BSBIPR403A - Protect and use brands and business identity
Nominal hours
40
Unit descriptor
This unit describes the performance outcomes, skills and knowledge required to protect and use brands and other business identities as trade marks. It covers identifying the need for trade mark protection, lodging a successful application, monitoring and protecting the trade mark and using the trade mark commercially.
No licencing, legislative, regulatory or certification requirements apply to this unit at the time of endorsement.
Employability skills
This unit contains employability skills.
Prerequisite units
There a no prerequisite units.
Co-requisite units
There are no co-requisite units.
Application of the unit
This unit applies to individuals who are involved in work with marketable applications across a variety of work environments.
Elements and Performance Criteria
Elements describe the essential outcomes of a unit competency. Performance criteria describes the performance needed to demonstrate achievement of the element. Where bold italicised text is used, further information is detailed in the required skills and knowledge section and the range statement. Assessment of performance is to be consistent with the evidence guide.
Element 1: Identify the need for protection of brands and business identity
Performance Criteria:
- Research what constitutes a registrable trade mark in Australia
- Identify legislative requirements governing trade mark protection.
- Identify other forms of trade mark protection.
- Identify existing or potential trade marks within organisation or scope.
- Explore the benefit, costs and risks of trade mark registration and other forms of trade mark protection.
- Make recommendations to develop and use trade marks with commercialisation potential.
Element 2: Identify and initiate application process for trade mark protection.
Performance Criteria:
- Identify sources of information and advice regarding protection of brands and business identity.
- Evaluate the role of IP professionals in the trade mark application process.
- Search databases of existing registered and pending trade marks and investigate any use of unregistered trade marks to ensure the proposed trade mark does not infringe on another party's existing trade mark.
- Identify processes required for lodging a successful trade mark application.
- Identify the process for international trade mark registration
- Participate in a trade mark application and provide relevant information to the IP professional for trade mark application, if applicable.
Element 3: Monitor market and protect and use trade mark.
Performance Criteria:
- Identify or create and implement organisational policies and procedures to protect and use the trade mark correctly.
- Identify and establish processes to use own and other's trade marks for business growth.
- Monitor the market for possible patent infringements.
- Pursue appropriate measures to protect trade marks against infringement, if required, using appropriate professional advice.
- Ensure all employees are aware of the importance to the organisation of the protection and proper use of trade marks, and implement training if required.
- Identify or create and implement policies and procedures to prevent infringement of other's trade marks.
Required Skills and Knowledge
This section describes the skills and knowledge required for this unit.
Required skills
- Research skills to identify relevant areas of trade mark law and the common law to protect organisation's IP.
- Analytical skills to identify commercial potential of trade marks and brands.
- Literacy skills to interpret and implement IP Australia's trade mark application procedures.
- Problem solving skills to act on potential infringement issues.
Required knowledge
- Different ways to protect trade marks.
- Application guidelines, including definitions of registrable trade marks.
- Application formats and procedures.
- Overview of relevant legislation concerning trade marks.
- Sources of advice on trade mark protection.
Range Statement
The range statement relates to the unit of the competency as a whole.
Registrable trade marks may include:
- letters, words, names, signatures, phrases, numerals, sounds, smells, shapes, logos, pictures, aspects of packaging, or any combination of these that can be represented graphically.
A trade mark can be difficult to register if it is:
- a generic word
- a term that other traders may need to use in relation to the same kinds of goods or services
- identical with or deceptively similar to a pending or registered trade mark
- likely to mislead the public about the nature of the goods or services
- scandalous or against the law
Note: registration of a business, company or domain name does not in itself give proprietary rights.
Legislative requirements may include:
- the Trade Marks Act 1995
- Section 52 of the Trade Practices Act 1974.
Other forms of trade mark protection include:
- Common Law by the passing off action
- consumer protection provisions of Trade Practices act (Commonwealth) and state Fair Trading Acts
- creating and proliferating confidentiality agreements within organisation or among people who may know about the trade mark before application for registration is lodged so as to keep the trade mark a secret.
Benefits include:
- trader protection, for example protecting reputation of traders, facilitate advertising, encouraging brand loyalty, building brand value, persuading consumers to try new products under established brand
- consumer protection, for example to facilitate choice between competing goods and services.
Patent information refers to:
- the technical and legal information contained in a patent document.
Commercialisation potential may include:
- considering the trade mark as an asset that can be bought, sold or licensed
- utilisation of the trade mark as a marketing tool and the basis for building a brand
Sources of information or advice may include:
- IP Australia
- the Attorney-General's Department
- the Australian Copyright Council
- State and Commonwealth government agencies
- lawyers specialising in IP
- Trade Mark Attorney and Patent Attorneys
- Accountants
- Business Advisors
- Marketing Consultants
- Branding Consultants
- copyright collecting societies, for example CAL, PPCA, MIPI, APRA, AMCOS
- publications
- the internet
- databases such as local and international trade mark data bases.
Searching databases may include using the following:
- IP Australia's trade marks database which lists all the registered and pending trade marks
- the Australian Securities and Investment Commission database, which lists all registered and reserved business names www.asic.gov.au
- any other information source that is relevant to the goods or services provided by the applicant, for example trade directions, Yellow Pages.
Investigating may involve:
- using search engines on the internet
- reveiwing relevant industry journals, articles, advertising and so on.
Note: The purpose is to determine whether competitors have used the proposed trade mark, or similar work, and developed a reputation in the mark.
Processes include:
- completing an approved form prescribed by the Regulations including graphically representing the trade mark on the application
- paying a specified fee
- having the application approved by a trade marks examiner
International trade mark registration includes:
- filing for protection with the trade mark offices of overseas countries
- filing for protection under the Madrid Protocol through IP Australia to seek trade mark registration in a range of countries with a single application.
Monitoring may include:
- observing the activities of competitors
- watching the market for potential trade mark infringements.
Legal measures may include:
- bringing actions against an alleged infringer under:
- the Trade Marks Act 1995
- Section 52 of the Trade Practices Act 1974
- bringing an opposition against it, or seeking removal of other trade marks which may infringe.
Use trade marks correctly includes:
- ensuring that the trade mark is used 'as a trade mark', otherwise it may become vulnerable for removal
- using the mark with the correct notation - ™ or ®
Pay renewal fees may refer to:
- ensuring that the required fees are paid to periodically renew the trade mark registration
- licence fees to ensure the use of another organisation's trade mark.
Evidence Guide
The evidence guide provides advice on assessment and must be read in conjunction with the performance criteria, required skills and knowledge, range statement and the Assessment Guidelines for the Training Package.
Overview of assessment
Critical aspects for assessment and evidence required to demonstrate competency in this unit.
Evidence of the following is essential:
- identification of issues for the use, management and protection of brands and business identity
- implementation of policies and procedures for the management, use and protection of brands and business identity and legitimate use of other trade marks
Context of specific resources for assessment.
Assessment must ensure:
- access to appropriate information on the individual or organisation's brands and business identity requirements and procedures
- access to reliable and appropriate explanatory material and guidelines
- access to appropriate computer resources for establishment and maintenance of policies and procedures
Method of assessment.
A range of assessment methods should be used to assess practical skills and knowledge, such as:
- direct questioning combined with review of a portfolio of evidence
- oral or written questioning to assess knowledge of protection of brands and business identity and its implications for the organisation
- development of action plans for implementation of implementation of policies and procedures to protect brands and business identity, as well as commercialisation of trade marks
- analysis of case studies around trade mark issues with recommendations for action
Guidance information for assessment.
Holistic assessment with other units relevant to the industry sector, workplace and job role is recommended, for example:
- other units from BSB07 including other units relating to IP
- design units
Last Updated: 15/9/2012
