There are many ways to approach a global market with your intellectual property (IP). You can start by answering six simple questions.
- Would I generate the best returns by establishing my product in Australia first, or should I approach the Australian and world markets at the same time?
- Do I have the resources to successfully commercialise outside Australia?
- Will I need financial support and do I have the track record and security to generate that finance?
- Do I have the manufacturing and distribution capabilities to supply to countries outside Australia?
- Should I manufacture my product in Australia and distribute it to other countries, or outsource production to another country?
- Do I have the marketing and promotion networks to successfully commercialise in other countries?
When commercialising into global markets it is common to retain some activities for yourself and to partner with external providers on others. This can be achieved by:
- Retaining the manufacturing and selling rights in Australia, whilst licensing manufacturing and selling rights to a partner to commercialise overseas
- Retaining manufacturing and selling rights in the global market, whilst outsourcing manufacturing and selling tasks to an overseas provider over which you retain total control.
The case study ‘IP strategy to break into the Japanese market’ might also give you advice on how to approach a global market.
Consider IP protection overseas
Australia’s negotiated trade agreements include IP chapters that facilitate trade and investment. Understanding IP protection can help you establish your market position and ensure you don’t infringe on existing IP in that country.
IP protection by country/region
- New Zealand
- South Korea
- European Union
- United States of America
IP when importing products to Australia
As an importer, you should have appropriate commercial arrangements in place with suppliers to protect your IP. Among other things, these arrangements should:
- Authorise (or license) the use of the IP rights in Australia (or ascertain that no rights are required)
- Confirm whether the rights granted are exclusive (or whether others can also import the products)
- Clarify what rights you as the importer have to register and enforce the IP rights.
In addition, if an arrangement involves franchise rights, the parties need to consider whether the Australian Franchising Code of Conduct or other Australian laws may impact the arrangement.
If registered IP rights do not exist in Australia then, as the importer, you may decide that you (or your supplier) should apply for IP protection in Australia. It is critically important that IP protection be sought by the appropriate party otherwise any resulting registration may be invalid.
In many cases international treaties and conventions will assist an owner of an IP right overseas to gain protection in Australia.
- Ensure that the importation of goods and/or services into Australia will not infringe IP rights already in force in Australia. Infringements may occur even when the supplier of the imported products owns the IP rights overseas.
- Check if the importer (or its supplier) should obtain IP protection in Australia. IP protection from another country may not be sufficient to provide protection in Australia. For example, a trade mark registered and used overseas may provide limited or no protection if not registered in Australia. In fact, use of the ® symbol on products in Australia (indicating registration) may constitute an offence if the relevant trade mark is not registered in Australia.
- Failure to consider IP rights when making importing arrangements may result in the importer being the subject of legal action by the owner of IP rights in Australia. This includes the possibility that products may be seized by Australian Border Force, or may allow others to take advantage of the importer's efforts in establishing a reputation.
A range of enforcement options are available for owners of IP rights in Australia who believe their rights are being infringed, including civil court action and notices of objection.
It is also important to be aware of parallel imports rules and regulations and their impact on IP.