O ver the years,
design registration can be obtained in a matter of months. It can provide an immediate tool for taking action against competitors who are copying a product. In my experience, if a product is successful, those wanting to take advantage of that success will copy the product very closely. This is where a design registration can swing into action and be used to stop that copying. However, the design registration must be examined and certified by IP Australia before it can legally enforced. Q: We have seen giant companies, such as Apple, having issues securing their brand in China, what is the best strategy to trade mark your brand in certain countries and what advice would you give someone looking to scale globally? The laws in some countries only provide trade mark rights to the first person who registers a trade mark. These countries are called ‘first to file countries’. This is in contrast to countries like Australia, New Zealand and the USA, where trade mark rights generally attach to the person who first uses a trade marks, although such rights may be limited by restricted geographical use of that mark, for example to certain states or territories. I would therefore advise anyone who is wanting to sell their product globally to draw up a plan in relation to the protection of their brand internationally with one of the key strategies being to register their brand in first to file countries as a matter of priority.
product or publicise it, to see what likely forms of IP protection may be suitable and if they can test the water beforehand prior to commencing the protection process. It is also prudent for the start-up to develop an IP strategy early on which should be in line with their business strategy which plans for the allocation of funds at the most appropriate times for IP protection. Q: As a representative on the Anti-counterfeiting Committee (Australian branch) of the Asian Patent Attorney Association (APAA) how important is anti-counterfeiting to APAA and how do you see this Committee! APAA does recognise that anti-counterfeiting is a serious problem for trade mark owners in the Asian region, especially luxury or popular brand owners, and regularly keeps abreast of legislative changes or case law developments in each member country. Reports on a particular topic from the Committee of each member country are tabled and discussed at APAA’s annual meeting. Q: Do you think design registration is sometimes overlooked? I most definitely do! It unfortunately registration can provide speedy and cost-effective protection for a product and can provide a back-up to patent protection. Design registration will protect the visual appearance of a product or part of a product in terms of its shape, configuration, pattern or ornamentation. Patents usually take about 4 – 5 years to obtain whereas issue continuing in the future? This will be my first year on the is often regarded as the “poor relation” of patents. But design
Jennifer has advised numerous Australian and overseas entities
from a broad range of industries including engineering, chemical, food and beverage, publishing,
dairy, pharmaceutical, telecommunications,
cosmetics, toys, education and agriculture, and she
particularly likes working with growing businesses and private companies. Q: We see many start-ups going to market prior to considering or protecting their IP, at what stage in the journey should businesses protect their brand and how important is this protection to SMEs? It is understandable from a financial perspective that a start-up may wish to test the waters commercially before laying out what might be significant mind that by doing so, it could well jeopardise the nature and extent of IP protection it might subsequently be able to obtain for the product. For example, sale or public disclosure of a product and when that might have occurred would impact on whether it is possible to still obtain valid patent protection or design registration. Many countries have absolute novelty requirements which means that if a product is sold or disclosed publically prior to commencing the protection process, valid protection may not be obtained. It is essential that a start-up obtain advice very early on, and before they commercialise their expenditure on IP protection. However, they need to bear in
IN THE SPOTLIGHT WITH JENNIFER MCEWAN
Jennifer specialises in trade mark law and consumer protection. With over 30 years of
experience as an attorney, the world of trade marks is never dull for Jennifer. As we live
in a world surrounded by brands and their messages, Jennifer confided that her love for
trade marks continues given it is the most visual, and arguably, the most commercially
important and powerful of all intellectual property.
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