Protecting your food product overseas
International protocols mean that if your food product is protected by legally enforceable registration in Australia, it may be possible to enforce those IP rights with Australia’s trading partners. But to be assured of protection and a right of recourse in that specific country, it is best to be on the safe side and apply for protection.
Even if you are not intending to sell your product a specific country in the immediate future, having overseas IP protection for your brand or product helps to preserve your ability to do so in the future but also prevents anyone else getting in ahead of you and copying your product for sale in that market.
Costs…
You need to weigh up the value of intellectual property protection for your food product with costs, and have a commercial business strategy in place that ensures taking out protection is worthwhile. Consider your brand, design and product, and speak to an IP professional about what kind of protection would be most sensible for your product and your business, and whether investing in foreign markets will be viable.
Why is it worthwhile protecting my brand overseas?
Without enforceable registration in place in a particular country, it may be very difficult to stop an international competitor in that country from reverse engineering your product and creating the same or a similar brand or packaging just like yours. Even if the competitor’s product is not exactly the same, without enforceable IP protection in that country you may not be able to prevent that competitor from copycatting you and stealing your market, or from taking out their own IP registration in relation to that product, thereby preventing you from protecting your IP by registering yourself in the future. So, if the possibility of competing in that country is likely to be important to your business now or in the future, it may be worthwhile taking out IP protection.
Before you apply for protection overseas, check that the intellectual property you are trying to protect is not already registered in that country:
There is a risk that you may be infringing another seller’s intellectual property by mistake. This could open you up to legal challenges – either from infringing on another parties rights, or as a result of IP squatting, where there is an IP right registered only for the purposes of selling that right for financial gain in the future.
Also, ensure you have non-disclosure agreements in place with any offshore manufacturers and distributors so that your IP is protected by obligations of confidentiality.
Secondly, work out the IP rights that are are comprised in your food product – this is what you need to protect by registration and what will benefit your business most. Apply first in Australia (if you haven’t already) and then overseas if that is what you have determined is most advantageous for your business.
Patents:
Patent protection is for new inventions, which can include a new food. Patent protection gives exclusive, legally enforceable proprietary rights and is an intangible asset of the business in its own right. Patent protection can be available if your food product combines ingredients in a new way, or where an unexpected advantage from the combination of the ingredients occurs.
The shape of your food may be patentable also if it offers an innovative advantage.
How to obtain Patent protection for your food product:
- Firstly make a provisional application through IP Australia to establish you are the first person to file for the invention of your product in Australia;
- You then have 12 months to decide whether you want to proceed with the patent;
- Through the Patent Cooperation Treaty (PCT) you are then able to file a patent application in multiple countries at the same time, you have 30 months to decide if you want to pursue patent protection, and in which countries;
- OR you can seek patent protection directly from the country where you are creating, manufacturing, or selling. Make sure you have professional advice to avoid unnecessary delay and cost.
Trademarks:
You can apply for trademark protection for unique logos, words, slogans, letters, numbers, phrases, scents, shapes, pictures, movement or packaging associated with your product, which distinguishes your product in the market .
How to apply for trademark protection:
- Application in Australia should be made through IP Australia. The application process takes a number of months but once approved, you will have trademark protection for your brand from the date your application is filed.
- For international registration, you can file directly to the countries in which you wish to protect or via the Madrid Protocol;
- Under the Madrid Protocol you can file a single application to seek protection in countries of interest and pay a single application fee (but your application must be based on your existing Australian application or registration). This is less expensive than applying direct to each country and lasts for 10 years, and the application is handled via IP Australia which streamlines the process. However;
- Note that not all countries are members of the Madrid Protocol, including Canada and Hong Kong, and therefore don’t offer protection via this means.
- The Paris Convention gives you six months to file an identical foreign trade mark in certain overseas jurisdictions from the date you file in Australia, and you retain rights back to your initial filing date in Australia.
- If the language of your intended country is other than English, consider seeking protection in the local language including Asian language characters, and consider whether there are any cultural sensitivities relating to your trademark.
Protecting the design of your product or packaging:
The design of your packaging may be an important feature of your food product and worth protecting so others cannot copy it in the local or overseas marketplace. You can also protect the overall appearance of your food product if it is unique.
- Generally, you will need to file for design protection in each of the countries you wish to protect individually.
Copyright:
The recipe used to create your food product can be copyright material, however your actual food product is not copyright material.
- Copyright is automatically created and vests in the author of a written or artistic work as soon as a work is reduced to material form (recipe written down) – there is no formal registration required for these rights to arise;
- Australian Copyright Law applies to copying within Australia no matter where the work was originally written; and
- The Berne Convention protects the copyright in your recipe worldwide.
If you would like to talk to a legal professional to help you develop and implement an intellectual property protection strategy locally or internationally for your food business, give us a call on 03 9111 5660.
This is general advice only. Liability limited by a scheme approved under Professional Standards Legislation.
Published Sep 12, 2018
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