How to protect your intellectual property
28 February 2020
Intellectual property (IP), including brands and new varieties, is important to the success of many in the citrus industry. However, IP protection is not automatic; you will need to take active steps if you wish to protect your IP in Australia and overseas markets.
A trade mark is a sign, usually a brand name or logo, that distinguishes your goods or services from others. If you are marketing and selling a branded product, consider protecting that brand by registering a trade mark. A registered trade mark provides you with exclusive rights to use, licence or sell your mark.
In order to be registered, a trade mark must be distinctive, not purely descriptive. “Vitor” is distinctive, but “Aussie Navel Oranges” is not. A trade mark application must also not conflict with existing trade mark registrations. Read more on trade marks at https://www.ipaustralia.gov.au/trade-marks
Trade marks are territorial rights, meaning an Australian trade mark only provides protection in Australia. In order to protect your trade marks in overseas markets, you will need to file applications for those markets.
Many overseas markets, including China, have first to file trade mark systems. Under these systems, the first person to apply for a trade mark is first in the queue, even if another person has been using it in China beforehand.
Australian citrus companies have been victim to bad faith trade mark filings, where an unrelated party registers the Australian trade mark in order to seek a payout, or exploit the Australian brand’s reputation for their own product.
The best way to avoid this is to file trade mark applications in markets of interest as early as possible. Read more on trade marks in China at https://www.ipaustralia.gov.au/understanding-ip/taking-your-ip-global/ip-protection-china/applying-trade-mark-china.
A registered Australian trade marks attorney can help you register your trade marks in Australia and overseas markets.
Plant breeder’s rights
If you have developed a new citrus variety, consider whether you should apply for a plant breeder’s right (PBR).
A PBR gives exclusive commercial rights to a new plant variety. You must file the application within 12 months from the first day that you advertised or sold your new variety.
You will then need to demonstrate through a growing trial that your variety is distinctive, uniform and stable. Read more on PBR at https://www.ipaustralia.gov.au/plant-breeders-rights
PBR are territorial rights, meaning an Australian PBR only provides protection in Australia. If you want to protect your new variety in overseas markets, you will need to apply to register your PBR in those markets. Read more on PBR protection in China at https://www.ipaustralia.gov.au/understanding-ip/taking-your-ip-global/ip-protection-china/plant-variety-rights
Some Australian premium fruit exporters have found their products targeted by counterfeiters.
This can hurt revenue, and damage brand reputation. Commercial anti-counterfeiting measures can be used to help distinguish real product from fakes, and build trust with consumers and local partners.
Measures include verification and traceability technologies, visible features such as holograms, and hidden features such as microdots or UV fluorescent print.
Read more about Reid Fruits’ experience here: https://www.austrade.gov.au/news/success-stories/reid-fruits-deploys-laava-s-digital-fingerprints-to-outsmart-counterfeiters
This article was prepared by David Bennett of IP Australia, the government agency responsible for administering Australia’s IP system. David is IP Australia’s first Intellectual Property Counsellor to China, based at the Australian Embassy, Beijing. He provides Australians with practical guidance on how to protect their IP in China, and support Australia’s engagement with China on IP policy issues.
For more information on IP protection, see IP Australia’s website at https://www.ipaustralia.gov.au/, and IP Australia’s China-specific IP resources at https://www.ipaustralia.gov.au/china.