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LEGAL PROTECTING INTELLECTUAL PROPERTY DURING COVID-19 In the Covid-19 context, safeguarding your intellectual property is more important than ever. TBy Gladwin Legal partner Rosalyn Gladwin. he effects of Covid-19 have been compared to the 2007 global financial crisis and will be felt across many industries for the foreseeable future. During this time, many businesses will look to evaluate their expenses and budgets to determine ways to mitigate expenses. IP as a bare necessity Intellectual property (IP) is often the backbone of many of companies and enables them to deter and prevent infringement of their brand and products. Additionally, companies can utilise their IP as an asset to generate cashflow through licensing agreements. With the transition of many companies into the online marketplace during the pandemic, and the expansion into different markets and countries, the result has been many new opportunities, but also more risk if a business hasn’t adequately protected its IP. Your IP and how to protect it Trademarks Among the more recognisable forms of IP are trademarks and logos, which often will include the name of a business. The features that make your brand unique should be registered in relation to the goods and services that your business provides (with some room for expansion). Before adopting a trademark, it’s essential to conduct research to ensure that no one else is already using the same or a similar name. Without this step, a business is at risk of infringing an earlier registered mark and could be liable for damages, so may need to rebrand, which is much more costly than conducting an initial search. Other IP Other forms of IP include new inventions that can be protected by design and patent registration. Even trade secrets and confidential information are forms of IP that you should seek to protect via your agreements with third parties. In Australia, we have some common law protections that are automatically granted to confidential information. However, this may not be the case in other countries, which is why an agreement will help to set the ground rules for discussion and disclosure of your confidential information. Use it or lose it Be wary of taking an opportunistic route to trademarking. That is, registering a trademark without the intention of using it. The trademarks system in many countries has a requirement that the business use the trademark. In Australia, a trademark that has been unused for three years can be removed on the basis of non-use. The burden of proof to demonstrate use of a trademark is not particularly onerous. Additionally, businesses should be wary of trademark ‘squatters’ and opportunistic trademarkers, who may hinder the trademarking process if businesses wait too long to lodge an application for registration. If you have, for example, already launched your business and brand, squatters could apply for your trademark in anticipation of it being bought back at a later date for a premium price. ‘First use’: is this enough? In Australia and some other countries, a ‘first to use’ trademark system applies. This means that if you’ve been using a particular brand name and logo, and another business has registered it first, you may be able to oppose that trademark application on the grounds that you were the first to use it in Australia. This process can involve providing evidence of your use, which can be a costly and lengthy process. However, rather than having to file evidence of use, it’s always more cost effective to register your trademark from day one. Look globally While your business may be based in Australia, the offering of goods and services internationally may require that you register your trademarks with the trademarks office in each country or through a WIPO (World Intellectual Property Organisation) registration. Additionally, if you’re thinking of expanding internationally, it’s important to consider that a larger international business with a stronger reputation may have a trademark already in existence. Next steps Before you launch head-first (or wallet first) into a new brand, do your due diligence and register your mark. It’s like an insurance policy to protect potentially your most valuable asset. About Rosalyn Gladwin Rosalyn is the principal of Gladwin Legal, being an expert in all facets of retail law, including commercial and corporate law and retail leasing. About Gladwin Legal Gladwin Legal is the law firm for retailers. As experts in retail law, the firm understands the legal matters that challenge retailers daily. Its areas of expertise include retail and commercial leasing, supply and distribution agreements, intellectual property, ecommerce and IT agreements, sale of business and competitions and trade promotions. Get in touch at gladwinlegal.com.au. 62 RETAIL WORLD OCT, 2020