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.
Before you take your IP to global markets, you should consider:
- Patent protection overseas
- Trade mark protection overseas
- Design protection overseas
- IP when importing products to Australia.
If you are seeking patent protection in other countries it is important to know that there is no such thing as a 'world-wide patent'. An Australian patent provides protection only within Australia. To obtain similar protection in other countries you generally have two choices:
- Make a separate patent application in each country. This can be cost effective when you only want protection in a few countries.
- File a single international application under the Patent Cooperation Treaty (PCT) that is administered by the World Intellectual Property Organization (WIPO).
The PCT is a streamlined way of applying for a patent in a number of countries at the same time, including Australia. You can file a single international application that has the same effect as filing a separate application in each country involved in the treaty.
We are a receiving office and can accept PCT applications.
When applying for overseas trade mark protection, you have two choices:
- Apply separately to each country.
- Apply under the Madrid Protocol.
The Madrid Protocol provides a simplified process for international registration of trade marks. You only have to lodge one application and pay one set of fees, rather than filing separate applications in each country. This saves you time and effort.
Applications for an International Registration under the Madrid Protocol can be filed through the WIPO Madrid e-Filing service which is accessed through online services.
Where a country is not a member of the Madrid Protocol, an application for trade mark registration must be filed with that country directly.
In most cases, design applications will have to be filed in your country of interest directly. There are some differences in the legal requirements and terms of protection for designs around the world. We recommend that you seek advice from an IP professional before you file overseas. In some countries, unregistered designs can be protected without the need for registration.
The Paris Convention allows overseas protection in a large number of countries to be back dated to your original Australian filing date.
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.
- Austrade provides information, advice and services to assist with trading overseas
- Export Council of Australia is the peak industry body for exporting
- Search on WIPO Lex for IP national laws and treaties
Perfect Potion is an organic aromatherapy and skincare company founded by Salvatore Battaglia and Carolyn Stubbin.
For Salvatore and Carolyn, Japan has been an important market in their business strategy for Perfect Potion. Since opening their first store in Brisbane in 1991, Salvatore and Carolyn have worked to make shopping at Perfect Potion a 'total customer experience.’ This concept is now led by their 70 staff who work across eight Australian stores and 10 stores in Japan.
IP protection for exports
Solid protection of the company's IP before exporting was essential. 'It is so important before you enter a country for export that your trading name, your brand name, is going to be protected.'
To ensure the brand is well and truly covered, Perfect Potion has retained the services of experienced IP attorneys. 'We have really good trade mark attorneys and they've been able to achieve everything from their offices here in Australia,' Salvatore says. 'You can’t market your product overseas if somebody else has taken out your trade mark.'
The attorneys liaise with relevant IP organisations in Japan, lodging all applications and coordinating IP searches for all markets. 'And where they have needed to contact somebody overseas, they have done so on our behalf,' Salvatore says.
Partnership with a Japanese company
Salvatore says one of the secrets to Perfect Potion's success in Japan has been setting up a separate company with a business partner (a Japanese national).
Although there haven't yet been any infringements on their trade marks, daily communication with their Japanese partner means they can be alerted to any potential infringements quickly. Salvatore says that in his dealings in Japan so far he finds: 'There is a lot of integrity with people when you're doing business with them, and there's a lot of trust in the relationship. It takes a while to establish relationships, but there's so much trust in those relationships once you do.'