Alicia Boardman:

Hello everyone. I'd like to start off today by acknowledging the Aboriginal and Torres Strait Islander people of Australia. We acknowledge the traditional custodians and owners of the lands on which our agency is located and where we conduct our business. We pay our respects to ancestors and elders past, present and emerging, and I would like to extend that respect to any Aboriginal or Torres Strait Islander people present on today's call, and also to the lands on which you are joining us from today.

IP Australia also acknowledges the issues affecting protection and management of Indigenous Knowledge, and it's impact on First Nations people, and recognises the rich contributions that Aboriginal and Torres Strait Islander people and cultures have made to Australia throughout sixty thousand years of continuing law and history as the nations first innovators. Following our 2019 consultations regarding the misuse and misappropriation of IK, we've worked together with Aboriginal and Torres Strait Islander people on options to improve our current IP system.

Our current consultations that we have ongoing at the moment, closing next week, look to listen further to Aboriginal and Torres Strait Islander perspectives and views on the options that we're proposing. Our IK project is currently in the process of investigating ways the IP system can better support Aboriginal and Torres Strait Islander people to benefit from and protect their Indigenous Knowledge. So we're currently consulting on four topics, which you can see up on the screen, and that includes establishing an indigenous advisory panel, enhancing the process for trade marks and designs, looking to declare the source of IK in new innovations and exploring interest in authenticity labeling.

So today we'll be exploring the current system for trade marks and labeling. But it's important to acknowledge upfront that we are listening to our indigenous stakeholders on what more needs to be done to protect Indigenous Knowledge and preserve it for the appropriate cultural authority.

So my name's Alicia Boardman, and I work in the IK project policy team at IP Australia. My team and I welcome questions from you on anything that we cover today and anything that we miss. There is a chat and questions function, that you should be able to see now, and during the webinar please pop in any questions that you have straight into those boxes, and I think to help us keep to time, we will wait until the end of the formal presentation to answer your questions. And any questions that we don't get to, or don't have time to get to, we'll send out additional information to address them but you can also contact us directly, to our project email, which we have included at the end of the webinar for you.

So to start out, what is IP? So intellectual property is all about ideas and their ownership. It's essentially about the rights of creators to make money from their work. IP Australia is responsible for administering the registered IP rights and this includes patents, which protect inventions, trade marks which protect brands, designs which protect the look of a product, and plant breeder’s rights, which protect new plant varieties.

So just to note, IP rights are territorial, so when you register through IP Australia, your right will be limited to Australia. So if you're manufacturing overseas, you might need IP protection in those markets as well. So this means that for every country that you're trading in or you might like to trade in, you'll need to register your IP in that country. And if this is of interest to you, there's a bunch of information on our website about how to launch a business internationally. We do have some assistance in that space.

So they're the registered rights that we look after, but there's also unregistered IP. So this includes copyright and copyright protects the owner’s original expression of an idea, but not the ideas themselves. This can include new drawings, art, literature, music, film, broadcast, even computer programs and copyright's automatic, so you don't have to register for it. Copyright is administered by the Department of Infrastructure, Transport, Regional Development and Communications. There's also trade secrets, so any confidential information including secret formulas, processes and methods that are used in production can be protected by trade secrets. So for example, Coca-Cola have used trade secrets to keep their formula from becoming public for decades.

And there are some other legal mechanisms that you can use in your business to protect your IP, because the registered IP rights don't necessarily holistically protect your IK, so it's important to understand all of these components, and how they apply to your business. So for example, you can use contract law and non-disclosure agreements, they're existing mechanisms you can use to share secret or confidential information like Indigenous Knowledge, and ensure that it isn't disclosed to a third party. If you're bringing in new employees or working with business partners on a collaboration, and you need to share your IK, an NDA could help in that instance.

There are also protocols, which can be useful to establish standards and expectations around respecting your Indigenous Knowledge. And you can also show that you're proactive with your IP, so you might consider having a separate page on your business’s website, an intellectual property page, where you're including a copyright statement, what your IP strategy looks like and this can deter people and make them aware that you're proactive in this space. So that's IP.

And what is IK? So you would all be aware of what Indigenous Knowledge is, but at IP Australia we use Indigenous Knowledge or IK for short, as a term to cover a range of knowledge held and continually developed by Aboriginal and Torres Strait Islander people. So it can be a language, a song, dance, stories, song lines, art and knowledge of plants, science, medicines and agriculture. So IP Australia recognises the right of indigenous people to their own knowledge, with over sixty thousand years of creative tradition, and you might think to use indigenous art and language to incorporate your culture into your brand identity and make it clear to consumers that they are supporting a First Nations business.

So during your brand development process, you might come up with a word or an image which you will use to distinguish your business from those of competitors that are selling or trading in similar products or services, and this can be protected as a trade mark. That's just one way, but this is what we're focusing on today. So a trade mark identifies a particular goods or services of a trader as distinct from those of other traders. It can be a logo, a word, letters, numbers. It can even be a colour, such as Cadbury purple. It can be a phrase or a slogan, a sound like McDonald's [singing], or a scent even, a shape or an aspect of packaging. It can be any combination of these.

For trade marks, registration lasts 10 years but it can actually be renewed indefinitely, and you can identify when companies are identifying elements of their branding as a trade mark. And this can be done in two ways, so you can use the TM symbol which you can see on the left, and this indicates that you're using something as a trade mark but you haven't registered it yet, and the R symbol is the only way to show that you actually have a registered trade mark.

So, why register? It is not compulsory to register your trade mark, but a registered trade mark gives its owner a relatively easy and cost efficient legal action against infringers using the same or similar trade mark in relation to products that are similar to yours. It's property that can be easily bought, sold and licensed, and your trade mark will be on the public record, so third parties who search the register are more likely to be deterred from adopting your trade mark or something that's similar to it.

So we have Paul Newman here on the screen, and this is a quote from our Dream Shield, a guide to protecting intellectual property for Aboriginal and Torres Strait Islander people, which is available on our website. It includes information on all of the IP rights, so if you're interested, definitely check it out. But Paul runs a business that helps people find other indigenous businesses more easily, and Paul recommends having a registered trade mark as it makes good business sense. What does he mean by good business sense?

Well, there can be huge cost implications for failing to protect the name of your business. If the business is infringing the rights of somebody else, they can take court action, you might have legal fees, and an award of damages could significantly impact your business. Rebranding is also very expensive to do, especially if you've built up a reputation and a client base which are attached to the name. There's also valuation to consider, so if you ever got to a point where you wanted to sell the business, the value of the business could potentially be lower if you do not have protection in place. And this is because a purchaser may not be acquiring exclusive rights to the name and the reputation that you've built into it.

And there's also a level of risk in continuing to trade under a name that is not protected, because you can be at risk of infringement or requiring rebranding. And another thing is that investors will ask for registrations, for the aforementioned reasons. So it provides a bit of comfort in the investment process as well. Given that a trade mark application starts at around $200, this is a worthy investment.

So, most people out there, they've got a business name and they'll ask us ‘Am I protected?’ So a trade mark is not a business name. Registering the name of your business is only an administrative requirement, in order to commence trading under that name. It doesn't actually give you any exclusive rights to use the name, or something similar. It doesn't give you any rights to stop someone else from using the name, and lastly it doesn't provide you with any protection from infringing the rights of someone else if a similar name is already in use. So as you can see on the screen, we've got a few different entities up here.

So we've got the business name, which I've already said is it's trading name and usually it's connected to your ABN and it helps your customers find, identify and connect with your business. A company name is very similar, you've also got usually you've registered for a domain name and that's essentially your street address on the internet, it's a way that people will find your business online. Domain names, like your ABN, are a first come, first served basis, and neither of these things are actually connected up with the trade marks register.

So a trade mark is the only thing that will give you exclusive rights, so even though an ABN or a domain name might be available, our registers aren't linked, and they serve different purposes. If someone has a trade mark first, they can take ownership of those assets, so of your business name, ask you to stop using it, and the domain name. So it's really important to check the trade mark register first for anything that's similar to your chosen brand.

So once you've gone through all of these steps and you've decided that you want to apply for a trade mark for your business, it's important to consider where using IK, the cultural owners of the knowledge and expression that you're using in your brand. IK is an asset that belongs to indigenous people, their communities and businesses. Through our extensive conversations with our indigenous stakeholders, what we've heard is that it's important to consult with the relevant cultural authority and obtain free and prior informed consent prior to using the IK.

So we recommend this as best practice, to obtain free prior informed consent, prior to filing an IP application. It can help ensure avoiding or causing cultural harm or offense. And obtaining consent, this sort of starts off a long term partnership with the traditional owners or traditional custodians. So you may want to consider a plan for how benefits will flow to the IK owners over the life of the IP right. And obtaining free prior informed consent can be useful in your branding and reception in the Australian marketplace. It can also put you on the front foot in case any issues arise during the application process with IP Australia.

There are also materials available online, such as protocols, that can provide guidance on how to engage with Aboriginal and Torres Strait Islander people in relation to sharing Indigenous Knowledge. So a couple of examples include the Australia Council for the Arts protocols for visual arts, music, writing, performance and media arts, and the AIATSIS Code of Ethics. There are other examples available online and you should also look out for what's most applicable to your industry or sector.

Another thing to note before you get to applying for your trade mark is to identify any other visual assets in the logo itself, so where the trade mark might include artwork, the copyright in that artwork must also be owned by the trade mark applicant, so a trade mark applicant may therefore need to purchase the copyright in the artwork from its creator or come to some form of agreement before applying to register that artwork as a trade mark. So for more information on copyright, check out the Department of Communications website, or the Australian Copyright Council, which has a load of really easy information that can be applied to business.

So, you've done all this prior to your application and now you've come to IP Australia and you're considering what needs to go on an application form. Who can register a trade mark? So any legally recognised entity can apply to register a trade mark. The owner listed must actually be the entity that's using the trade mark to sell goods and services, so the owner of a trade mark must have legal personality, and what this means is you essentially have to be capable of having legal rights and duties within a certain legal system. So to be eligible, you can be an individual, a company, an incorporated association or more than one of these if there's multiple owners for the trade mark.

The trade mark can also be owned by an unincorporated association, for a collective trade mark. And also a body existing under legislation, so for example a registered charity. You must have an address for service that's in either Australia or New Zealand, and usually the address for service is that of the applicant themselves, or of an intellectual property attorney or solicitor who might be acting on the applicant’s behalf. The address for service can't be a business name or a trading name, the applicant should be the owner of the business registration and in the case of a trustee, it should be in the name of the trustees rather than of the trust.

So you must use or intend to use the trade mark in relation to your goods and services. If the trade mark is to be used by a corporate entity that is about to be formed, you can assign a trade mark to the new body once it has been formed. Some examples that we have up here include individuals, and they've got the full name of the applicant which is required, not just J Smith, joint owners, again we need the full name, the company, we also need the full name and the identifiers, proprietary limited or whatever is most relevant to your business, and there's an example we have of the trustees for a trust as well.

So when you've got your ownership down, you're uploading your logo, the representation needs to be clear so that all aspects of your trade mark can be identified. So on the slide we have the example of Vegemite, the image on the left wouldn’t be acceptable but the image on the right would. So that's just a really quick tip on ways to make sure you're fast tracking your application.

Classes of goods and services, this is a really important one. So when you apply to register a trade mark, you must provide a description of the goods and services you intend to use the trade mark for. Goods and services need to be selected from one or more of the 45 classes. So the class system is really just an administrative thing, what you want to be focusing on is the actual goods or services that you're selecting in the classes, so ways to figure this out really quickly, just some key questions to ask yourself is how do you make money, what is it that you make money for? What industry is your business in? What is it known for? Essentially, what do people pay you for?

So we can see on the example on the screen there's skin lotions in a number of different classes, and you'll find that this happens with a lot of different goods, so just make sure that you're selecting things that you actually need protection for. IP Australia's also launched Trade Mark Assist, and this can help you with figuring out what goods and services to apply for and we do also have some further videos on this particular aspect on our website, if you need more information around this.

So we've done all the administrative things, and now we're at the fun part, so actually choosing your unique brand. So IP Australia does a number of checks and we look against some measures that are required by us from the legislation to see whether your trade mark will be registrable. And we're just going to go through a few of these key questions and things that we look at, to help you figure out whether your brand is meeting these requirements. So does my trade mark describe my goods or services? What we do is we check to see whether your trade mark is unique and distinctive. A trade mark can't be descriptive because another trader may have a genuine desire to use the words to explain to customers what their goods and services are, so this is a way of ensuring that no word, for example, is registered to one person and they gain a monopoly over that word, which then disadvantages all traders in that industry.

We also look at whether your trade mark is similar to others on the register. So this includes trade marks that are not just the same, but also similar. So it's important to look out for other images of a similar subject or design. You'll also need to look at spelling variations and things that sound the same. So before you apply, I'd recommend that you have a quick search of Google and the trade marks register to see if your trade mark is already being used before you apply.

We also consider offensiveness, so when assessing trade marks, particularly that contain Indigenous Knowledge subject matter, we consider whether the material would be likely to offend and that includes material that has particular religious, spiritual or cultural significance to indigenous people, whether it might be sacred or secret, and if it's derogatory or otherwise promotes intolerance, racism or violence. So for example there could be associating spiritual being with goods such as alcohol.

And the last thing I'm just going to mention today is whether a trade mark might be misleading. So if a trade mark incorporates claims, such as for example ‘Aboriginal designed’ in the trade mark, we might ask for more information as it could be misleading to consumers. They might be misled into thinking that the goods or services bearing the applicant’s mark come from a source with an indigenous connection. So we might just ask a few extra questions around whether that claim can be upheld.

I'm not sure if you guys have heard of the Tjanpi Desert Weavers but I'm just going to have a little chat about this example now, because I think it's a really great example of choosing a unique brand and happy for you to pop into the questions box if you have. Because it's a great initiative. So the NPY Women's Council have started up a social enterprise to work with women in the remote central and western desert regions, and they earn an income from contemporary fibre art. So they've registered a trade mark which includes an image of a stylised basket, which is really unique, and they've combined that with the words Tjanpi Desert Weavers. So Tjanpi means desert grasses, in the Pitjantjatjara language, and this translation, with the acknowledgement of the specific language group, has been added to the trade mark registration.

So the business actually represents over 400 women artists, from 26 remote communities on the NPY lands, and I think it's just a great example of how trade marks can incorporate IK in a respectful way, and be a unique brand that consumers can easily associate with goods that support indigenous women actually getting to produce traditional goods on country. So for an example that has been really successful, I really recommend that you check that out.

So they're all the measures that we currently look at, and there are some others, but they're the main ones, and as part of our consultations in the IK project at IP Australia, we're also looking at new measures. So just to track it back a little bit, we often get asked about language or art and when we're talking with our indigenous stakeholder groups, this is often a conversation that we have. Trade marking a language or art is not necessarily taking ownership of that word in all contexts, or the entire art style. So I have a bit of an example here, and I hope this makes sense to everyone.

So Apple Incorporated have a trade mark for the word ‘apple’ in connection with computers. But as we've discussed, we couldn't allow a trade mark for the word apple for a fruit marketplace, for example, as it's very descriptive, they need to put apple labels on their apples, and this would disadvantage traders, if they couldn't do that. So even though the trade mark exists, it doesn't stop people from using the word in other contexts, so in our everyday lives. And that's just because a trade mark gives the individual the right to use that word exclusively in connection with their business, and stop other businesses from copying them when trading in similar goods and services.

I will acknowledge though that the use of indigenous languages in any context has cultural considerations, especially when language is used in commercial context, and the way that indigenous people use and talk about their languages is very different to the way that we might use the English language. And this issue is really the crux of why we're looking at new measures to specifically address the unique cultural circumstances of use of Traditional Knowledge and expressions of culture, and ways we can enhance protection in the current IP rights system.

So currently at IP Australia we have indigenous staff identifying and examining marks which contain IK and looking at all of those questions that we just talked through, and we can pick up some inappropriate uses of IK, but we're really looking to strengthen these measures. We're currently consulting with people to help ensure that the right people are using IK in trade marks and we are looking at new checks that we might be able to do. So we're looking at introducing consent as a requirement, we're also looking at whether we need to ask questions about whether the use of the IK in the trade mark might be disrespectful or hurtful to the owners of that IK. And we're also looking at whether people are concerned that where indigenous art and language is being used in a trade mark, to make a business look indigenous, whether we should be asking to double check that that business is actually indigenous.

So I just ask you a couple of questions about which new measure does this group think would be the most useful to introduce? So you've got a few options up there on the screen, so whether you think consent is the most important, the offensiveness check or whether we're looking at deception around consumers. And so the other thing that we're looking at introducing as well to help us with those questions is an indigenous advisory panel. This panel could provide an independent voice for First Nations people on the IP system and ensure that the significance of IK is actually recognised. Panel members could be chosen for their community connection, a mix of skills and experience or regional representation and the panel's functions could include advice on strategy and policy to promote IK recognition, they could advise us on IP applications that include IK, or they could have a really active involvement in engaging with First Nations people in the IP system, so they could be that bridge between the applicant, IP Australia, the panel and then Land Councils and peak bodies.

As you can see up on the screen now, sorry for that we're having some technical difficulties, but this is sort of how the panel might work in with the current system and really bring in that unique cultural perspective into IP Australia's work, more so than to date.

So what do you guys think? What should the panel be involved in? Whether that might be the advice on the strategy and the policy, advising on the IP applications or engaging with First Nations people? And really the key difference between these is where we're looking at the panel being representative, as opposed to being a connection point between IP Australia or the applicant and the actual specific cultural owners of a traditional cultural expression.

We've gone through the basics of a trade mark. There are a couple of other types of trade marks within the same system. And these could be really helpful for your business.

We have collective trade marks. So a collective trade mark essentially functions the same as any other trade mark but it can be owned by an association, so the members of that association can use the sign to identify their goods and services, but if you're not a member you can't use the mark. The use of collective trade marks is not required to be subject to rules, and this is the key difference between a collective mark and a certification mark, which we'll get to in a moment.

So as I said, the ownership of the collective marks is very particular, I encourage you to read up on it, but essentially it can only be owned by an association and not an individual or a proprietary company. And to apply for registration of a collective trade mark, the association applying, you can be an incorporated or unincorporated body.

A collective mark can be an easy way to create a label owned by a community group, for example, without the significant investment of time and money that goes into creating rules for a certification mark, and you can end up with a similar result.

So a certification mark is a mark which indicates that the goods or services in connection with which it is used are certified by the owner of the mark, and meet the rules or standards associated with it. A certification trade mark certifies quality, accuracy or some other characteristic of the goods or services that they nominate, and it can also look at the origin of the goods or services, the material they're made from or how they're manufactured. So the example that we have up on the screen here is the Woolmark certification mark, here in Canberra we're all looking for this because it's very cold here, and essentially this is a quality assurance symbol, denoting that the products on which it is applied are made from a 100% new wool, and comply with strict performance specifications set down by the Woolmark company.

But actually during the application process for a certification mark, you apply with IP Australia, you only pay our fee, but actually the rules actually get approved by the ACCC, so there's quite a process with this, but in the end your customers know exactly what quality they're getting when they're buying your goods or taking on your services. So the reason we include these other types of trade marks is because they could be of interest to indigenous businesses or associations because they actually recognise ownership beyond the individual, so it could be Indigenous Knowledge that's owned by a whole community. It could allow Indigenous Knowledge owners and custodians to retain ownership and control over their indigenous names, signs and symbols and these kinds of marks are used quite a lot to raise public awareness and maximise consumer certainty as to the authenticity or quality of the goods and services that are being marketed under the mark.

So this is another topic that we're really exploring, looking at ways we can support indigenous businesses through certification marks or potentially some other similar labeling scheme, to address authenticity concerns and for those of you involved in the indigenous art market, you may well be aware of the issues around fake art. So this is where this conversation is starting from, and we do already have the ability for businesses to go and register the certification mark, but it's a worthy conversation to see whether there might be some sort of labeling which could be developed that would really help consumers understand the difference between authentic and inauthentic products and help them make that informed choice, therefore supporting actually authentic indigenous industries, such as bush foods, medicines. It wouldn't necessarily need to be limited to arts and crafts.

So somebody actually mentioned prior to jumping into the webinar that they mentioned the VMFA, so the Victorian Farmers’ Market Association, and put in the simplest of terms, the VMFA actually provide a label to producers to signify to customers a level of quality in the authenticity of the producers. So their standard is based on the location of where the food is raised or grown, and obviously that label is specific to Victoria, but this is just one example of something that IP Australia could support to promote authentic indigenous goods and services.

So to wrap up the formal part of our presentation, when applying for a trade mark, quick checklist. Identify if you're using IK, consider consultation, consent, attribution and benefit sharing. Do your research, check the registers, check out Google, look at what other people are doing, talk to people in your community, talk to your elders, and have a read of our website or give IP Australia a call. And the fourth thing on my checklist is choose something unique and distinctive, something that's unique to you and register it so you don't lose it.

I've got a little bit of a graph on the screen here that just is showing you costs. Trade marks are relatively inexpensive but the real key thing here is there's two ways to apply with us, you've got your standard process and there's a Headstart process. The Headstart process lets you talk to somebody like me, you get feedback within five days and you speak directly with us, you can amend your filing so you're sort of getting your feedback quicker, might be useful if you just need that for your business in a much shorter timeframe. And if you are interested in talking with an examiner or with someone like myself, an IP expert, to have a conversation about this entire process, because I know it's a lot, I'd just be interested to hear from you if you'd be interested in a phone call where I can, if your question doesn't get answered today, we run out of time, we can just have a chat because I know that makes life easier when you can actually talk to somebody real on the other end of the phone.

So that really brings us to the end of our main presentations. I'm now going to just take a moment to have a look at all of your questions that have come through. If you haven't asked a question yet but you want to, pop it in now. I'm just going to pop myself on mute, and we'll come back to you in just a moment and have a chat.

Alrighty guys, so I'm just going to go through these questions one at a time and hopefully I can give you the information that you need, otherwise as I said, we can have a chat after the webinar.

So first question we have is if we have a registered name in full with an ABN but only use part of the name and not the full name for the TM, is this ok? Yes. So your ABN and your trade mark don't need to be the same at all. In fact a lot of people have completely different ones, or they'll have a number of trade marks that are owned by that same business entity.

I have a comment here as well, I think more so than a question, but it would be necessary to see the forms that consent should have, written, oral and recorded. I think this might be in relation to the new measures, and introducing a consent requirement, and yes, we'd say even now best practice would be including some sort of form that had the written, oral and recorded ... consent recorded.

Another comment here just supporting the think tank for indigenous people, as a broker for support and information, if anyone has anything they want to add to that, they can.

So a question here. Would the panel have any responsibility in terms of registering a trade mark? Is there an option of a separate registry for IK, which could provide the specific tools to keep secrecy where requested? There's definitely scope to do all of these things. So this is what we're asking at the moment, should a panel of elected people have responsibility in making decisions about the registration process, and that's definitely something that we're exploring at the moment, and we'd be very interested to hear if you do support that.

In terms of a separate registry, everything at the moment, I'm not sure if everyone's aware on the call, but anyone that applies for a trade mark, we do have the Australian Trade Mark Search, everything is public as soon as it's applied for. IP Australia doesn't actually have control over what people do apply for, so we do have that online. We could look at having a separate one that just has marks that contain IK for visibility of that, if that answers that part of the question, but then also this second part about secrecy is important in some instances where information that is sacred or secret to indigenous people shouldn't be published and so we are looking at ways that we can potentially bring that into a system where it's required for these sorts of things to be published, so it's definitely something we're aware of and looking at.

We can ... this is a question, we can have a trade mark first and then go to the certification trade mark later, yep. As the certification trade mark process is timely and costly, yes, you can have a trade mark first, you don't have to register for a certification trade mark upfront. The Victorian Farmers’ Market Association example that I explained, they don't actually have a certification trade mark, they have just a normal trade mark and they've built up their reputation in that region so much so that they can do it without the certification trade mark. There is just a recognition of the CTM with the ACCC being involved in that process, so it would just be a weighing up for your business as to what would be the most valuable for you, given that.

I'd also encourage you guys to jump on the IK consultations page up on our website, there's another webinar up there for those that were interested in the rest of the IP rights, so patents, PBR and designs. That webinar covers all of those, this one was just a bit of a deep dive into trade marks, so if you're interested in that, check it out, and keep an eye out for any future education that we do in this space. If you do have any recommendations, we would love to hear from you about anything further that you'd like to know about.

And as you can see, I'll just finally plug our email is on the screen at the moment. I really do encourage you to email through, we will give you a call if that's what you'd prefer because it is just nice to have a chat, we are really passionate about the work that we're doing in improving this system and recognising IK, so we would really love to hear from you. Thank you everyone, and I hope you have a lovely afternoon.

Last updated: 
Monday, June 7, 2021