Intellectual Property Lawyer: A Practical Guide to Protecting Your Business Assets in Australia

Intellectual property can be an important part of the value of a business.

It can include trade marks, logos, written material, software, confidential information and other rights connected with the products, services and branding of the business.

For Australian business owners, the legal position can become complicated where ownership is unclear, contractors have created important material, or a business name has been registered without considering trade mark protection.

This guide explains some of the main areas where an intellectual property lawyer can assist Australian businesses.

Table of Contents

• What Does an Intellectual Property Lawyer Do?
• Trade Marks and Brand Protection
• Business Names vs Trade Marks
• Contractors and Intellectual Property Ownership
• IP in Commercial Contracts
• IP in Business Sales and Purchases
• Intellectual Property in Franchising

What Does an Intellectual Property Lawyer Do?

An intellectual property lawyer can advise businesses on legal rights relating to intangible assets and how those rights should be documented, registered, transferred or licensed.

Depending on the business, this may include:

• trade marks;
• logos and branding;
• copyright material;
• software and digital assets;
• confidential information;
• licensing arrangements;
• contractor-created material;
• intellectual property provisions in commercial contracts; and
• intellectual property transferred as part of a business sale.

The legal work required will depend on the type of intellectual property involved and how the business intends to use it.

Trade Marks and Brand Protection

A registered trade mark can protect elements of a brand such as a name, logo, phrase or other sign used to distinguish goods or services.

Trade marks are administered by IP Australia.

A registered trade mark can provide exclusive rights to use the registered trade mark in Australia in relation to the goods and services covered by the registration.

Trade mark protection is therefore different from simply registering a business name with ASIC.

Before Applying for a Trade Mark

Before filing an application, it is useful to consider:

• who should own the trade mark;
• the exact word, logo or other sign to be protected;
• the relevant goods and services;
• existing registered or pending trade marks;
• how the brand is currently being used; and
• how the business may use the brand in the future.

IP Australia provides a searchable trade mark database that can assist with checking existing applications and registrations.

You can read more about our trade mark and intellectual property services.

How Long Does a Registered Trade Mark Last?

An Australian trade mark registration generally provides protection for 10 years from the filing date.

The registration can be renewed every 10 years, and there is no limit on the number of renewals.

Business Names vs Trade Marks

Registering a business name with ASIC and registering a trade mark are different legal processes.

A business name registration allows a business to operate under that name. ASIC will generally not register another business name that is identical or nearly identical under its registration rules.

However, registering a business name does not give the holder exclusive proprietary rights to use the name as a brand.

A registered trade mark can provide exclusive rights in relation to the registered mark and the relevant goods or services.

This means a business may need both a registered business name and a registered trade mark, depending on how the name is being used and the level of protection sought.

An ABN Is Not a Trade Mark

An Australian Business Number identifies a business for government and taxation purposes.

It does not create intellectual property rights in a business name, logo or brand.

Similarly, registering a business name with ASIC does not mean that the name is automatically available for use from a trade mark perspective.

Businesses should consider existing trade mark rights before adopting or investing heavily in a new brand.

Contractors and Intellectual Property Ownership

A common issue for businesses arises when external contractors create important material such as:

• logos;
• websites;
• software;
• designs;
• written content;
• photographs; or
• other creative material.

Paying a contractor to create material does not necessarily mean the business automatically owns the intellectual property in that work.

IP Australia notes that intellectual property created by a contractor will generally belong to the contractor unless the contract provides otherwise.

For that reason, contractor agreements should clearly address matters such as:

• who owns intellectual property created under the engagement;
• whether ownership is assigned to the business;
• when any assignment takes effect;
• whether the contractor retains any licence or usage rights;
• the business’s right to modify or adapt the material;
• confidentiality obligations; and
• the return or deletion of confidential material when the engagement ends.

The appropriate provisions will depend on the nature of the work and the rights involved.

IP in Commercial Contracts

Intellectual property issues can arise in many commercial agreements, even where IP is not the main subject of the contract.

For example, a services agreement might need to specify:

• ownership of pre-existing intellectual property;
• ownership of new material created during the engagement;
• licences permitting one party to use the other party’s intellectual property;
• restrictions on use;
• confidentiality obligations; and
• what happens to intellectual property rights when the agreement ends.

These issues are particularly relevant for businesses using developers, designers, consultants, marketing agencies and other external service providers.

See our business contract services for more information.

IP in Business Sales and Purchases

Intellectual property can form part of the assets being transferred when a business is bought or sold.

This may include:

• registered trade marks;
• business names;
• domain names;
• logos;
• websites;
• software;
• copyright material;
• confidential information; and
• licences to use third-party intellectual property.

As part of a transaction, the parties should identify who legally owns the relevant intellectual property and what steps are required to transfer or licence it.

For example, a registered trade mark may need to be formally assigned to the purchaser and the ownership details updated with IP Australia.

A buyer may also want to understand whether important intellectual property was created by employees, contractors or third parties and whether the business has the necessary ownership or licence rights.

You can read more about our business sales and purchases services.

Intellectual Property in Franchising

Intellectual property is often central to a franchise system because franchisees may be permitted to use the franchisor’s trade marks, branding, systems and other intellectual property.

The current Australian Franchising Code is contained in the Competition and Consumer (Industry Codes—Franchising) Regulations 2024.

The Disclosure Document requirements include information about intellectual property relevant to the franchise system.

Depending on the franchise, this can include information about trade marks and other intellectual property used in connection with the franchised business.

The franchise agreement itself will commonly contain provisions dealing with:

• the franchisee’s permitted use of the franchisor’s intellectual property;
• brand standards;
• restrictions on use;
• ownership;
• confidential information; and
• what happens to the franchisee’s rights to use the intellectual property when the agreement ends.

See our franchise legal services for more information.

How Rise Legal Can Help

Rise Legal assists Australian businesses with a range of commercial intellectual property matters.

Our work can include:

• trade mark applications;
• trade mark ownership and transfers;
• intellectual property clauses in business contracts;
• contractor and service agreements;
• licensing arrangements;
• intellectual property issues in business sales and purchases;
• franchise documentation involving intellectual property; and
• other commercial arrangements involving business IP.

We provide fixed-fee proposals for defined legal work so the scope and legal fees are agreed before work begins.

Rise Legal does not undertake disputes or litigation.

Contact Rise Legal to request a fixed-fee proposal for your intellectual property matter.

Frequently Asked Questions

What is the difference between a trade mark and a business name?

A business name is the name under which a business operates and may need to be registered with ASIC.

A registered trade mark is an intellectual property right administered by IP Australia and can provide exclusive rights to use the registered mark in Australia in relation to the goods and services covered by the registration.

Business name registration does not itself create those trade mark rights.

Do I own intellectual property if I paid a contractor to create it?

Not necessarily.

IP Australia states that intellectual property created by a contractor will generally belong to the contractor unless the contract provides otherwise.

A written contractor agreement should therefore clearly deal with ownership, assignment and licensing of relevant intellectual property.

How long does an Australian trade mark registration last?

A trade mark registration generally lasts for 10 years from the filing date.

It can be renewed for further 10-year periods, with no limit on the number of renewals.

Can intellectual property be transferred when a business is sold?

Yes, intellectual property rights can form part of a business sale.

The relevant sale agreement should identify the intellectual property being transferred and any assignments, registrations, consents or licences required to complete that transfer.

Can Rise Legal help if someone is already using my brand?

Rise Legal can advise on commercial intellectual property matters such as trade mark registration, ownership and contractual arrangements.

Rise Legal does not undertake disputes or litigation. If the matter has become a dispute or requires enforcement proceedings, separate dispute or litigation advice may be required.

Does registering a business name protect my brand?

Registering a business name provides a right to operate under that registered name and prevents registration of an identical or nearly identical business name under ASIC’s registration rules.

It does not provide the same proprietary rights as a registered trade mark.

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Disclaimer

This article provides general information only and does not constitute legal advice. It does not take into account your specific circumstances. Laws and regulatory requirements may change, so you should obtain legal advice relevant to your situation before acting on the information contained in this article. Liability limited by a scheme approved under professional standards legislation.

 

 

 

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