This unit applies to individuals who are involved in work with marketable applications across a variety of work environments.

ELEMENT

PERFORMANCE CRITERIA

1. Identify the need for protection of brands and business identity

1.1. Research what constitutes a registrabletrade mark in Australia

1.2. Identify the legislative requirements governing trade mark protection

1.3. Identify other forms of trade mark protection

1.4. Identify existing or potential trade marks within organisation or scope

1.5. Explore the benefits, costs and risks of trade mark registration and other forms of trade mark protection

1.6. Make recommendations to develop and use trade marks with commercialisation potential

2. Identify and initiate application process for trade mark protection

2.1. Identify sources of information and advice regarding protection of brands and business identify

2.2. Evaluate the role of intellectual property professionals in the trade mark application process

2.3. Search databases of existing registered and pending trade marks and investigate any use of unregistered trade marks to ensure the proposed trade mark does not infringe on another party's existing trade mark

2.4. Identify processes required for lodging a successful trade mark application

2.5. Identify process for international trade mark registration

2.6. Participate in a trade mark application and provide relevant information to the intellectual property professional for trade mark application, if applicable

3. Monitor the market and protect and use trade marks

3.1. Identify and review organisation policies and procedures to protect and use the trade mark correctly

3.2. Identify and establish processes to use own and others' trade marks for business growth

3.3. Monitor the market for possible trade mark infringements

3.4. Pursue appropriate measures to protect trade marks against infringements, if required, using appropriate professional advice

3.5. Ensure that procedures are followed to maintain the organisation's trade marks, including payment of renewal fees as required

3.6. Ensure all employees are aware of the importance to the organisation of the protection and proper use of trade marks, and implement training if required

3.7. Identify and review organisation policies and procedures to prevent infringement of others' trade marks

Required skills

research skills to identify relevant areas of trade mark law and the common law to protect organisation's intellectual property

analytical skills to identify commercial potential of trade marks and brands

literacy skills tointerpret and implement IP Australia's trade mark application procedures

problem solving skills to act on potential infringement issues

Required knowledge

different ways to protect trade marks

application guidelines, including definitions of registrable trade marks

application formats and procedures

overview of relevant legislation concerning trade marks

sources of adviceon trade mark protection

The Evidence Guide provides advice on assessment and must be read in conjunction with the performance criteria, required skills and knowledge, range statement and the Assessment Guidelines for the Training Package.

Overview of assessment

Critical aspects for assessment and evidence required to demonstrate competency in this unit

Evidence of the following is essential:

identification of issues for the use, management and protection of brands and business identity

implementation of policies and procedures for the use, management and protection of brands and business identity and legitimate use of others' trade marks

Context of and specific resources for assessment

Assessment must ensure:

access to relevant information on the individual or organisation's brands and business identity requirements and procedures

access to reliable and appropriate explanatory material and guidelines

access to appropriate computer resources for establishment and maintenance of policies and procedures

Method of assessment

A range of assessment methods should be used to assess practical skills and knowledge. The following examples are appropriate for this unit:

direct questioning combined with review of portfolio of evidence

oral or written questioning to assess knowledge of protection of brands and business identity and its implications for the organisation

development of action plans for implementation of policies and procedures for protections of brands and business identity, and commercialisation of trade marks

analysis of case studies around trade mark issues, with recommendations for action

Guidance information for assessment

Holistic assessment with other units relevant to the industry sector, workplace and job role is recommended, for example:

other units from BSB07 including other units relating to intellectual property

design units

The range statement relates to the unit of competency as a whole. It allows for different work environments and situations that may affect performance. Bold italicised wording, if used in the performance criteria, is detailed below. Essential operating conditions that may be present with training and assessment (depending on the work situation, needs of the candidate, accessibility of the item, and local industry and regional contexts) may also be included.

Registrabletrade marks may include:

letters, words, names, signatures, phrases, numerals, sounds, smells, shapes, logos, pictures, aspects of packaging, or any combination of these that can be represented graphically

A trade mark can be difficult to register if it is:

a generic word

a term that other traders may need to use in relation to the same kinds of goods or services

identical with or deceptively similar to a pending or registered trade mark

likely to mislead the public about the nature of the goods or services

scandalous or against the law

Note: registration of a business, company or domain name does not in itself give proprietary rights

Legislative requirements may include:

the Trade Marks Act 1995

Section 52 of the Trade Practices Act 1974

Other forms of trade mark protection include:

common law by the passing off action

consumer protection provisions of Trade Practices Act (Commonwealth) and State fair trading acts

reviewing and proliferating confidentiality agreements within organisation or among people who may need to know about the trade mark before application for registration is lodged so as to keep the trade mark secret

Benefits include:

trader protection, e.g. protecting reputation of traders, facilitating advertising, encouraging brand loyalty, building brand value, persuading consumers to try new products under the established brand

consumer protection, e.g. to facilitate choice between competing goods and services

Commercialisation potential may include:

considering the trade mark as an asset that can be bought, sold or licensed

utilisation of the trade mark as a marketing tool and the basis for building a brand

Sources of information and advice may include:

IP Australia

Attorney-General's Department

Australian Copyright Council

State and Commonwealth government agencies

lawyers specialising in intellectual property

trade mark attorneys and patent attorneys

accountants

business advisors

marketing consultants

branding consultants

copyright collecting societies, e.g. CAL, PPCA, MIPI, APRA, AMCOS

publications

websites, Internet

databases e.g. local and international trade mark databases

Searching databases may include using the following:

IP Australia's trade marks database which lists all the registered and pending trade marks

the Australian Securities and Investment Commission database, which lists all registered and reserved business names (www.asic.gov.au)

any other information source that is relevant to the goods or services provided by the applicant, e.g. trade directories, Yellow Pages

Investigating may involve:

using search engines on the Internet

reviewing relevant industry journals, articles, advertising, etc.

Note: The purpose is to determine whether competitors have used the proposed trade mark, or a similar mark, and developed a reputation in the mark

Processes include:

completing an approved form prescribed by the regulations, including graphically representing the trade mark on the application

paying a specified fee

having the application approved by a trade marks examiner

International trade mark registration includes:

filing for protection with the trade mark offices of overseas countries

filing for protection under the Madrid Protocol through IP Australia to seek trade mark registration in a range of countries with a single application

Monitoring may include:

observing the activities of competitors

watching the market for potential trade mark infringements

Measures may include:

bringing actions against an alleged infringer under:

the Trade Marks Act 1995

Section 52 of the Trade Practices Act 1974

the common law tort of passing off

bringing an opposition against, or seeking removal of, other trade marks which may infringe

Payment of renewal fees may refer to:

ensuring that the required fees are paid to periodically renew the trade mark registration

licence fees to ensure the use of another organisation's trade mark

Proper use of trade mark includes:

ensuring that the trade mark is used 'as a trade mark', otherwise it may become vulnerable for removal

using the mark with the correct notation (e.g.TM or ( R ))

Unit sector

Regulation, Licensing and Risk - Intellectual Property

This unit contains employability skills.