Intellectual Property Lawyers Parramatta

How does intellectual property law work in New South Wales?

If someone is using your brand, copying your work or threatening you over a name you have traded under for years, the first thing to know is that intellectual property (IP) law in New South Wales is almost entirely federal. IP means the legal rights in things you create: brands, written and creative work, inventions and product designs. There is no NSW trade marks office and no NSW patents Act. The same four Commonwealth Acts apply in Parramatta as everywhere else in Australia.

The Trade Marks Act 1995 covers trade marks, which are signs such as names, logos or slogans that distinguish your goods or services. The Copyright Act 1968 protects original works such as writing, images, music, film and software code automatically, with no registration system. The Patents Act 1990 protects inventions, and the Designs Act 2003 protects the visual appearance of a product. Trade marks, patents and designs are registered through IP Australia, the federal government agency that examines applications and keeps the registers. Everything is filed online, so you do not deal with a local counter in Sydney.

Where New South Wales law comes in is around the edges. The Australian Consumer Law applies in this state as the Australian Consumer Law (NSW) through the Fair Trading Act 1987 (NSW). It prohibits conduct in trade or commerce that is likely to mislead or deceive, and it is often relied on when a competitor dresses up their business to look like yours, even if you have no registered trade mark. Claims about confidential information (trade secrets), contracts that assign or license IP, and ownership disputes between business partners are decided under contract law and equity, which is the body of court-made rules about fairness and confidence.

Business name or trade mark: the mistake many Western Sydney businesses make

A very common problem for new businesses in Parramatta, Blacktown, Liverpool and Penrith is assuming that a registered business name means you own the name. It does not. A business name is registered with the Australian Securities and Investments Commission (ASIC) under the Business Names Registration Act 2011 so that the public can see who is behind a trading name. IP Australia's guidance is direct on this point: business name registration does not give you exclusive rights to the name and does not provide intellectual property protection. The same is true of a company name and a domain name.

Only a registered trade mark gives you an exclusive, Australia-wide right to use the mark for the goods and services it is registered for. The ASIC and IP Australia registers do not cross-check each other. That means ASIC can accept your business name even though another trader already holds a registered trade mark for something very similar, and you may only find out when a letter of demand arrives after you have paid for signage, packaging and a website.

Before you commit to a name, search the Australian Trade Mark Search as well as the ASIC register. If the name is clear, applying for a trade mark early is one way to reduce the risk of a forced rebrand later.

Where are IP disputes from Parramatta and Western Sydney heard?

There is no local tribunal for IP disputes, and the NSW Civil and Administrative Tribunal does not decide trade mark, copyright, patent or design infringement claims. The Garfield Barwick Commonwealth Law Courts Building at 1-3 George Street, Parramatta, handles family law and migration filings, not IP cases. Court cases about IP from Western Sydney are run in the federal courts in the Sydney city centre.

The Federal Court of Australia hears all types of IP matters, including patent disputes. Its New South Wales registry counter is on Level 17 of the Law Courts Building, Queens Square (street address 184 Phillip Street, Sydney). The Federal Circuit and Family Court of Australia (Division 2) shares jurisdiction with the Federal Court over civil disputes about copyright, trade marks, designs and plant breeder's rights. Patents are not on its list. Its practice direction for IP cases says the judge will try to keep a final hearing to no more than 3 days, which suits more contained disputes. Its registry services for these matters in Sydney are provided from the same Federal Court registry at Queens Square, while hearings are held in its courtrooms at the Lionel Bowen Building, 97-99 Goulburn Street, Sydney, or at 80 William Street, Woolloomooloo. Documents are filed online through the courts' eLodgment system wherever possible, and the practice direction says appearances are managed by audio or video link when parties or their lawyers are in different locations, so starting a case does not usually require a trip into the city.

The Supreme Court of New South Wales, at 184 Phillip Street, Sydney, hears equity and commercial matters in its Equity Division. Disputes that are mainly about a contract, a partnership or misuse of confidential information can be brought there.

Many disputes never reach a court. Oppositions to trade mark applications and applications to remove an unused trade mark are decided by IP Australia itself, with a right of appeal to the federal courts.

What should you do first if someone is copying you, or you receive a letter of demand?

Start by collecting evidence before anything changes. Take dated screenshots of the website, social media pages, marketplace listings or packaging. Keep records showing when you first used your name or created your work, such as invoices, design files, emails and drafts. Check what you actually own: a registered trade mark, design or patent, copyright in a work you or your employees created, or only a business name.

Be careful about firing off an angry message or a do-it-yourself letter of demand. The Trade Marks Act 1995 (section 129) and the Designs Act 2003 let a person who is threatened with infringement proceedings apply to the court for relief from unjustified threats, and the Copyright Act 1968 (section 202) has a similar rule for groundless threats. A poorly framed threat can hand the other side a claim against you.

If you have received a letter of demand, do not ignore it and do not admit anything in a rushed reply. Note the deadline in the letter, keep using your records to work out who used the name or work first, and get legal advice on whether the claim is sound. Many letters overstate the sender's rights, and some are correct and need a planned response, which might be a negotiated changeover period, a licence or a coexistence agreement.

If the matter does go to court, the Civil Dispute Resolution Act 2011, a Commonwealth Act that applies to many federal court proceedings, may require you to file a genuine steps statement, which sets out what you did to try to resolve the dispute first. A sensible, well-documented attempt to settle is therefore part of the process, not a sign of weakness.

Is IP law different in NSW from other states?

Because the IP Acts are Commonwealth laws, your registered rights and the tests for infringement are identical in Sydney, Brisbane, Melbourne and Perth. A trade mark registered by a Merrylands business is enforceable against a copycat in another state, and the reverse is also true.

The differences are practical. Each state has its own Federal Court registry and its own Supreme Court for contract and confidential information claims. Each state also has its own fair trading regulator; here it is NSW Fair Trading, the state's consumer protection regulator, which works alongside the national regulator, the Australian Competition and Consumer Commission. In this state the consumer law applies as the Australian Consumer Law (NSW) under section 28 of the Fair Trading Act 1987 (NSW). For a business in Western Sydney, the practical result is simple: your filings go to IP Australia online, and any court case is run in the Sydney registries.