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As a jewellery designer, what is the process in protecting my brand and also my work? What are the general costs to protect it?

For any business there are a range of strategies that can be adopted to protect your reputation and the work that you create.

Reputation
The reputation of your trading name, logo or brand (a mark) may be protected through trade mark registration or alternatively, relying on the common law to protect your rights in an unregistered mark.

While an unregistered trade mark (a common law mark) may be protected under the common law, you would need to retain records of your use of the mark in case you needed to enforce your rights for passing off or otherwise, take an action for misleading and deceptive conduct under Trade Practices legislation. As there is no registration system for common law marks, consequently no formal registration fees apply.

Trade mark registration is administered by IP Australia. However, not all trade marks can be registered. To be registered, the application must pass a number of legislative tests including (i) consideration of whether the mark is distinctive or otherwise descriptive of the goods or services covered in the application and also (ii) whether the trade mark conflicts with an earlier trade mark. In addition to the tests, an opposition process is also available to 3rd parties who wish to oppose the registration of a trade mark.

Before using or applying to register a trade mark, you should search the register of trade marks to ensure that you would not be conflicting with another mark. This can save you time and money by alerting you to existing trade marks which are so similar to the one you plan to use, that you may face legal action from the owners of those trade marks.

The key messages in this area are:

• search before you use a trade mark
• it may be more difficult and costly to prove ownership of and enforce the rights in an unregistered trade mark (common law mark)
• some trade marks are difficult to register
• there are government fees to register a trade mark
• common law marks have no official registration fees whereas the minimum costs to apply for and register a trade mark is from around $370 (for 10 years registration)
• trade marks can be renewed indefinitely

Creative work
This can be a complex area of law. As there is an overlap between copyright and design protection, jewellery products may be protected through a range of mechanisms. Although copyright protection is available for a range of "artistic works" and "works of artistic craftsmanship" including jewellery, crafted glass, enamelling and ceramics. Much will depend on the nature and purpose of the creative work. In general, if the work is for an artistic purpose or could be considered as a work of artistic craftsmanship then copyright may apply. Otherwise, design registration can be considered to protect the appearance of products that are manufactured or hand made. Inventive features (eg. a locking mechanism for a clasp) may be protected by a patent.

Copyright protection is free and automatic and arises upon creation. However, if you intend to mass produce or make multiple copies of items, you may not be able to rely on protection from copyright.

In order to register a Design, it must be new and distinctive. This means while a new jewellery design may include features that are common, such as jewels, clasps and chains, the combination, particular placement or alteration of features may create a new and distinctive appearance of a jewellery item. For protection in Australia, an application for Designs registration must be lodged (with IP Australia) prior to disclosing or publishing your design. See the Q&A below — "When to consider registration".

Design registration can be maintained for a maximum term of 10 years for under $500. The fee to lodge an application for a single design is $200. If registered, the first 5 year term is included. A renewal fee for the second 5 year term is currently $275.

Patent protection may also be available if the jewellery item has functional aspects. For example, an inventive clasping mechanism for bracelets and necklaces. For more information on patents, click here.

The key messages in this area are:

• consider the purpose of your creative effort before you disclose it (artistic or industrial application)
• understand the different types of intellectual property protection available - and any limitations

More information:

1. The Fashion Rules booklet has some general information and also a short case study about trade marks and copyright
2. IP Australia has a range of information about trade marks, designs and patents including free searchable databases and up to date fee schedules. A service designed for first time trade mark filers (TM Headstart) is also available for consideration.
3. The Australian Copyright Council has a range of information about copyright, information sheets and frequently asked questions.
4. Consider consulting an Intellectual Property Lawyer or registered Patent or Trade Marks Attorney for advice tailored to your specific circumstances.

 

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