AUSTRALIA Law and Practice Contributed by: Sven Burchartz and Jessica Bell, Kalus Kenny Intelex
Non-Use A trade mark does not need to have been used prior to applying for trade mark registration in Australia; how - ever, the applicant must genuinely intend to use the mark in relation to the nominated goods or services. However, if the applicant fails to use a mark over a continuous three-year period, it can be removed from the trade mark register, or another party can apply to have the mark removed for non-use. Non-Registered Trade Marks Non-registered trade marks are protected under the Australian Consumer Law, which prevents another party from engaging in misleading or deceptive con - duct, such as the unauthorised use of names or logos that may confuse consumers. They are also protected under the common law action of passing off, which prevents another party from misrepresenting that they have an association with the owner’s goods or ser - vices. Sports-Related Examples Sporting bodies routinely register trade marks to pro - tect their brand. By way of example: • Supercars Australia holds registered trade marks for its logos, categories and slogans; • Tennis Australia holds a number of trade marks relating to the “Australian Open” and “AO”; • Cricket Australia owns trade marks for the Ashes, the Boxing Day Test, each of the Big Bash League teams and the “Baggy Green” hat; • NRL and AFL clubs hold registered trade marks for the names and logos of the clubs competing in their respective competitions; and • major events, such as the Melbourne Cup, are protected by trade marks owned by the Victoria Racing Club. 5.2 Copyright/Database Rights Australian Copyright Law In Australia, copyright law is contained in the Copy - right Act 1968 (“Copyright Act”) and supported by common law principles developed by Australian courts. There is no system of copyright registration in Australia. Instead, copyright protection automatically arises once a work is original, created by a qualified person, and fixed in material form. Concepts such as
originality and authorship are not defined in the Copy - right Act and are instead shaped by common law. Given the automatic application of copyright in Aus - tralia, protection immediately extends to sporting content such as match footage, photographs, logos, commentary, fixtures, provided they meet the “origi - nality threshold”. For example, Section 101 of the Copyright Act pro - vides that the copyright in a literary, dramatic, musi - cal or artistic work “is infringed by a person who, not being the owner of the copyright and without the licence of the owner of the copyright, does in Aus - tralia, or authorises the doing in Australia of, any act comprised in the copyright.” This includes using or reproducing copyrighted works and offering articles for sale that contain infringing copyrighted material. Defences for Copyright Infringement Common exceptions and defences to copyright infringement include: • fair dealings with the copyright works (which includes use in reporting, for research, review or criticism); • certain private or incidental dealings with copyright works and other subject matter; and • educational copying and archiving of works. No Specific Database Right There is no specific law in Australia providing for data - base rights, which means that databases may only be protected in Australia if they fall within the scope of protection under the Copyright Act. The Copyright Act will likely only cover a database in respect of the compilation of the data, provided that the creators used intellectual effort in creating the database, and that the database itself is sufficiently original. Copyright and Australian Sport In 2019, the AFL issued a cease-and-desist notice for copyright infringement to a company called League Tees. The AFL alleged that a line of t-shirts and badges marketed and sold by League Tees featured an iconic photograph of an AFL Women’s League player that was taken by AFL Media’s chief photographer, which infringed the copyright of the AFL. Whilst League Tees
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