intellectual property

Use of competitors trademarks for comparative advertising

Comparative advertising is a popular way to win market share by promoting superiority of a product or a service over a competitor.  Businesses often use comparative advertisement as a direct challenge to a competitor’s product or service by comparing it with the size/volume, quality, price, or range of their own product or service.  Comparative advertising can be useful for consumers in making choices between similar products or services, but how is the use of a competitor’s trade mark in comparative advertising handled under Australian law? [Read more…]

Interlocutory injunctions and undertakings as to damages

An interlocutory injunction is an order made by the Court prior to trial either preventing or requiring some undertaking to be taken by one or more parties.  The Courts acknowledge that the imposition of such an interlocutory injunction on a party is not necessarily final and is subject to change.  As such, an undertaking as to damages is usually required by the party seeking an interlocutory injunction (Applicant).  This article discusses the established principles the Court will use to discern whether an Applicant has an adequate case for granting an interlocutory injunction. [Read more…]

Software royalties and income tax

The Australian Taxation Office (ATO) recently released a draft Taxation Ruling (TR) 2021/D4 (Draft Ruling) which considers whether certain software related royalties may be taxable.  In short, the Draft Ruling provides a much needed, and quite broad, scope for when consideration of computer software will be a royalty for income tax purposes.  This article discusses this broadened scope. [Read more…]

What is the springboard doctrine?

The ‘springboard’ doctrine refers to the benefit that is derived because of misuse of confidential information by a defendant that enables them to ‘springboard’ a new product or service to market more rapidly than if they had used their own mind.  A breach can be a contractual or equitable in nature and can also involve other causes of action such as breaches of director’s duties. [Read more…]

What is a registered design?

The registration of designs in Australia are a form of intellectual property protection associated with the visual appearance of an items with commercial or industrial significance.  Rights in designs are obtained by registration under the Designs Act 2003 (Cth) (Act).  Once registered the owner has exclusive rights to use the design, licence its use to others or sell it. [Read more…]

The tort of passing off

The tort of passing off occurs where one trader (Defendant) has wrongly represented that its goods or services are related to those of another (Plaintiff) by imitating the latters get-up, or look and feel of their product or service.[1]  A passing off action is designed to provide a remedy when this situation results in damage to the Plaintiff’s business reputation.  It is usually pleaded as an alternative cause of action to misleading and deceptive conduct pursuant to the Australian Consumer Law, contained inside schedule 2 of the Competition and Consumer Act 2010 (Cth).   [Read more…]

What is a software licence agreement?

A software  licence agreement (Software Licence Agreement) is a contract where one party (Licensor) grants to another party (Licensee) the right to use the defined software.  It is often used by software developers (Developers) so that they can build and own a core application, customise it for particular clients and provide them with a licence to use the core.  In many cases this licence has been the start of a substantial business enterprise.  The term Software Licence Agreement can apply to both installed software as well as cloud based applications.  That said cloud based Apps are commonly referred to as “Software as a service contracts” or SaaS Contracts because they involve the right to access and use a software application as opposed to a right to reproduce the code. [Read more…]

Top 11 legal tips when selling a technology business

Selling a technology business can be an exciting time for shareholders and directors who have worked hard towards an exit.  Because of this, it’s important for the exit to be as smooth as possible.   Below we set out our top 11 tips for selling a technology business which, if followed, will ensure greater protection for sellers and reduce their risk. [Read more…]

s115A Copyright Act – infringement outside Australia

Section 115A of the Copyright Act 1968 (Cth) came into effect on 27 June 2015 and was amended on 11 December 2018 pursuant to the Copyright Amendment (Online Infringement) Act 2018 (no. 157, 2018) (Online Infringement Act).  The effect of the amendments as described in the Explanatory Memorandum to the Bill were to amend the threshold test from ‘primary purpose’ to ‘primary effect’, add a rebuttable presumption that an alleged ‘online location’ is located outside Australia, to extend the scope to online search engines (Deindexing Orders) and allow the Court to make “more responsive” orders in terms of injunctive relief. [Read more…]

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