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Patents, trade marks, copyright and designs in Australia: overview
A guide to intellectual property law in Australia.
The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.
To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs: Country Q&A tool.
This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.
The claimed invention and specification must satisfy these requirements:
Inventive step (innovative step for innovation patents).
Utility (the invention must not only have a credible use but must also meet the promises of the specification).
No prior secret use by the patentee or those with its authority.
A "manner of manufacture" (section 18, Patents Act 1990 (Cth)).
Sufficiency (the complete patent specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art).
Best method (the best method known to the patent applicant at the date of the complete application must be disclosed).
Support (the claims must have an adequate foundation in the description of the invention in the specification, and not extend beyond the contribution made to the art).
Human beings and biological processes for their generation are not patentable. Innovation patents cannot be granted for plants, animals, or the biological processes for their generation.
Laws of nature or abstract ideas and theories divorced from their practical application, products of the fine arts, business schemes, and naturally occurring DNA sequences do not constitute a Manner of Manufacture. Computer software may not satisfy the Manner of Manufacture requirement unless it can be shown that the invention lies in the way in which the method is carried out by the computer.
Registration is administered by IP Australia. Information on the process is available online at www.ipaustralia.gov.au/patents
Standard (but not innovation) patent applications are examined before grant. Innovation patents must be examined and certified before they can be enforced.
During examination, the examiner needs to be satisfied that the legal requirements are met (other than secret use) (see Question 1). Innovation patents cannot claim inventions that are the same as those covered by another granted patent where the claims have the same priority date(s) (this prevents double patenting using the divisional application process).
There is no standing requirement for an opposition or revocation action. These can brought on the basis that the patent does not meet any of the legal requirements (see Question 1).
Secret use is not an available ground for opposing innovation patents.
A revocation action can also be brought on the ground that the patent was obtained by fraud, false suggestion or misrepresentation.
The patent owner has the exclusive right to authorise others to (among other things):
For products: make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things.
For processes: use the processes or do any of the above in respect of a product resulting from the use of the process.
Where a use of a product by a person would be an infringement, supplying a product to that person can also constitute an infringement in certain circumstances.
A patentee can impose territorial limitations and prevent parallel imports.
See Question 14.
Unregistered trade marks can still be protected using the action of passing-off or using the provisions of the Australian Consumer Law. However registration provides broader protection.
Infringement of a registered mark:
Does not depend on establishing reputation.
Does not require evidence of actual deception, for example, confusing similarity of the marks themselves is sufficient.
Extends to closely related goods.
There are also practical benefits, including giving notice to third parties and preventing a subsequent applicant from registering the same or a similar mark.
Registration of Australian trade marks is administered by IP Australia. Information on the process is available online at
An application must be refused if:
The mark is not capable of being represented graphically, or distinguishing the applicant's goods or services.
The mark contains or consists of scandalous matter.
Its use would be contrary to law, or would be likely to deceive or cause confusion.
It is substantially identical with, or deceptively similar to, an earlier registered trade mark, in respect of similar goods or closely related services (for goods) or similar services or closely related goods (for services). This ground can be overcome if continuous use of the trade mark, from before the priority date of the earlier mark, can be shown.
Grounds of opposition are:
Those grounds available to the authority for refusing an application (other than the trade mark not being capable of being represented graphically) (see Question 14).
The applicant is not the owner of the trade mark.
The applicant does not intend to use the trade mark in relation to the goods or services.
Another trade mark had acquired a reputation in Australia before the priority date of the application, so that the use of the sought trade mark would be likely to deceive or cause confusion.
The sought trade mark includes a geographical indication used for other goods, and the goods of the applicant do not originate from that location.
The application was accepted on the basis of evidence or representations that were false in material particulars.
A revocation action can be brought by an aggrieved person on the following grounds:
Those available for opposition proceedings.
Fraud, false suggestion or misrepresentation.
The use of the trade mark is likely to deceive or cause confusion.
Non-use actions can be brought, including where the trade mark owner has not used the trade mark for the period of three years ending one month before the day on which the non-use application is filed.
Infringement occurs where another person uses as a trade mark:
A sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
A sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
for goods: goods of the same description or closely related services;
for services: services of the same description or closely related goods;
This is unless it is shown that using the sign as that person did is not likely to deceive or cause confusion.
A sign that is substantially identical with, or deceptively similar to, a trade mark that is well known in Australia, where the use of the sign would be likely to be taken as indicating a connection with the owner of the registered trade mark.
Certain restrictions on the permitted uses of goods sold under the mark can be created using a notice placed on the goods. A defence is available to a good faith acquirer of the goods who does not know of the restrictions.
Available defences include:
Good faith uses of a person's name or the name of their place business (or those names of their predecessors).
Good faith uses of the sign to provide certain information about the goods.
Uses for comparative advertising.
The court being of the opinion that the alleged infringer would obtain registration of the registered trade mark, or of their substantially identical or deceptively similar trade mark, if they applied for it.
Defences are also available:
Where the trade mark was first applied to the goods or services with the consent of the trade mark owner.
In cases of prior continuous use of the unregistered trade mark.
Where the mark is liable to removal because the trade mark was not used in good faith by its registered owner.
Protection begins from when the requirements for subsistence are met and ends:
Literary (other than a computer programs), dramatic or musical works not publically communicated or available before the death of all authors, and anonymous or pseudonymous works: at the end of the 70th year from the year when a publication first occurs.
Other works: at the end of the 70th year from the year of death of all of the authors.
Sound recordings and cinematograph films: at the end of the 70th year from the year of first publication.
Broadcasts: at the end of the 50th year from the year of first broadcast.
Published editions: at the end of the 25th year from the year of first publication.
It is an infringement to do or authorise the following:
For works (rights for artistic works are more limited):
reproduce in a material form;
perform in public;
communicate to the public (includes broadcasting or making it available online); or
make an adaptation.
For sound recordings and cinematographic films:
make a copy;
cause it to be heard/seen in public;
communicate it to the public.
make a film or recording of it, or a copy of such a film or recording;
re-broadcast or otherwise communicate to the public.
For published editions: make a facsimile copy of the edition.
Importation of works for commercial purposes (for example, sale) is prohibited. There are broad exceptions permitting parallel importation of most items, but very limited exceptions for books.
Available remedies include:
Damages or account of profits.
Injunctions (permanent and interlocutory).
Actions for conversion or detention can be brought in respect of infringing copies or for devices used (or intended to be used) for making them.
For moral rights actions, available remedies include injunctions, damages, declarations of infringement, orders for apology, and orders that any false attribution of authorship or derogatory treatment of the work be removed or reversed.
Registered designs are administered by IP Australia. Information on the application procedure is available at
There is no opposition process to a registered design application. Before infringement actions can be brought, the design must be examined. Any person can request that the Registrar examines a registered design, and provide relevant material.
A revocation action can also be brought by any person once the design is examined, on the following grounds:
Failure to meet the newness or distinctiveness requirements.
One of the registered owners is not entitled, or an entitled person was not included as an owner in the registration.
Registration was obtained by fraud, false suggestion or misrepresentation.
Design is a corresponding design to an artistic work, and copyright in the artistic work has ceased.
It is an infringement in relation to a product which embodies a design identical to, or substantially similar in overall impression to, the registered design, to:
Make, sell, hire, or otherwise dispose of (or offer to do any of these acts).
Use in any way for the purposes of any trade or business.
Import for commercial purposes.
It is also an infringement to keep such a product for the purpose of doing the above acts.
An invalidity cross-claim can be brought.
Importation is allowed of items that were made with the licence or authority of the registered owner.
A defence is available where the applicable product is a part of a complex item, and the infringing item is used to repair that item to restore its overall appearance.
There is no separate protection available for unregistered designs.
There are copyright/design overlap provisions which limit copyright protection available in respect of artistic works (other than works of artistic craftsmanship, buildings and models for buildings) where a corresponding design that includes the work in 3D form has been ''industrially applied'' and sold, let for hire, or offered for sale or hire. This means that unregistered designs can be effectively left unprotected by law.
Actions can sometimes be brought on the grounds of passing-off or contravention of the Australian Consumer Law.
Trade secrets and confidential information
Richard Hamer, Partner
Professional qualifications. Admitted in Victoria (1983), now Australia; BSc Monash University (chemistry/genetics), LLB Melbourne University.
Areas of practice. Intellectual property (particularly patent litigation and licensing in the pharmaceutical and chemical fields) and regulatory work.
Professional associations/memberships. AIPPI, Intellectual Property Society of Australia & New Zealand, AIPLA, LES (President LES Australia & New Zealand 1998-99, Law Council of Australia (Chair IP committee 2013-15).