Intellectual Property Law | Questions and Case Studies

[INTELLECTUAL
PROPERTY LAW]
Case Studies and questions related with the Intellectual property law.
2020
University
Student Credentials

IP Law 1
Introduction to Intellectual Property
There are various types of identifications that make a product memorable or help the
customer realise more about it as in the qualities and negative aspects as well. For instance,
when someone talks about ‘Just Do It!’ people instantly realise or at least make guesses such
that it will relate to the brand NIKE or some sportswear or shoes. This is known as an
Intellectual property. This kind of identification relating to the brand’s image or an
identification method through which one can maintain their product’s or services’ uniqueness
is known as an intellectual property. Intellectual property assists with the conduction of the
business and includes certain intangible assets such as the patent, trademark, formulae,
certain secret processes and also designs1. Intellectual property is something that helps public
to identify the brand and also assists the corporations or firms to establish their image. This
way it works as a mediator amongst the firm or the corporation and the customers.
Copyrights, trademarks, patents as well as other intellectual property provide a way through
which companies and firms can establish themselves in the minds of their customers and
establish their goodwill.
In the below mentioned case study, Jack an entrepreneur created a new product and wants to
get certain trademarks registered so that no one else can use the same phrases or identical
aspect related to his business. Here in this case, he is facing two major issues that shall be
discussed in the Question 1. While the Question 2 includes the affectivity of Intellectual
property laws on the national as well as international level, the challenges that are being faced
in the enforcement and regulation as such and also the role of International regimes in the
regulation of these laws.
1 Australian Government, "Australian Intellectual Property Laws - Austrade", Austrade.Gov.Au (Webpage, 2020)
<https://www.austrade.gov.au/International/Invest/Guide-to-investing/Running-a-business/Understanding-Australian-
business-regulation/Australian-Intellectual-Property-laws>.

IP Law 2
Question 1
Part A
The situation here is that the new product that has been developed by Jake. In order to
preserve the uniqueness that creativity had, Jake wanted to register the trademark related to
the same. In order to do so he has to register his application with IP Australia and if the
agency deems fit, the registration shall be done within four months after verifying all details
and the application’s alignment with the legislation and its provisions2.
Where the first aspect is concerned, the scenario is as such that the parties involved have a
similar name of the product. ASIC or the Australian Securities and Investment Commission is
the agency responsible for the registration of the business names as per a specific Act. This
act is widely known as the Business Names Registration Act 2011 or even known as the
Business Names Act3.
There are no specific laws stating that similar name cannot be registered in Australia, hence,
the claim made by the other entrepreneur, Penny cannot be entertained. Though there can be
on Jack’s end an effort made in order to find a name for his product that is not similar to any
other product in market as such. Though, if the ASIC does not find the name of the product
identical or near to identical as per their own standards, then the registration process for Jack
will not be of any issue and there will be no hindrances as such and the product will get
registered4. In order to be clearer regarding the rules as such relating to the registration of the
name, the rules of the Business Registration Determination, 2015 can be referred to for the
ease5.
2 IP Australia, "Trade Marks | IP Australia", Ipaustralia.Gov.Au (Webpage, 2020) <https://www.ipaustralia.gov.au/trade-
marks>.
3 Business Names Registration Act 2011
4 ASIC, "Disputes About Similar Company Names | ASIC - Australian Securities And Investments
Commission", Asic.Gov.Au (Webpage, 2020) <https://asic.gov.au/about-asic/contact-us/how-to-complain/disputes-about-
similar-company-names/>.
5 Business Names Registration (Availability of Names) Determination 2015

IP Law 3
Cases similar to the given situation have already been decided upon and taken into
consideration, these cases include the instance of Delta Airlines and Delta Faucets, there the
product provided by both the parties is different, then even the similar name can exist.
Similarly, Perth Martial Arts Centre was allowed to be registered with the same name that
other martial arts academy had, Perth Martial Arts Academy was an already registered
Academy, yet the registration procedure for the Martial Arts Centre was agreed upon. There
are various other instances as well where the same is evident, that the thorough verification
process goes on behind the registration of a trademark6.
In the second situation, the matter talks about a certain slogan that needs to be registered by
Jack. When in general registering a slogan, a thorough research needs to be done. Most
common areas that need to be rendered in order to decide whether it already exits or would
suit the requirement of the business are; Australian Trade Mark’s Online Search System as
well as, trade mark image viewer and in fact the trade mark classifications pick list can also
be checked out for that matter as well as the most common way, the Google search is
something that might be handy. Before the application for registering the slogan is sent for
the registration, all of these needs to be analysed and checked for any lacks. The difficulty
here is not that the person who wishes to register the slogan will have to go through all the
registered trademarks, but in fact, it is that he/she will also have to go through the identical
slogans that are quite similar to the ones that one wishes to register.
If one wishes to trademark a slogan for their business, one need to satisfy all the legalities
that slogan registration requires and also has to make sure that the rights of another individual
or the business that person has is infringed in any manner. The slogan here needs to be
distinct from any other slogan that has already been registered and for that matter it needs to
6 Darren Pereira and Georgia Milne, "Same, Same But Different – Why You Can’T Assume Copycat Names Won’T Be
Registered", Holding Redlich (Webpage, 2018) <https://www.holdingredlich.com/same-same-but-different-why-you-can-t-
assume?utm_source=Mondaq&utm_medium=syndication&utm_campaign=LinkedIn-integration>.