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Save Money with Business Name Registration, Australia

Save Money with Business Name Registration, Australia

by | Oct 18, 2022 | Business Structures, Law for Online Business, Legal

Save Money with Business Name Registration, Australia

Save Money with Business Name Registration

You may be using a third party provider to keep your business name registrations up to date, but registering your business name directly through ASIC yourself may be the cheapest option and provide you with more certainty and control.

You can register for an ASIC Connect account, or you can use the ASIC business registration system.

If the website you are using to register a business name doesn’t include .gov.au in the domain name, then you will be paying extra to use the service. In 2022, you can register a business name directly with ASIC for just $39 per year, or $92 for 3 years. 

Once registered, provided you keep your contact details up to date, you will receive notice of renewal from ASIC before your registration expires. If you discover that your registration has expired, then you will still have 30 days after the registration date to apply to re-register that name before it becomes available to the public.   

If you receive letters from third party registration providers, they will usually be looking for annual fees that are more than what you would pay ASIC. Their additional fees cover the cost of their operations and their profits. ASIC publishes a list of what third party providers can and cannot do and you can complain to the provider if you have any concerns. 

You should definitely NOT be paying more than one third party provider for registration services of the same name, and NOT for registration of your own name. 

Do I Need An ABN To Register A Business Name?

Yes, you need an ABN to register a business name. 

An ABN is an Australian Business Number, and it is attached to whatever entity you use to conduct your business, whether that is as a sole trader, through a trust, or as a company or incorporated association. 

For people setting up private foundations who think they don’t need an ABN – check here. 

Do I Need To Register My Company Name As A Business Name?

No. 

If your company name is the same as the name of your business, then you don’t need to register them separately. 

If you register a business name, no one will be able to register a company with the exact same name, and when you register your company name, no one will be able to register exactly the same name as a business name. 

On the other hand, if you want to have separate business divisions with different names under the same company, then you can register multiple business names and, through your company ABN, they will be linked to your company, even though the company and the businesses have different names. 

Sole traders can register multiple business names consistent with the different areas of business they are involved in. Those business names will be linked to their sole trader ABN.

Be aware that some third party providers will write to you encouraging you to register your business name without checking to see if you have changed your business structure and set up a company with the same name. Their interest is in receiving your payment for registration, whether or not it is required. 

Do All Business Names Need To Be Registered?

Yes, and No. 

Under the Business Names Registration Act 2011 (Federal), it is an offence to carry on a business under a name that is not registered. The penalty is 30 penalty units, which in 2022 equates to about $6,660. Doesn’t seem worth risking when its only $39 per year to register, does it?

Did you know you can be fined $6,660 for carrying on business without registering your business name?

If you use your personal name as a business name with a description of what you do – eg. “Emma Lee Accounting”, or “Sanjay Singh Consultants”, then you don’t need to register it, as using your own personal name for your business is not an offence. The same goes for a company that uses the company name to operate a business.

How Do You Check If A Name Is Taken For A Business?

Business name availability is easy to check, and a quick check can save you lots of money in the future.

The first thing you should do is complete a quick Google or other browser search on your chosen name. If you find a competitor in the same country with the same or a very similar name – go back to the drawing board. It’s not worth the hassle and you create the risk of having someone send you nasty legal letters telling you to stop using that name. 

Secondly, complete a trade mark search. In Australia, you complete a trade mark search through IP Australia. If someone has a registered trade mark in broadly the same area of business as you, you risk getting a nasty legal letter telling you to stop using that name. The Onyx Legal team can help you assess whether or not you have any concerns about a registered trade mark, or would like to register your business name as a trade mark. Simply send us an email to advice@onyx.legal with “Trade Mark Registration enquiry” in the subject line and we will respond to your promptly. 

Thirdly, and now that you are reasonably certain no one else has a name the same or very similar to what you want to use, then do a name availability check on ASIC. Select “Organisation and Business Names” then complete some or all of the words you want to use in the “Name or Number” field and select “Go”. 

A list of Organisation and Business Names should appear. If there are more than 10 names, there will be multiple pages. You can change the settings to display up to 50 names at a time. When looking at names, anything that says “Registered” next to it in the “Status” column is not available to you. 

For example, we searched “forthright”, which produced 20 results. 10 of those results are registered. In the “type” column, you can identify whether they are business names or company names.

 

You won’t be able to register a business name if it is already being used by a company, and vice versa. Names that are identical or nearly identical to an existing registered business name are not allowed.

You can, however, add an additional word to the name – in this example some additions are “consulting”, “international” or “enterprises”, to register the same name.

Do I Have To Register My Business Name With ASIC?

Yes. 

Until 2012 business name registration was state based, but it has now moved to one national register managed through ASIC. 

Because your business name is linked to an ABN, your business name contact details will also be searchable through the ABN register. 

What Is The Difference Between A Trading Name And A Business Name?

A trading name refers to a name a business might use that is not currently registered. If you are using a trading name, or have used a trading name in the past and you want to continue using that name, then you should now register than name as your business name. 

ABN Lookup will continue to display trading names until 31 October 2023. From 1 November 2023, ABN Lookup will not display trading names and will only display registered business names. What this means for your business is that anyone who checks ABN Lookup to ensure your business is legitimate is unlikely to find you unless you have a registered business name. 

Business Name Registration Renewal

You don’t have to renew your business name registration every year. If you register through ASIC, you can register the business name for three years. 

Provided you keep your contact details up to date, you will receive notice of renewal from ASIC before your registration expires. If you discover that your registration has expired, then you will still have 30 days after the registration date to apply to re-register that name before it becomes available to the public.

Business Name Registration Qld, NSW, Vic etc

Business name registration moved from a state based system to a national system back in 2012. If you had previously registered under the state system, your registration should have been migrated to the national ASIC register. Some registrations were lost in that process because people did not keep their details up to date. 

If you lost your registration and someone else is now using that name, you may need to adjust your business name in order to get it registered again. 

You don’t have any ownership rights in a business name. The purpose of registration is to identify who is behind a business and demonstrate the credibility of a business. 

What Happens If My Business Name Is Not Registered?

Failing to register your business name, or to keep your registration up to date, can mean that someone else can register that business name and use it instead of you. If you allow your registration to lapse and someone else registers the same name, you have lost it and don’t have any automatic legal right to demand it back from the new business. 

There may be a legal argument as to why they should hand it over, but to prove that right and get the order for them to handover the name, you would have to go through a court process. Court is costly, time consuming, stressful and provides no guarantee of success.

Can Someone Else Use My Business Name?

There are various legal arguments why someone else cannot use your business name without your permission. Whether you have an argument depends on all the circumstances, and we would need to have a discussion with you about your situation before advising. 

Do I Own My Business Name?

Business name registration does not give you ownership rights. If you want the right to stop other people from using your business name, or something similar to your business name, then you may be better to register that name as a trade mark. Be aware that not all names are capable of achieving trade mark registration.

How can Onyx Legal help you?

Need help understanding your business name situation, or want to register your business name as a trade mark? Make an appointment with one of our team. 

Make an Appointment

What is the Difference between Trade Marks and Copyright?

What is the Difference between Trade Marks and Copyright?

by | May 19, 2021 | Copyright, Law for Online Business, Legal, Trademark

What is the Difference between Trade Marks and Copyright?

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.

Make an Appointment

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

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

by | Nov 30, 2020 | Copyright, Law for Online Business, Legal, Trademark

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. 

Make an Appointment

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

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

by | May 17, 2019 | Law for Online Business, Legal, Trademark

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.

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How to Deal with Threatening Legal Letters

How to Deal with Threatening Legal Letters

by | Aug 22, 2017 | Dispute Resolution, Law for Online Business, Trademark, Video

How to Deal with Threatening Legal Letters

Want to know how to handle nasty legal demands?

I’m on the road in between meetings today and just thought I’d share a story with you. I was speaking to a friend earlier and they said, “Oh, that’s such a great story. More people should know it.” So I thought I’d share it with you today.

We had a client who received one of those nasty letters of demand in the mail saying, “You’re in breach of our trade mark. Hand over your domain name, hand over your website. If you don’t do it in 24 hours or seven days or something ridiculous, then we’re going to take you to court and see you for a whole bunch of money.“

Now the client came to us and said, “Can you represent me in court proceedings?” I responded, “Hey, let’s stop and look at this in the moment and see if that is your only option.“

Court is not the only option

When we looked at the value in the client’s business, it was not in the trade mark. This is a client who had been selling a product that they imported from the UK and the company in the UK had registered the trade mark in the UK. There was a competing company in the US and they had registered the trade mark in the US. The American company came to Australia. They registered the trade mark in Australia. They waited a couple of years and then they wrote this nasty letter to our client saying, “You’re in breach of our trademark.” Our client had been trading in Australia before they started trading in Australia.

There are a whole lot of legal, technical arguments involved. We could’ve gone to court. We could have argued prior use and all sorts of things, but court proceedings take time and cost money. So the prospect of our client going to court was just not attractive. We were looking at maybe three years, $150,000 and no guarantee of a favourable result. We would have a result one way or the other, but we couldn’t guarantee it would help our client.

Looking at the business and knowing that the revenue wasn’t in the trade mark, we spoke to the supplier in the UK. They were happy to re-brand or they were already in the process of re-branding some of their products. So they said, “Okay, what we’ll do is we will assist you in re-branding.” They registered a domain name with the new brand. They registered the new brand as a trade mark here in Australia. Our client put together a 90 day plan, or at least we helped our client put together a 90 day plan to re-brand their business and to shift everything across to the new brand.

Because it was a 90 day plan and we made some promises to the American company about the process we were going to go through, they gave us that time because 90 days is a hell of a lot better than going through court, and there are certain requirements and rules around proper negotiation and all that sort of thing and trying to reach a commercial resolution. So the American company just had to wait.

Is there a better strategy?

In that 90 days, our client shifted his entire business onto the new brand. Now the value was in his database, so through a series of communications with the database, the whole database was shifted across to the new brand.

Our client did have to spend money on re-branding and shifting that database across, but he didn’t lose any revenue and most importantly didn’t lose any business. So once that process was complete, our client had a new website up. He had the entire database marketing to them and was changing them over to the new brand. We’ve got an agreement with the American company to say that we could sell out the end of the branded supply and not stock any new supply with that trade mark.

In the end, the American company bought our client’s domain name. Now, the reason behind that was the domain name was .com which means it can be used internationally, so my client still had the right to use that domain name in jurisdictions other than where there was a registered trade mark, or where he had permission. So he could still use it in the UK where they had the mark registered or his supplier had the registered trade mark and was happy for him to use it. In order for the American company to get hold of that domain, they had to buy it.

Instead of three years and $150,000 in court with no certain result, what we did is introduced a strategy enabling our client to re-brand in 90 days, shift his business across, not lose any money, and because the domain name was bought, his legal fees were effectively halved. So great, great result for the client, and just a really good example of the fact that there are options. Our client walked away with a stronger business and a protected brand.

  • Don’t think just because you get a letter of demand that you have no choice but to go to court.
  • Don’t think that you might not have an argument because there’s a whole lot of technical issues involved in legal cases, and sometimes it’s not all against you and sometimes there’s not all in your favour.
  • There are options and it’s worth investigating what those options are before you go and get started. 

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, Make a time to talk with one of our team so we can help you map the way forward.

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