The value of your Intellectual Property (“IP”) could be worth more to you than your real property, business equipment or stock. You need to consider how you can safeguard the ownership of your IP and regularly monitor and control any threats to your ownership.

Trademarks

IP may be the most valuable asset in your business. Because you have registered your company or business names with ASIC does not mean you own those names. The only way to legally own company and business names is to register them as trade marks.

If you have used an unregistered brand for years without registering it as a trade mark, someone else could register it as a trade mark and get legal ownership of the brand. If this happened, you would need to institute court proceedings to assert your prior rights which can be costly and the outcome could be uncertain.

Also, where a brand is registered as a trade mark, ownership will only apply to the individual classes specified and may not be the classes you are using for the mark, so you need to monitor the extent of your use and make the appropriate adjustments.

Trade marks must be owned by the entity with effective control of them. If the mark was registered in the name of an IP holding company with no effective control over the entity using the marks, those marks could be removed from the register for non-use.

Copyright

As copyright is not registered, it is important to keep accurate records of how and when the copyright work was created. If an employee is the author of the work, the copyright would vest in the employer. But if the work is created by a contractor where you contract for advertising material, software systems for your computer network or creation of your website, the copyright will vest in the contractor, unless there is an agreement to assign it to your business. This agreement should be sought when the work is commissioned.

Moral rights in copyright, including rights of attribution and non-denigration are personal to the author of the work, even if that author is your employee. Moral rights cannot be assigned. They will remain attached to the work, even if your company owns the copyright. It is prudent to include a term in your employee’s employment agreement that the employee will not assert moral rights over works created for you while employed.

Patents and designs

With inventions and designs, you should maintain strict secrecy provisions before filing patent and design applications, so the risk of losing ownership is avoided. Also check who owns the inventions or designs so ownership is not lost if your business entity ceases trading or becomes deregistered.

This article was prepared by Margaret Miller of Bell Legal Group. Margaret is a Partner in our Dispute Resolution, Insolvency and Litigation team. You can contact her on 07 5597 3366 or by sending an email to mmiller@belllegal.com.au