Protecting intellectual property rights in strata buildings and motels

Contributed by Col Myers, Partner, SMALL MYERS & HUGHES – 3 March 2019

Protecting intellectual property rights in strata buildings and motels

Unlike more mainstream commercial ventures, we regularly see instances in the strata industry where intellectual property protection may not be given the attention it deserves.

It is never too early to take steps to protect the relevant intellectual property, and ideally strategies should be implemented early in the development stage.

Reservation and registration of desired building name

In Queensland, a proposed identifying name for Community Titles Scheme (CTS) may be reserved by a developer. This then prevents third parties obtaining registration of an identical CTS name, at least in the same State.

Domain names and business names

Similarly, registration of any desired domain names and business names should be obtained to avoid third parties (whether inadvertently or intentionally) registering the desired name.

However, reservation or registration of a CTS name, domain name or business name, will not of itself grant any ownership or enforcement rights in relation to the relevant name that has been registered.

Trade mark protection

Whilst unregistered rights may exist in the form of a claim for passing off or misleading or deceptive conduct, the strongest protection that can be obtained in relation to a particular brand name is a registered trade mark. Provided the name of the building is sufficiently distinctive, trade mark protection should be available.

When applying for a trade mark, you must specify the particular goods or services in respect of which protection is sought. Trade mark protection cannot be sought in respect of a building itself, however can potentially be obtained in relation to specific goods or services that it is intended will be provided. In a management rights context, this would ordinarily include property management, property leasing or sales, or other accommodation services.

Where a valid trade mark has been registered in relation to particular services, it will provide the owner with a potential claim against third parties who use as a trade mark, a sign (eg. a name or logo) that is substantially identical or deceptively similar to the trade mark that is registered:

· in relation to the specific services in respect of which the trade mark is registered (registered services); or

· in relation to services of the same description as the registered services, or goods that are closely related to the registered services.

It should be noted however that trade mark protection will not have the effect of simply stifling all competition and preventing any third parties from using the name that has been registered. A registered trade mark will only be infringed where it is used as a trade mark – which occurs where the trade mark is used as a ‘badge of origin’ indicating a connection between the services provided and the person supplying the services with reference to the trade mark. The name may therefore still be used by third parties in a descriptive manner, such as the identifier of the geographic location of the units in the building. However more care would need to be taken to ensure infringement is avoided than if there were no registered trade marks.

A recent example in the management rights space is the 2017 Accor Full Federal Court decision in which off-site letting agents were found to have infringed Accor’s registered trade marks. The conduct in question involved registering domain names containing those trade marks and using the trade marks in website metadata, the latter of which would favourably influence search results.

Whilst trade mark protection is certainly not required, a valid trade mark registration provides greater enforcement rights for any management rights or motel operator and therefore a more attractive and valuable brand.

We recommend seeking registration of a trade mark at the earliest possible opportunity, ideally prior to the scheme being registered and any business commencing. Protection can always be sought later down the track, however difficulties can potentially arise, particularly if competitors have commenced using similar names in the interim. Whilst not necessarily insurmountable, these issues can often be avoided where protection is obtained at an early stage.

Conclusion

As a final note, even the most carefully implemented intellectual property protection strategy can be thwarted by inadvertence or inaction, such as by allowing registered domain names or trade marks to expire. It is therefore imperative to ensure appropriate monitoring and procedures are put in place, or a suitably qualified professional engaged, to assist with managing and ensuring the IP portfolio is maintained.