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Identification &
Protection of
Intellectual Property
Presented by:
Melissa Corbutt, Solicitor
April 2009
WLQ is a division of
Identification and
Protection of IP
What is Intellectual Property?
The Protection of economic investment in creative effort including:
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Patent
Design
Copyright
Trade Mark
Identification and
Protection of IP
Patent
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A device, substance, method or process, which gives the
owner exclusive rights to use the patent for the life of the
patent
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Innovative – ‘new’ and ‘innovative’ protection for up to 8 years
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Standard – ‘new’ and ‘inventive’ protection for up to 20 years
Identification and
Protection of IP
Design
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Overall appearance of a good including shape, configuration,
pattern and ornamentation can be protected and will give the
owner exclusive rights for the life of the design registration
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Design must be ‘new’ and ‘distinctive’ to obtain registration
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Does not protect function of a product, only the appearance
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Lasts up to 10 years
Identification and
Protection of IP
Copyright
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Automatic protection of the representation of an idea if it:
- Has been published;
- Is original;
- Has a connection to Australia
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Protection of literacy, artistic dramatic and musical works
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Protection of sound recordings, films and broadcasts
Identification and
Protection of IP
Trade Mark
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Any sign, word, number, sound, letter, smell, shape, logo,
picture, aspect of packaging or any combination of these;
That distinguishes one trader’s goods and services from those
of another trader.
45 classes of goods and services.
Proprietary right.
Indefinite protection if renewal fees paid every 10 years.
Identification and
Protection of IP
Trade Mark v Business Names
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The purpose of registering a business name is so that a
business can be identified.
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Business name registration:
- only protects the business in the state that it is registered;
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- is not a proprietary right and offers no exclusive protection.
Identification and
Protection of IP
Trade Mark v Domain Names
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Regulated by the Internet Corporation for Assigned Names and
Numbers (ICANN).
Domain names are issued to applicants by authorised Domain
Registrars.
No proprietary rights
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Advantages:
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– An identical domain name cannot be registered;
– Prevents cyber-squatting
Identification and
Protection of IP
Trade Mark v Domain Names
Case: WIPO D2008 – 1133
Stella Group (Complainant) v Creative Internet Consultants
(Respondent)
• Complainant claiming common law trade mark rights in the
names of various buildings in which they have management
and letting rights.
• Respondent in the business of letting holiday accommodation
on-line.
• Held: Respondent had a legitimate interest in the domain
names and domain names were being used in good faith.
Identification and
Protection of IP
Advantages of TM Registration
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Proprietary rights
Exclusive
Perpetual
Cost advantages for registering a trade mark as soon as a
business is established
– Case Apple Inc v Macpro Computers (Aust) Pty Ltd
Identification and
Protection of IP
What else can you do to protect your Trade
Mark?
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Protect corresponding business names or company names;
Protect corresponding domain names
Monitor competitors
Lodge oppositions to substantially identical or deceptively
similar trade marks
Prevent Staff from
Misusing Trade Secrets
and Goodwill
Presented by:
Stephen Hughes, Partner
April 2009
WLQ is a division of
Strategies for preventing staff
misusing trade secrets and goodwill
A good common sense strategy for preventing staff
misusing trade secrets and goodwill is as follows:
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Identify High Risk Situations
The likelihood of staff defecting from a business often occurs in
circumstances where:
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The business is in the process of restructuring or changing hands
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Pay reviews have not met the employees’ expectations
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The employee is the main point of contact with a key supplier or
business partner
In these circumstances, employers should give consideration to how well
protected trade secrets and goodwill are in respect of that particular
employee.
Strategies for preventing staff
misusing trade secrets and goodwill
2. Identify the secrets and communicate this to staff
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It is important to ensure that there is no confusion or uncertainty in
the minds of employees that an obligation of confidentially arises
when they deal with particular information.
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Confidentiality obligations and identification of confidential
information needs to be regularly reinforced.
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Categories of confidential information should be made clearly
identifiable, as the court is more likely to grant relief for a breach of
confidentiality where the conduct concerns information which has
been previously specifically identified rather than vaguely falling
within a category.
Strategies for preventing staff
misusing trade secrets and goodwill
3. If information is identified as confidential, then it should
be treated in an appropriate manner
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Courts are more likely to accept that information is confidential
where the circumstances clearly show that the business has treated
the information as being confidential.
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Most contracts and policies define “confidential information”, which
is not in the public domain. Accordingly, by its own conduct, a
company may allow confidential information to enter the public
domain such that it is then impossible to restrain an employee from
using that information.
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Systems and procedures should be put in place to minimise the risk
of confidential information filtering into the public domain.
Strategies for preventing staff
misusing trade secrets and goodwill
4. Adequately protect intellectual property rights
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Pursuing a former employee for breach of confidential and
restraint clauses may be an inadequate source of
compensation where the information has been used with
commercial success by a third party to whom no restraint or
restriction can be applied
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Employers that have identifiable intellectual property rights
in inventions, processes and discoveries (especially where
those who have been created by the work of an exemployee) ought to take early steps to adequately assign
those rights and effect registration of any relevant trademark
or design due to the cost and difficulties of attempting
Strategies for preventing staff
misusing trade secrets and goodwill
5. Restrain ex-employees from competing
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Courts are generally reluctant to prevent an employee from
working in his or her chosen profession, especially where
such restriction would cause the person gross hardship or
affect the ex-employee’s capacity to subsequently seek
employment.
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The courts will however enforce an appropriate restraint of
trade, which might be delineated by type of work, clientele,
identified area and identified period.
Continued…
Strategies for preventing staff
misusing trade secrets and goodwill
5. Restrain ex-employees from competing
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It is important to reiterate that such restraints will only be
upheld if a court is satisfied that the covenant is reasonable.
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Restraints cannot simply be enforced to prevent a good
employee competing with the business or working for a rival.
The former employer must be able to point to specific
knowledge of the employee, which is confidential, which
would justify giving effect to the restraint (i.e. if the exemployee was familiar with the cost and pricing structures
that they could deliberately undercut the company’s pricing
in order to win business from the former employee).
Continued
Strategies for preventing staff
misusing trade secrets and goodwill
5. Restrain ex-employees from competing
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Restraint provisions can also seek to prevent ex-employees from
inducing other employees or contractors to leave the employer,
approaching the employer’s suppliers, soliciting business from the
employer’s customers, actually establishing a competing business
or working for a competing business so long as terms of period,
area of operation and type of activity restrained does not go too far
and only reasonably prevent unfair exploitation of residual
confidential knowledge of the likely period that such knowledge will
give a material advantage
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Accordingly restraint provisions must be drafted to allow the court to
read down their operation rather than reject the provision outright as
being unreasonable
Continued
Strategies for preventing staff
misusing trade secrets and goodwill
5. Restrain ex-employees from competing
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An effective means of achieving this result is to adopt a
“collapsing” clause, which allows the court to choose a
combination of conduct, time and area to determine a
restraint with a reasonable scope of operation in the
circumstances. Such a clause must provide distinct and
identifiable alternatives, as a clause, which simply
nominates a restraint to the extent to which a court might be
minded to grant would be void for uncertainty.
Strategies for preventing staff
misusing trade secrets and goodwill
6. Consider “gardening leave” clauses
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One way of preventing an employee from immediately
competing is to enforce a significant notice period, during
which time the employer can prevent the employee from
working for a competitor or setting up a competitive
business and also isolate the employee from access to
confidential information .
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These clauses should expressly reserve the employer’s right
to require the employee to stay at home and not perform
any duties in any respect.
Strategies for preventing staff
misusing trade secrets and goodwill
7. Consider long term incentive for remuneration
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Another strategy, rather than focusing on what to do to
prevent employees leaving and utilising confidential
information is to in fact have a strategy to retain key
employees and thereby avoid the misuse of information.
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A common way of achieving this is share incentives or
bonus incentives, which typically provide forfeiture of the
benefit if the employee joins a competitor. Share incentives
have continued to be a well utilised method dispute
legislative changes over time.
Strategies for preventing staff
misusing trade secrets and goodwill
Cases
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Great Southern E-Events Pty Ltd v Peskops [NSW] SC 382 – 13.04.07
Tullett Prebon (Australia) Pty Ltd v Simon Purcell [2008] NSWSC 852 (21
August 2008)
Masterclass Enterprises Pty Ltd v Bedshed Franchisors (WA) Pty Ltd [2008]
WASC 67 (13 May 2008)
Workpac Pty Ltd v Steel Cap Recruitment Pty Ltd [2008] WASC 238 (24
October 2008)
Bulldogs Rugby League club Ltd & anor v Williams and ors [2008] NSWSC
822 (8 August 2008)
WPS Enterprises Pty Ltd v Radford [2009] VSCA 22 (27 February 2009)
Miles v Genesys Wealth Advisers Limited [2009] NSWCA 25 (24 February
2009)
Positive Endeavour P/l v Madigan, Lehman and First Pacific Mortgages P/l
[2008] SADC 117 (11 September 2008)
Bearingpoint Australia Pty Ltd v Hillard [2008] VSC 115 (18 April 2008)
Contact
Details
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Brisbane QLD 4000
GPO Box 3246 Brisbane QLD 4001 Australia
T 61 7 3226 9099
F 61 7 3220 1300
E [email protected]
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Cnr Bundall Road & Slatyer Avenue
Bundall QLD 4217
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F 61 7 5597 8899
E [email protected]