Legal experts Lisa Egan and Alex Dunlop reveal how to protect your brand overseas and at home.
Like so many industries in the modern world, fashion is a global industry. Online shopping has opened up retail opportunities that were simply not available as recently as five years ago. Globalisation also means that more Australian-based businesses are increasingly opening up their own retail outlets on foreign soil.
With this in mind, protecting your brand on an international scale is more important than ever. As an important trading partner and with its own successful designers, New Zealand is an important market for Australian designers and brand protection in New Zealand has just become easier for Australian businesses.
Trade mark protection works on a country by country basis – registering your trade mark in Australia for example, does not protect that mark in any other county. This means that businesses which sell their products or services in other countries (or are considering doing so in the near future) need to register their trade marks in those countries too, if they want their brands to be protected.
This may appear a little daunting, but the good news for Australian brand owners is that Australia is a signatory to the Madrid Protocol. Put simply, the Madrid Protocol allows Australian brand owners to apply to protect their brands in other signatory countries by filing a single trade mark application through IP Australia. This significantly streamlines the process and saves you from filing separate applications in each of those countries – saving you time and money.
At the time of writing, there are 88 members of the Madrid Protocol, including major markets such as the UK, the European Union and the United States. Importantly for Australian brand owners, the Madrid Protocol came into force in New Zealand in December 2012. Given New Zealand is a significant trading partner for Australia and is often the first port of call for many Australian designers who branch out internationally, this is a major advantage for Australian fashion brands. Brand owners can apply to register their brands in New Zealand in the same single Madrid Protocol application that can be used to seek registration in other countries.
There are also changes to the way the Australian Customs and Border Protection Service (Customs) handles counterfeit goods that are due to commence in April 2013, which will strengthen the protection for Australian brand owners against counterfeit goods.
An owner of a trade mark that is registered in Australia can notify Customs of that registration by filing a “Notice of Objection”. Customs will then notify the brand owner if it intercepts goods featuring that trade mark which Customs suspects are counterfeit. Currently, if the importer does not voluntarily forfeit the goods or the brand owner does not commence Court proceedings against the importer within a specified time frame, Customs must release the goods to the importer. This puts the onus on the brand owner to take action where the importer refuses to voluntarily forfeit the goods.
However from April 2013 this onus will be reversed. The importer will be required to establish that the goods are genuine goods, otherwise they will be destroyed by Customs. This is a significant development for Australian brand owners, and we expect more counterfeit goods will be permanently forfeited to Customs, which will save brand owners the time and money involved in pursuing the importers themselves. But remember – your mark must be registered with IP Australia and Customs before you can take advantage of this system.
The key points to remember:
- Make sure your brand is registered in Australia and with Customs. This will help you to stop other traders from using your brand or importing counterfeit products into Australia.
- Make sure your brand is also registered in the other countries in which you trade. If those countries are members of the Madrid Protocol, you can streamline this process by filing a single application with IP Australia.
- The best brand protection strategies are those that are preventative rather than curative and the sooner you can put a good brand protection strategy in place, the better.
- Getting your brand protection in order from the start will make the process of protecting your brand easier and less expensive, and is also a valuable asset for attracting investors or buyers to your business.
On 1 January 2013, Middletons merged with global law firm K&L Gates. Lisa Egan is a partner and Alex Dunlop is a lawyer in K&L Gates’ Melbourne office. For more lisa.egan@klgates.com