All questions

Intellectual property

i Brand search

IP Australia (the Australian government agency responsible for the administration of Australia's intellectual property) maintains databases of all registered trademarks, designs, patents and plant breeders' rights. These databases can assist in determining whether the use of a new brand name, logo, design or patent could infringe another party's rights. These searchable databases are available at www.ipaustralia.gov.au.

However, IP Australia's databases only contain information if registration of an intellectual property right has been sought. As a result, it may difficult to ascertain whether a third party has any unregistered intellectual property rights, particularly in the case of prior use of unregistered trademarks or copyright. Searches of the Australian Securities and Investment Commission's databases of registered company and business names, domain name searches and general internet searches can assist in locating third parties that may have unregistered intellectual property rights, particularly in relation to trademarks.

ii Brand protection

Applications to register an interest in intellectual property must be made through IP Australia. The registration process differs depending on the particular right you are trying to obtain. Generally, applications will be subject to an examination by IP Australia to determine whether the registration should be accepted. Third parties will have an option to oppose the applications before they are registered.

More detailed information regarding each particular registration process is available at www.ipaustralia.gov.au.

In Australia, there is no system of registration for copyright. If the material satisfies the statute, copyright protection will exist automatically.

iii Enforcement

Australia does not have a regulatory body that enforces a party's intellectual property rights. It is the responsibility of the party with an interest in the intellectual property to enforce its rights, usually by way of court proceedings. A registered intellectual property interest generally gives the registered owner the right to prevent other people from using the intellectual property, or to obtain relief if the intellectual property is infringed. The relief may consist of monetary compensation or the right to seek an injunction whereby the court orders the party to immediately cease its infringing behaviour.

Additionally, both registered and non-registered intellectual property rights may be indirectly enforced with the application of the tort of passing off and the statutory prohibition on corporations engaging in misleading and deceptive conduct.

iv Data protection, cybercrime, social media and e-commerce

In Australia there is no legislation regarding cybercrime, social media and e-commerce that specifically pertains to franchises. However, there is legislation that applies to most organisations in a more general sense.

The Privacy Act 1988 (the Privacy Act) and the Australian Privacy Principles (APPs) significantly affect the way organisations collect, store, use, disclose and dispose of personal information about individuals. For example, organisations may be held accountable for sending personal information offshore if the recipient subsequently breaches the APPs. Additionally, the APPs limit the right to use personal information for direct marketing purposes in certain circumstances. There is a higher standard of protection afforded to sensitive information, which includes information about a person's racial or ethnic origin, religious or philosophical beliefs, political opinions or membership of a political party or trade association or trade union, sexual practices or preferences, criminal record, health information (including predictive data) and biometric data.

Recent amendments to the Privacy Act mean that from February 2018, all entities regulated under the Privacy Act are required to notify affected individuals and the Privacy Commissioner when a data breach is likely to result in serious harm to individuals whose personal information is involved in the breach. In the event of a data breach, entities must conduct an expeditious assessment (within 30 days) to determine the likelihood of serious harm being caused to individuals. Serious harm to an individual may include serious physical, psychological, emotional, financial or reputational harm. If serious harm is found to be likely, entities must notify both the individuals affected and the Privacy Commissioner.

The Privacy Commissioner's powers include additional investigation and audit powers and the power to make enforceable undertakings, develop and register binding privacy codes and commence proceedings in the Federal Court or the Federal Circuit Court. Penalties of up to A$2.1 million can be ordered for serious or repeated breaches of the APPs by corporations and up to A$420,000 for individuals. E-commerce has become a vital component of most businesses in Australia and as a result cybercrime has become a pertinent issue. The APPs require organisations to take reasonable steps to protect data from theft, misuse, interference, loss, unauthorised access, modification or disclosure.

Currently there is very little legislation that deals directly with e-commerce. However, the Electronic Transactions Act 1999 (Cth) does contain provisions that promote business and community confidence in the use of electronic transactions. The Act states that a transaction is not invalid because it takes place wholly or partly by electronic communications. The Act sets out when the requirements for a signature are satisfied in relation to electronic communications. Recent cases have applied traditional common law principles to the making of contracts online but have highlighted the need for clear processes to ensure certainty about terms being incorporated into online contracts, and also the need for clear statements given by the accepting party as to their agreement. Parties are likely to be bound to terms in online contracts by clicking 'I agree' where such terms were visible and accessible to the accepting party prior to acceptance.

Coupled with the growth of e-commerce trading is organisations' utilisation of social media communication channels. Australian laws will no doubt continue to evolve to govern the commercial use of social media outlets. The courts have recently ruled that companies may be held responsible for third-party comments posted on their social media pages if the comments contravene Australian consumer laws or advertising standards. As a result, organisations are required to monitor their social media pages frequently to actively remove any defamatory, misleading or abusive comments posted by third parties.