Elements of a Trademark

A trademark is a sight, sound, shape or smell. They are badges of recognition, and they are distinguishable from business names. Many people get confused by thinking that their

  • business name or
  • company name

gives them a trademark.

You may acquire some common law trademark rights from their use. But generally, a company or business name won’t do that. Trademarks are a separate form of registration. You use them as a badge of recognition. The trademark makes a sight, sound, shape or smell distinctive. You can take action for infringement against anyone who uses a

  • sight
  • shape
  • sound or
  • smell

that is deceptively similar to your mark.

To obtain a trademark registration is mandatory. The duration of a trademark is forever. Once registered and the renewal fee paid every ten years, the trademark continues to exist. Ownership of the trademark can be sold or licensed.

How is Coca Cola Made in Australia

The American Coca Cola company licenses an Australian company to make Coke. The Australian Corporation manufactures Coke under the confidential information of its formula. It uses the trademarks in the sale of all forms of Coca Cola.

Apple, Coca-Cola and Mont Blanc Registered Trademarks

Licensing of a trademark is through a written contract. The protection of Trademarks is under the Madrid PO protocol like patents. The registration of Trademarks is on a country by country basis. The first person to register generally gets the Mark. Although there are exceptions to this rule. If another person seeks to register a similar mark and you can prove

  • you have been using a particular Mark and
  • you have a reputation and renown,

you may be able to establish honest use of the Mark. You may prevent that person from infringing on your geographical area.

If you use your Mark in a limited geographical area, a particular state,

  • Victoria,
  • South Australia,
  • Tasmania,

the person seeking registration may obtain the Mark in the states you do not currently trade-in.

This issue tends to be a bit murky these days with the internet. The argument is that being on the internet advertises your wares, not only in Australia but the world.

If you are trading in a limited geographical area, then the honest concurrent use argument may work. It will restrict you to only use your Mark for which you have renown and reputation within that limited area.

Protection by Registered Trademark

There are many different items protected by trademark.

  • The Pringles man with the moustache,
  • Etienne Lawyers®,
  • Bollinger – The fragrance of Bollinger,
  • the shape of the Moccona bottle,
  • The curvy shape of the Coca Cola bottle,
  • The sound of Microsoft opening up its computer.
The Pringles man with the moustache Trademark

Be conscious of those elements, of your goods or services that you can trademark. They can be valuable to you if you need to or wish to exploit them as the years go on.

Learn more about trademarks and Intellectual Property from Steven Brown at Smart Thinking Parramatta

FICPI 17th Open Forum Venice October 27

FICPI has invited Steven Brown to speak at the 17th Open Forum on Trademark Valuation. The FICPI 17th Open Forum is being held in Venice at the Molino Stucky Hotel.
FICPI Logo 17th International Forum - Trademark Valuation October 27

Over 1000 Patent and Trademark Attorneys attend the conference from October 25 – 28. FICPI will host over 20 seminars covering all aspects of Patent and Trademark law.

Steven Brown

Steven Brown has over 30 years’ experience in the Law. He practices in the areas of
  • Intellectual Property
  • Misleading and Deceptive Conduct
  • Trademark Valuation
and advises public and private sector clients on all aspects of business law.
Steven has authored articles in the areas of
  • Intellectual Property
  • Banking and Finance
  • Contract Law
  • Business Law
as well as chairing and speaking at many legal and business conferences.

Steven Brown will speak on trademark valuation at FICPI 17th Open Forum

Steven Brown said “It is an honour to be invited to speak again at the FICPI Open Forum. I have chaired and spoken at many legal conferences.
Each one provides a fabulous opportunity to showcase my work and the work of the firm. Also, I hear up to date legal issues from the experts in their field from many countries. Such as: Qatar, Singapore, United Kingdom, United States and Switzerland.
Being with the myriad of experts allows me to
  • broaden my knowledge and
  • gain skills
that would take years to otherwise perfect.”
Venice is the perfect place for a conference on Intellectual Property.
 
Venice itself is a brand and within it some of the largest brands in the world sell their wares.
 
The brand of Venice is about its DNA it’s
  • history
  • experience
  • beauty
  • landscape
  • food
The brand brings 30 million tourists a year to Venice. Because of the DNA of the brand of Venice other brands benefit. The DNA of Venice is unique. This is not the same for most other brands where the DNA can be copied. It is important to protect the DNA of your brand.

 

FICPI 17th Open Forum Venice

Find Out More About Intellectual Property


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Buying Off The Plan – Filming for ICLE

 

Buying Off The Plan - Filming for ICLE

Buying Off The Plan

Etienne Lawyers was again asked to film a presentation for ICLE. Steven Brown’s presentation was focused on purchasers buying off the plan and developers selling off the plan. Steven has many years experience acting for both developers selling off the plan and purchasers buying off the plan. He understands the benefits and pitfalls from both the purchaser and developers point of view. Steven’s extensive experience in this area made him the logical choice for ICLE in presenting this area of law as training for other lawyers.

This is a very topical subject at the moment. With the Sydney skyline having more cranes than any other in the world except Dubai. Most of the buildings are new apartments. With interest rates low and overseas buyers being restricted to mostly new properties – new apartments are very popular. Also peaking interest in NSW is the First Home Owner Grant and First Home – New Home scheme offered by the State Government. New apartments can be cheaper than houses and land making them easier to satisfy the rules of the government schemes.

With property prices rising sometimes 10% a year developers can sell a property off the plan and not complete the building for 5 years. In that 5 years the selling price may have increased by $100,000.00 making it advantageous for the developer to decide not to sell to the original purchaser and put the property back on the market and sell for a higher price.

Buying off the plan has advantages for the purchaser but also disadvantages. There have been many examples recently in the media of developers withdrawing properties from sale, changing the size of lots, changing the fixtures and fittings, even reducing the number of bedrooms. All of this was discussed in Steven’s presentation.

There are proposed updates to laws being proposed by several State Governments.

To find out more about Buying Off the Plan, download our free reference here.

Linkedin for Lead Generation

James Cooke from Linkedin Success gave a fabulous presentation on using Linkedin as a Lead Generation Tool for Lawyers. James is passionate about using Linkedin as a lead generation tool and he conveys this passion in his presentations. His presentation was not only educational but practical and fun. James’ vast experience using Linkedin to generate leads for his Debt Collection business has enabled him to develop a proven formula that he now shares both online and in live presentations.

If you would like to learn about using Linkedin as a Lead Generation Tool for your business, why not try James’ free Udemy course

As always Alice from ICLE and Tristan from BAM Studios made the day of filming fun and productive.

Off The Plan Property Call To Action

Excellence in Work Health and Safety 2014 WSABE Winner thanks his supporters

Carl Albrecht Director AWHS Pty Ltd

Carl Albrecht, Director of Work Health and Safety Pty Ltd today thanked the sponsors of the 2014 WSABE awards and his supporters.

In his speech, he thanked Steve Brown and Etienne Lawyers for being a principal sponsor of the WSABEs. They were the sole sponsor of the Excellence in Work Health and Safety Award that his business succeeded in overcoming the competition to win.

He went on to acknowledge the support of the Parramatta Chamber of Commerce and his wife.

Work Health and Safety permeates every level of a business. From the levels of productivity and days lost to incidents, to the set up of operational equipment. Training and development are critical pathways for work health and safety to be inculcated into the fabric of any organisation.

Legally, WHS affects human resources, customer interactions, logistics and infrastructure and is one of the main causes of conflict between employers and employee bodies.

By creating a business solely focused on helping other businesses succeed through WHS, Carl Albrecht’s organisation is not only a creditable business, but is also encouraging good corporate citizenship. For all of these reasons, Etienne Lawyers applaud Carl and his team at Work Health and Safety Pty Ltd – a very worthy recipient of the 2014 WSABE Excellence in Work Health and Safety Award.

Enforcing Restraint of Trade

Enforcing Restraint of TradeEmployers and employees need to carefully consider restraint of trade clauses in before and after entering into employment contracts after a recent decision in the Supreme Court of New South Wales ordered former business owners to pay damages in excess of $500,000 for breaching restraint of trade clauses.

The Plaintiff in the proceedings offered media and advertising services to large-scale clients, in particular in had two major clients. The business was effectively run as a family enterprise until it was acquired by a large corporation – Adorp Australia for $4 million. (‘the Company’).

As part of the transaction, David Andrews and his son Dean  (‘the Employees’) retained employment contracts, which were categorised as ‘Executive Service Agreements’. The Agreements contained inter alia, restraint of trade and non-compete clauses (‘the Employment Agreements’).

Both Employees ended their employment with the Company in July 2010, conveniently at a time when the Company had just lost the two major clients. The dire effect of losing these clients meant that the Company ceased to trade in August 2010.

The Company instituted proceedings seeking relief including but not limited to; account for profits and damages on the basis that the Employees had breached their Employment Agreements and their fiduciary duties owed to the Company.

The Company also sought relief against one the Employee’s Wife and three other companies for accessorial liability.

Whilst some of the Defendants settled with the Company, proceedings against Dean and his Wife, Danielle and Smart Retail Pty Limited (“Smart Retail”) continued.

Ultimately, the Court found that between period of employment and the period of cessation, Dean was in breach of not only his contractual duties to the Company, but to his Statutory and fiduciary duties owed to the Company as an employee under sections 182 and 183 of the Corporations Act 2001 (Cth) as a result of diverting client work to a related entity.

Further, the Court found that post employment; he had breached his non-compete and restraint provisions by undertaking work for one client.

The Court held that where an employee maintains a relationship with a significant client, then it is open for a company to protect its interests. It common practice for businesses to include restraint of trade clauses and non-compete clauses in employment contracts so as to protect their interests, provided that it complies with the Restraints of Trade Act 1976 (NSW).

What you should do?

This decision reiterates the importance of implementing and maintaining policies and procedures to protect your business and its clients. Businesses should constantly review strategies that they have adopted in order to mitigate such risks.

When approaching these issues, businesses should be minded to examining the situation from a commercial and legal perspective.

Fundamentally businesses should be aware that an employee should:

  • not to act in his or her own personal interests where there is a real conflict between the pursuit of those interests and performance of duties owed to the employer;
  • not to undertake engagements which involve duties which are in conflict with duties owed to the employer; and
  • not to misuse the position of employment to pursue a personal gain.

Where a business owner observes fundamental breaches they are entitled to take reasonable steps to protect and enforce its interest before and after cessation of employment. This may include reducing contact with key clients and playing a more active role in the business and ultimately enforcing restraint of trade and non-compete clauses.

Find out how we can assist your business in protecting and or enforcing its rights in situations like this by contacting Steve Brown 1300 882 032 email sbrown@etiennelaw.com.

 

Beware Director Penalty Notices

Beware Director Penalty NoticesIN 1993 the Taxation Administration Act 1953 introduced Director Penalty Notices (DPN). DPN’s were introduced in to assist the Commissioner of Taxation to recover certain company tax liabilities.

The idea behind DPN’s is to act as the big stick to hit directors so that directors cause their company to meet certain tax obligations or promptly place the company into liquidation or voluntary administration.

The law requires companies to withhold amounts from payments they make, such as wages to employees, and to pay those withheld amounts to the Commissioner (and to pay estimates of those amounts where applicable).

The regime of DPN’s makes directors of companies who fail to comply with their obligation to pay amounts withheld under the PAYG withholding regime to the Commissioner, personally liable for the amount that the company should have paid, through the imposition of a penalty.

Where the company fails to pay such amounts the directors become automatically personally liable to a penalty equal to the amount the company should have paid at the end of the day on which the company is due to meet its obligation.

However, the Commissioner must not commence proceedings to recover a director penalty until 21 days after he gives the director a written penalty notice.

A director can extinguish their personal liability by paying the debt or appointing an administrator or liquidator to the company within that 21 day notice period.

If the director does not take the appropriate steps within the 21 day period, the Commissioner may commence proceedings to recover the penalty. Certain defences are available to a director in such proceedings including:

  1. If the director had an illness that prevented him or her from participating in the management of the company, or
  2. If the director took all reasonable steps to ensure compliance within the notice period.

The Action Against Fraudulent Phoenix Activity proposal paper, which was released by the government for public consultation on November 14, 2009, set out a number of taxation law and corporations law options addressing fraudulent phoenix activity.

The paper concluded that the director’s ability to put-off payment of the penalty until they receive a notice, and then to avoid liability absolutely by liquidating the company, was a significant limitation on the effectiveness of the Director Penalty Notice Regime.

As a result it was considered that the law required amendment to toughen the regime.

Changes in the DPN Regime

Recently the DPN regime has been strengthened. Directors’ are now required to cause their company to comply with its liability to pay company liabilities, for PAYG payments and to pay superannuation guarantee amounts.

The amendments removed the ability for directors to extinguish their personal liability to pay penalties where the penalty has remained unpaid and unreported for more than 3 months.

Over two years’ of industry debate on the issue, came to a head on 29 June 2012, when the Tax Laws Amendment (2012 Measures no. 2) Act 2012 received Royal Assent. This new legislation amends the Taxation Administration Act 1953 by:

  •  Extending the Director Penalty Notice Regime to make directors personally liable for their company’s unpaid superannuation guarantee amounts;
  • Ensuring that directors can not discharge their director penalties by placing their company into administration or liquidation when PAYG withholding or superannuation guarantee remain unpaid and unreported for 3 months after the due date; and
  •  In some instances, making directors and their associates liable to pay PAYG withholding non-compliance tax (effectively reducing credit entitlements) where the company has failed to pay amounts withheld to the Commissioner.

Accordingly, if a payment that a director should have caused their company to pay has been outstanding for three months when a director is served with a director penalty notice, the director will no longer be able to remit that penalty by placing the company into administration or liquidation.

The director will remain personally liable to pay the amount of the penalty. The amendments also change the way the Commissioner collects tax using DPN’s. For instance, where a company fails to pay PAYG withholding amounts, the Commissioner has discretion to reduce a director’s entitlement to PAYG withholding credits which can effectively increase the amount of tax that a director will have to pay when they complete their personal tax return.

New directors will be liable to a director penalty only where they become a director after the company has failed to meet its obligation by the due date and 30 days after becoming a director, the obligation has not been met. This is an increase in the grace period for new directors from 14 days under the old regime.

The amendments allow the Commissioner to serve DPN’s by leaving a copy or posting it to the address of the director’s registered tax agent.  Consequently, the DPN does not have to come to the attention of the director before it is valid.
It is valid whether the director is aware of it or not. Similar to the service of statutory demands under section 459E of the Corporations Act, 2001.

Directors still have the same defences available and therefore will be able to avoid personal liability if they can prove that due to illness they were not involved in the management of the company or they took all reasonable steps to ensure that the company complied with its obligations in respect of PAYG withholding and superannuation guarantee amounts.

Any one who is a director must now more than ever be vigilant in ensuring that PAYG withholding and superannuation contributions are paid by the company on time.

If directors believe that the amount cannot be paid then in order to avoid any personal liability for those debts the director must place the company into administration or liquidation within three months of the due date.

New directors appointed to companies will need to quickly become familiar with the company’s accounts and take appropriate action within 30 days of their appointment if the company has outstanding PAYG withholding or superannuation contribution amounts.

The rationale of the amendments is to ensure that directors are proactive in ensuring that PAYG and superannuation payments are made rather than reactive to the receipt of a DPN by which time it could and often is too late for the Commissioner to get paid.

The penalty for inaction is for the amount that should have been paid by the company to become a personal debt of each director jointly and severally.

Directors no longer have the luxury of waiting until a director penalty notice is served on them before taking appropriate action to extinguish their personal liability in respect of the penalties.

Don’t become personally liable for your companies debt contact Steve Brown 1300 882 032 email sbrown@etiennelaw.com to get updated on the latest directors duties.

Where There Is A Will There Is A Way

In NSW, since 2005, the disposal by the Supreme Court of disputes over wills has risen by almost 60%.

This increase is due to the Law under the Family Provisions Act, requiring the Court to consider the objective intentions of the deceased as at the date of death and not the actual intentions of the deceased.

The statistics are the tip of the iceberg. The statistics below show the cases disposed of by the court. Most matters, in the vicinity of 95% of all claims, are settled either by the parties or at mediation. These are not reflected in the statistics.

Where there is a will there is a way

The claims often irretrievably destroy family relations.

The increase can be seen to arise from the growth in blended families, with multiple children and grandchildren from second or even third marriages and defacto partners. For example, in a recent Supreme Court case 46 year old Robert Wilcox made a $1.1 million claim on his grandfather’s $5.5 million rural estate, which had been left to his mother.

Despite not having worked in agriculture since 2001, the court found he was entitled to some money and ordered he be paid $107,000 to clear a tax debt.

In the 2013 Supreme Court case, Jagoe v Maguire, John Jagoe brought a claim against the will of his late wife, who had left her $1.3 million estate to her four children from her first marriage.

The judgement by Justice Philip Hallen refers to family members abusing each other in court, bickering over a $10,000 Datsun and one beneficiary suffering mental illness attributed to “inter-family conflict and the siblings arguing”.

“Emotions during the cases were, understandably raw and painful,” he wrote.

“Hopefully, the termination of the proceedings by judgement will settle the hostility that has rocked the family since the death of the deceased.”

To avoid family disputes, planning your will thoroughly is essential. Please email sbrown@etiennelaw.com or phone 1300 832 032. For further information on Estate Planning and Wills please click here.