property rights by calling their beer “Thunder Road Pacific” and “Pacific Ale”.

Unfortunately, when filing court proceedings Stone & Wood claimed for passing off and contraventions of Australian Consumer Law, but did not include a claim for trade mark infringement in their original claim. Stone & Wood only added a claim for trade mark infringement after Elixir counter-claimed for groundless threats of legal proceedings for trade mark infringement resulting from the letters between lawyers before the claim was filed.  

The court found for Elixir, and said that the reactive amendment to Stone & Wood’s claim adding trade mark infringement only after Elixir made a claim fro groundless threats, served to support Elixir’s case.

These examples should deter you from firing off “cease and desist” letters without a careful strategy.

As it has not always been clear what a groundless claim or unjustified threat could be, in 2017 the UK Parliament passed the Intellectual Property (Unjustified Threats) Act to clarify the meaning. If a reasonable person believes that a communication contains a threat of legal proceedings to protect a registered trade mark as the result of an act done, that will constitute a threat of infringement proceedings. 

That threat will not be actionable if an infringement has occurred. Letters asking a person to cease and desist infringing behaviour will not be actionable if they identify the owner’s rights and do not threaten legal proceedings. 

At this stage, reform is not proposed in Australia.

What if someone is infringing your IP?

In light of the pitfalls noted in this article, what should you do if you think that someone is infringing your intellectual property?

1. Stop and pause

Take a deep breath before firing off any emails or letters to the other party.

Do not presume that just because your competitor is using similar words, colours or phrases that they are automatically infringing your intellectual property.

Do not send any kind of “cease and desist” communication unless you are genuinely intending to proceed with, and substantiate, the claim in court. Be aware that in some cases, if you fail in court, that is enough to establish an “unjustified threat”.

2. Check it out

Check what intellectual property rights you do have. Do you have all your designs, patents and trademarks registered? Are your claims valid in the country that you are asserting them? Just because you have rights in one country, does not mean you have rights in another.

Engage a lawyer who works in the area of intellectual property you seek to protect, if you are unsure about what rights you have.

3. Play if safe

If you believe that someone is close to infringing your intellectual property, there are some things you can do. You are allowed to notify another party that intellectual property in a particular design, patent or trademark exists.

We recommend getting a lawyer to look over any correspondence you intend to send, as there are scales of what is considered a threat.

What if you receive a cease and desist letter?

1. Don’t panic

Being on the other end of a cease and desist letter can be frightening, especially if the other party is speaking about pursing a claim in court.

Remember, these letters are not a summons to court.

Take a deep breath and take time to properly assess what is being asked of you. Don’t rush to pull down all your advertising material or respond with a knee-jerk reaction.

Letters from lawyers in your country should be taken seriously, but there are a variety of options available.

2. Read the letter

Read their communication with care to find out exactly what the other party asking you to do.

Are they talking about trademarks? Copyright? Or other contractual matters? Are they asking you to remove certain material? Or are they just asking for information?

Do they want a response by a certain date? Do they want you to remove the whole part of something, or just make minor changes?

3. Speak to a lawyer about whether a valid claim exists

Intellectual property law can be complicated, with varying degrees of permitted use.

Using similar colours and phrases will not automatically infringe someone’s intellectual property rights.

4. Do nothing

Unfortunately, operating in the public arena opens you up to allowing anyone to contact you. Some people like to act aggressively with the intent to intimidate you or disrupt your business practices. In a case like that you might simply respond that you disagree with their position, or not respond at all. 

Be careful if you choose not to respond to a letter, particularly if it is from a lawyer within your country. If there is a chance you are infringing someone’s intellectual property rights then you could be at risk of further proceedings. 

If there is a chance the claim is valid – address it immediately and do not hide it at the bottom of you to-do-list in the hope that it will go away. In most cases, it usually does not!

5. Comply

After reading the letter and seeking advice, it may be that you decide to comply. This will probably be the easiest and most cost effective solution.

However, you should consider the consequences of doing so. Will you have to change your whole business strategy? Will it cost a lot to make the required changes?

How can Onyx Legal help you?

We can help you assess the risk of action you want to take in response to a threat of action claiming your infringement, or if you want to issue a letter notifying another party of their infringement. 

Once we have properly assessed your position, we can work with you to develop and appropriate strategy to move forward in the way that best suits your position.

Is it OK to Use Trade Marks in Adwords, Keywords and Metatags?

Is it OK to Use Trade Marks in Adwords, Keywords and Metatags?

Is it OK to Use Trade Marks in Adwords, Keywords and Metatags?

Trade marks can be used in hidden text 

In March 2016 Her Honour Justice Katzmann made it very clear that using a competitor’s trade mark in the unseen back end of your online advertising accounts is not a breach of trade mark law, nor is it misleading or deceptive. Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd [2016] FCA 255.

Credit reporting company Veda Advantage (now Equifax) registered a string of trade marks including the name ‘Veda’.

Malouf Group Enterprises used 86 variations of the Veda trade marks in its online advertising to attract customers to its credit repair services. Most of Malouf’s advertising limited the use of the Veda trade marks to keywords selected in the back end of its Google Adwords campaigns.

Veda sued, relying on three main causes of action:

  1. Trade mark infringement within the meaning of s120 of the Trade Marks Act
  2. Misleading and deceptive conduct in contravention of s18 of the Australian Consumer Law
  3. Making false and misleading representations in contravention of s29(1)(h) of the Australian Consumer Law

Malouf was found to be innocent of any infringement or contravention where the keywords that resulted in the ads used Veda trade marks, and the ads themselves did not. We’ll get to why in a minute.

There were two other categories of ads. The first were ads that used the word “Veda” as a description, such as “Fix Your Veda File Now”, and the third potentially drew a link between Veda and Malouf’s business, showing the words “The Veda Report Centre”. Only the last category was a breach.

When is a trade mark, not a trade mark?

When it isn’t being used as a trade mark, and ‘use’ is quite specific.

In a clearly reasoned judgement, Her Honour stepped through the relevant law to conclude that:

When selecting keywords and including them in an Adwords campaign, the advertiser is not using those words to distinguish the goods or services from goods or services of another trader. The advertiser is using those keywords to identify internet users who might have an interest in the product or service.

All Adwords account users have the ability to use the same keywords at the same time, which adds weight to the argument that those keywords are not being used as trade marks.

Where the keywords used are “invisible and inaudible, indeed imperceptible, to consumers” their use cannot be as a trade mark to distinguish goods or services.

Where trade marks are used in a way that is merely descriptive of services, like “fix my Veda file”, that is not use as a trade mark.

In response to Veda’s argument that the use “in physical or other relation to the services” (from section 7 of the Act) did not have to be visible to the consumer, Her Honour responded “I doubt very much whether the Parliament had in mind a metaphysical relationship, no matter how expansive the concept of use was intended to be.”

YOU CAN’T INFRINGE TRADE MARKS IN METATAGS EITHER

In endorsing a decision of Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd Her Honour agreed that metatags were:

  • invisible to the ordinary internet user
  • used by search engines to direct a user to a website
  • once arriving on the website, it would be obvious to the user whether or not the trade mark had any relation to the business of that website
  • as the metatag would only be discernible after reaching the website, and may have nothing to do with the website content, it couldn’t be used in that context as a badge of origin for the website services

INTERNET USE IN THE 21st CENTURY

Whilst previous cases found that the display of search results from one advertiser as a result of input of a competitors trade were likely to be misleading or deceptive, the Veda case thankfully catches up to the real world, accepting that internet users:

  • know the difference between Ads and organic search results
  • habitually scroll past the Ads in favour of organic search results
  • know advertisers are responsible for add content
  • know organic results are generated by website content
  • don’t expect companies placing Ads and companies with organic search results to be the same
  • actually look at URLs and understand which companies they are likely to be associated with

NOT MISLEADING IF THERE IS NO REPRESENTATION TO A CONSUMER

In looking at whether the display of advertising content without trade marks in search results was misleading and deceptive, the first question turned on whether or not a representation had been made.

Her Honour found that the choice of a keyword was a representation by the advertiser to Google, not to a consumer, and so can’t be misleading, particularly in the case where it isn’t even visible to the consumer.

Where Veda was used as a description in the Ad copy, Her Honour found that it was unlikely for internet users to be misled when the associated URL did not also contain the word Veda.

On the other hand, the ads containing the words “The Veda Report Centre” where found to be likely to misled or deceive the public due to their authoritative air.

GOOGLE’S RESPONSE?

Google had its own run in with the ACCC in 2012 over Adwords. The ACCC said that Google was participating in misleading and deceptive conduct by displaying sponsored links where the advertiser did not have a right to use trade marks which generated those sponsored links. One of the examples in that case was an ad for STA Travel that was displayed after entering the search terms “Harvey Travel” and “Harvey World Travel”.

Google was finally absolved of any wrongdoing in 2013 when the High Court unanimously decided that the words used to generate sponsored links were the responsibility of the advertisers and not Google. This placed Google in the same position as traditional advertisers like television, radio and print.

The Court decided that reasonable internet users were capable of telling the difference between ads and organic search results and would understand that Google itself wasn’t making any representations by displaying the ads.

In that case Google was able to demonstrate that when it had notice of a possible misrepresentation occurring if a particular keyword was used, it could stop an account holder from using that keyword. It might be for this reason that there has been a block on the use of a large number of trade marks in competitive advertising through Google Adwords.

How can Onyx Legal help you?

If you are concerned that someone is infringing your trade mark, or you have received a nasty letter saying that you are infringing someone else’s trade mark rights, let us know. 

We can help prepare a notice to another person letting them know they are infringing and asking them to stop it, or help you response to that type of letter. 

We can also help you assess whether any letter you receive is a legitimate risk to you or your business, or not. Claims from overseas are not always legitimate.