MARCH 2019 LEGAL UPDATE: INTELLECTUAL PROPERTY PROTECTION
Storme Louw
This month, we’re looking at Intellectual Property Protection in Australia and Internationally!
Check out our latest Legal Update on our YouTube channel here:
The information contained in this communication does not constitute advice and should not be relied upon as such. Professional advice should be sought prior to any action being taken in reliance on any of the information. Should you wish to discuss the content of this communication and how it applies to your situation, please feel free to contact us.
MARCH 2019 LEGAL UPDATE: FASHION DESIGN: HOW TO PROTECT YOUR INTELLECTUAL PROPERTY
Storme Louw
In Australia, there are measures in place to help fashion brands protect their creative work. These include Trade Mark protection, Industrial Design protection, Copyright and Patent protection. However, the protection offered through these measures are limited in their application and will only apply within Australia.
If you are considering expanding your brand outside of Australia, you should take all precautionary measures to ensure that you are the owner of any intellectual property in association with your brand, especially if you decide to expand into a market that is notoriously known for trade mark and design infringement.
1. EXPANDING OVERSEAS: HOW TO PREVENT PEOPLE FROM USING YOUR TRADE MARK
A Trade Mark is a sign, used or intended to be used in trade or commerce, to distinguish a product from other products. This may be the name of the brand or even a phrase that is in association with the brand, that is used to distinguish your brand from others. To stop other individuals from using the Trade Mark, owners of the mark should apply for Trade Mark protection.
1.1. TRADE MARK APPLICATION REQUIREMENTS
The process of registration for a Trade Mark will include searching the Registry’s records to determine if the Trade Mark(s) have been registered or if there are similar Trade Marks in the respective country. An application for the registration of Trade Mark(s) must contain a graphical representation of your Trade Mark, and the class of the designated goods and/or services. The application must be in made in compliance with the regulatory authority in the respective countries.
1.2. EXPANDING INTO ASIA
As most countries in Asia are signatory to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid System”), an owner of a mark may use the Madrid System to apply for registration for Trade Mark protection in several countries through one application. This can simplify the process for obtaining protection of Trade Marks in countries where Trade Mark infringement is common such as India, and the People’s Republic of China.
However, not all areas in Asia are signatory to the Madrid System and will require separate applications for Trade Mark protection. In some countries, if the owner of the mark does not have a registered address in the respective country, they will have to authorise an agent to act on their behalf. This is the process for any Trade Mark applications for Hong Kong, Taiwan, and Macau.
Once registered, the owner of the mark will have the exclusive right to use the Trade Mark and they can allow third parties to use the Trade Mark under certain conditions. If the registered Trade Mark is used by an unauthorised person, the registered owner may file for infringement and obtain relief.
2. HOW TO PREVENT YOUR DESIGNS FROM BEING USED WITHOUT YOUR CONSENT?
A Design refers to the overall appearance of the product resulting from one or more visual features of the product. Only Designs that are ‘new’ and ‘distinct’ may be protected.
2.1 DESIGN APPLICATION REQUIREMENTS
An application for the registration of the Design(s) must contain a clear representation of the Design and the class of the designed goods and/or services. The application must include a supporting document that outlines what aspect of the Design is ‘new’ and ‘distinct’.
2.2 PROTECTION IN KNOWN INFRINGING COUNTRIES
Due to regulations under most legislation in Asia, if an owner of a Design does not have a registered address in the country they wish to apply for protection, the owner must authorise an agent to act on their behalf. However, this should not deter from the registration of the Design(s). It is valuable that a fashion brand holds ownership of the Design(s) used as it will give the fashion brand the legal right to stop a third party from making, using, and importing a product which is similar or identical. As such, a fashion brand can take legal measures to help prevent and stop third parties from using their Designs.
3. BONUS PROTECTION – WELL-KNOWN TRADE MARKS
If your fashion brand has taken off and before you knew, people internationally recognised your Trade Mark, you may rely on protection as your Trade Mark is ‘well-known’. All parties who are signatory to the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) have an obligation to protect unregistered well-known Trade Marks. This means that a country has an obligation to cancel or refuse registration of a Trade Mark if it is identical or deceptively similar to yours, if your mark is ‘well-known’.
4. CHECK LIST
If you are planning on applying for protection in Australia:
- Are you the owner of your mark and/ or Designs?
- Is your mark unique and not similar to another?
- Does your Design feature something ‘new’ and ‘distinct’?
If you are planning on expanding outside of Australia:
- Have you determined what countries you would like to expand to?
- Are the countries signatory to the Madrid System?
- Will you require an agent to act on your behalf for any application for intellectual property?
If you are in the process of establishing your own fashion brand or need help protecting and upholding your intellectual property rights, please feel free to get in touch with our experienced team so we can assist you in the matter.
The information contained in this communication does not constitute advice and should not be relied upon as such. Professional advice should be south prior to any action being taken in reliance of any of the information. Should you wish to discuss the content of this communication and how it applies to your situation, please feel free to contact us.
MARCH 2019 LEGAL UPDATE: BUSINESS TALENT VISA
Sienna McInnes-Smith
This month, we’re looking at Business Talent Visas which are great for foreign investors!
Check out our latest Legal Update on our YouTube channel here:
LOOKING TO INVEST IN AUSTRALIA? A BUSINESS TALENT VISA MIGHT BE FOR YOU!
A Business Talent (subclass 132) Visa allows you to establish a new or develop an existing business in Australia. The Significant Business History Stream in particular, is for experienced business owners to operate a new or existing business in Australia and make significant investments in the Australian economy.
1. APPLYING FOR YOUR VISA
1.1 HOW TO ENSURE YOU MEET THE VISA CRITERIA
There are several requirements to be eligible for a Business Talent (subclass 132) Visa, because it allows for an indefinite/permanent stay in Australia. These requirements allow the Minister for Home Affairs to evaluate whether applicants have a genuine desire to grow and maintain a management role in a business in Australia and if they are successful business people.
Visa applicants must be nominated by an Australian state or territory government and invited by the Department of Home Affairs to apply for the Business Talent (subclass 132) Visa. You become eligible to receive a nomination if you complete an Expression of Interest form and can demonstrate that you are already a successful business owner, having at least 1.5 million AUD in assets which are transferable to Australia within two years of receipt of a visa, and a business turnover of at least 3 million AUD. Furthermore, for two out of the four fiscal years prior to your visa application, you must have had ownership interests in at least one qualifying business of a net value of 400,000 AUD. Other requirements include being under the age of 55 years, having good health and a good character and functional English.
1.2 TIME AND COSTS
The cost of a Business Talent (subclass132) Visa is $7,290 with additional costs for accompanying family members and 90% of Business Talent Visa applications are finalised within 21 months of their lodgement.
2. CONDITIONS
2.1 WHAT MUST YOU CONTINUE TO DO DURING YOUR TIME IN AUSTRALIA?
While you are in Australia you must maintain certain levels of business activity to give effect to the goals of the visa: stimulating the Australian economy. The holders of Business Talent (subclass 132) Visas are required to obtain a substantial ownership interest in an eligible business in Australia, utilise their skills in actively participating at a senior level in the day-to-day management of that business and in making decisions affecting the overall direction and performance of the business in a way that benefits the Australian economy (Regs 132.21-132.22 in the Migration Regulations 1994).
2.1.1 AN ELIGIBLE BUSINESS?
An eligible business is defined as one which develops business links with the international market, creates or maintains employment in Australia, exports Australian goods or services, produces goods or provides services which would otherwise be imported, introduces new technology to Australia or increases commercial activity and competitiveness within sectors of the Australian economy (s134(10) Migration Act 1958).
2.1.2 A SUBSTANTIAL OWNERSHIP INTEREST?
A substantial ownership interest is generally dependent upon the size of the eligible business, however, for publicly listed companies your shareholding must be at least 10%, for a business with a turnover of more than 400,000 AUD it must be more than 30% and for a business with a turnover of less than 400,000 AUD it must be at least 51%.
2.1.3 ACTIVE PARTICIPATION?
Active participation involves an ongoing, active and senior management role from a specific, identifiable role within the business, such as a Board Director, in which the visa holder exercises responsibility and decision-making authority on a daily basis, exerting direct influence on the business, for example as a Chairman of the Board or a CEO.
2.1.4 VISA MONITORING
Monitoring by the Department of Home Affairs occurs during the first three years in which you have your visa to ensure compliance with these requirements, to evaluate whether the program is achieving its goals and to measure performance. This is done by asking some visa holders to complete a 24 month survey (Form 1010). Form 1010 asks about the Australian businesses in which you have invested, their financial details and your own interest in the business.
3. WHAT HAPPENS IF I DO NOT MEET THESE REQUIREMENTS?
3.1 VISA CANCELLATION
If, as evident through the monitoring program, you fail to meet one or all of the requirements of the Business Talent (subclass 132) Visa, or fail to show that you intend to meet the requirements of that Visa, the Minister for Home Affairs has discretion to cancel your visa (s134(1) of the Migration Act 1958). If your visa is cancelled, you must leave Australia.
3.2 AN EXCEPTION
However, where the above substantial ownership interest and active participation have not been possible due to the sometimes lengthy periods it takes business to occur, it may be sufficient for the visa holder to show that they have made a Genuine Effort to obtain a substantial ownership interest and occupy a senior and influential role within the business (s134(2) of the Migration Act 1958).
A Genuine Effort is defined as a sustained effort to meet visa requirements, demonstrating significant progress in attempting to establish a business that will come to fruition after the necessary time period. In considering whether a visa holder has made a Genuine Effort, the Minister may consider the following actions by visa holders: developed business proposals, the existence of partners or joint venturers for business proposals, research into eligible business, period of time spent in Australia, value of assets transferred to Australia for obtaining an interest in an eligible business, the value of ownership interest in eligible businesses in Australia which are or have been held by the person, business activity which is or has been undertaken, failure to comply with a s137 notice, if the visa holder no longer holds a substantial ownership interest in a business or no longer utilises their skills in actively participating at a senior level of a day-to-day management of a business – length of time they did so and the reasons why they no longer do so (s134(2) of the Migration Act 1958).
Please note that each of these considerations is further elaborated upon in the Procedural Advice Manual 3.
If you are in the process of applying for a Business Talent (subclass 132) Visa or any other visa and would like legal help or advice, please feel free to get in touch with our experienced team so that we can assist you in the matter.
The information contained in this communication does not constitute advice and should not be relied upon as such. Professional advice should be south prior to any action being taken in reliance of any of the information. Should you wish to discuss the content of this communication and how it applies to your situation, please feel free to contact us.