Bringing products and services into Australia for commercial purposes is big business. If you're an Australian business owner looking to import goods from an international manufacturer or an overseas business wanting to export to Australia, you'll need to consider how IP rights will play a part.
Understand Australian IP
While IP rights are similar worldwide, there can be some slight differences from country to country. Before you get started, you should understand how we define and manage IP in Australia. This can help you avoid issues when importing goods and services here.
Do your research
You'll need to understand the role that IP rights play before you import to Australia, otherwise you could accidentally infringe on IP that's already protected here. This can result in:
- The seizure of products by Australian Border Force
- Legal action
- Having to change your products, and loss of any reputation it has gained.
There are a few measures you can take to avoid infringing someone else's IP:
Check if the IP already exists
It's a good idea to search existing IP rights to help determine if your product is too similar to IP that's already protected in Australia. If it is, you run the risk of infringing on someone else's rights.
Before you get started, you should do a comprehensive search for existing:
Having IP rights in other countries doesn't automatically provide protection in Australia. Even if you've secured IP protection overseas, you may still infringe on IP protected in Australia.
Do due diligence
When importing products and services to Australia, you should:
- Determine what type of IP rights could be relevant
- Identify who the true owner of the IP is and who has rights to use it in Australia. Don't assume that the manufacturer who owns the rights overseas has the same rights in Australia.
Be aware of parallel imports
Sometimes known as grey imports or grey goods, parallel imports are legitimate products that have been imported to Australia through unofficial channels.
For example, a clothing company makes its trade marked clothing in Vietnam and sells it in Malaysia and Australia. Sam from Australia buys up the genuine clothing in Malaysia and then resells it in Perth. In principle, Sam is seen as a parallel importer and hasn't infringed the clothing company's Australian trade mark.
Apply for IP in Australia
There are four types of IP rights that you can secure in Australia:
- A trade mark protects your brand
- A patent protects your invention, or how something works
- A design right protects the overall appearance of your product
- A plant breeder's right protects your plant variety.
If IP rights haven't already been secured in Australia, you might want to consider applying for protection here. You can apply for protection through us, or via an international cooperation system.
If you decide to seek protection, it's important that the appropriate person, such as the owner of the IP right, is the one who applies. If requested by the wrong person, the application, registration or grant could be invalid.
You'll need to make sure appropriate commercial arrangements are in place with your suppliers to protect the IP. Amongst other things, you should:
- Make sure you're authorised to use any IP rights in Australia
- Confirm whether the rights granted are exclusive (or if others can also import the products)
- Clarify if you'll need to register any rights and if you'll need to enforce them.
In some cases, such as a franchising agreement, you may need to consider whether Australian Franchising Code of Conduct or other Australian laws apply.
Imported plants that introduce exotic and unwanted weeds, pests and diseases cause havoc on Australia's natural environment, food security and economy. It's essential that we protect our biosecurity. If you're importing plant material then you'll need to ensure it complies with the biosecurity requirements
To register plant breeder’s rights (PBR) for plant varieties developed overseas, you’ll need to follow the Australian application process.
Comparative growing trial
As part of the application process, a comparative growing trial is normally required. However, if your plant variety is already registered overseas, and meets certain conditions, you may be able to skip this step.
The Plant Breeder's Rights Act 1994 (PBR Act) allows distinctness, uniformity and stability (DUS) data produced in other UPOV countries to be used in place of a local comparative growing trial.
To meet these conditions, you'll need to prove:
- The new overseas variety is so clearly distinct from all the Australian varieties of common knowledge that further DUS test growing isn't needed
- The first PBR application relating to the candidate variety has been lodged overseas
- The variety has previously been test-grown in a UPOV member country using official UPOV test guidelines and test procedures
- All the most similar varieties of common knowledge (including those in Australia) have been included in the overseas DUS trial
- Sufficient data and descriptive information is available to publish a detailed description of the variety in the accepted format in the Plant Varieties Journal and to satisfy the requirements of the PBR Act.
If the conditions are met, your nominated qualified person (QP) can proceed with Application Part 2. If you're not sure if your variety meets the conditions, you can reach out to us at email@example.com for help.
Exceptions for overseas data
We don't accept overseas data for some species due to wide genotype and environmental interactions. Your QP will be able to give you advice on this.
If you've already protected your IP overseas and want to secure protection in Australia, you'll need to consider when you go to apply.
If you want to claim a priority date in Australia, you should file here within 6 months of filing a national or regional trade mark application in another country.
You should aim to file in Australia within 12 months of the earliest priority date. If you're applying through the Patent Cooperation Treaty (PCT), you'll need to enter the national phase in Australia within 31 months of the earliest priority date.
You'll have six months to apply for the design right in Australia after filing your design overseas.
Plant breeder's rights
The timeframe to apply for a plant breeder's right (PBR) in Australia depends when the variety was first sold.
- Trees and (some) vines — 6 years of first being sold overseas
- All other plant types — 4 years of first being sold overseas
- All varieties — 1 year of first being sold in Australia.