Applying for a Director Identification (Director ID) Number

Applying for a Director Identification (Director ID) Number

With the enactment of the new laws, all current company directors and anyone who wishes to become one, will be required to obtain a unique director identification (Director ID or DIN) number. This will be administered by a new national registry service, the Australian Business Registry Services (ABRS). Unlike the previous system which allowed any natural person to register themselves as a director in a database maintained by ASIC, this new registry will assist regulators to accurately identify directors with verified identification documents, which will assist with enforcing accountability if they commit offences or engage in misconduct, and prevent illegal phoenix activity.

Who should apply for Director ID and when?

All natural persons who are currently registered as a director, or want to be registered as a director, of a legal entity under the Corporations Act 2001 (Cth) must apply for a DIN through the new service called the Australian Business Registry Services (or ABRS). Relevant legal entities include a company, corporate trustee (including a self-managed super fund), charity or not-for-profit organisation, registered Australian body, or a foreign company registered with ASIC carrying on business in Australia.

The deadline for applying for a DIN depends on when you were appointed as a director:

  • If you are already a director on or by 31 October 2021, you must apply by 30 November 2022.
  • If you become a director between 1 November 2021 and 4 April 2022, you must apply within 28 days of your appointment.
  • If you become a director from 5 April 2022, you must apply prior to your appointment or registration of a company.

Failure to apply by the required date may result in criminal or civil penalties of 5000 penalty units, which equates to up to $1.11 million. From the date you receive your DIN, it will be attached to you permanently, even if you cease to be a director, move interstate/overseas or change your name.

How do you apply for a Director ID through the ABRS?

You must apply yourself as you must verify your own identity. However, a staff member at Etheringtons Solicitors can assist you to understand the new DIN requirements and provide support throughout your application. To apply, you must:

  1. Set up your MyGov ID login, ensuring you achieve standard or strong identity strength, and download the relevant phone application.

If you are unable to do this, you can complete your application through a slower phone application or paper form which will be available in November 2021 but you must still complete step 2.

  1. Prepare your documentation as evidence of your personal This documentation must be verifiable by the ATO and will include the following:
    • Tax file number (TFN),
    • Residential address as held by the ATO, and
  • Any two of the following personal information documents:
    • Bank account statement
    • ATO notice of assessment
    • Superannuation statement
    • Dividend statement
    • Centrelink payment summary
    • PAYG payment summary.
  • If your legal entity has an Australian Business Number (ABN), you will be required to confirm whether that organisation is registered as a company with ASIC (with an appropriate Australian Company Number), as an Australian Body (with an appropriate Australian Body Number (ARBN)), or as a foreign company (with an appropriate ARBN).
  1. Once you have a myGovID you can log in and If you can’t apply online you can use a downloadable form instead – Application for a director identification number (NAT75329, PDF, 306KB).

How Etheringtons Solicitors can help

 A solicitor or other staff member at Etheringtons Solicitors can provide clarification of the relevant law and its relation to your individual circumstances. If you need further advice or assistance with business law matters, please contact one of our experienced solicitors on (02) 9963 9800 or via our contact form.

Trademarking a Business with a Geographical Place Name

Trademarking a Business with a Geographical Place Name

Many businesses choose to include a geographical place in their business name. Using a suburb or location communicates to customers where a business is located or from where their products originate. This is effective in helping to build a local client base and enhancing a business’ reputation.

The inclusion of a geographical place in your business name, however, may make it difficult to register that name or logo for a trademark.

Trademarking a business name or logo

In order to trademark a business name with IP Australia, you must satisfy the distinctiveness test. The ability to register a trademark is determined by whether the business name or logo is new and distinctive from any other names or designs that have been registered through IP Australia or that may be registered in the future.

To have a valid trademark, therefore, it is essential that your business name and design is distinguishable from other businesses. A business may be prevented from registering their trademark if their name or logo is identified as being too similar to that of another business.

Registering a geographical place name

For this reason, it is difficult to trademark a business name with a geographical term because this prohibits any other businesses that are operating in the same location to promote their goods or services. IP Australia considers this to be an unfair monopolisation of a geographical term.

It is particularly difficult to register a trademark with a geographical place name if the location features a range of goods and/or is a location name found commonly across Australia.

To circumvent these location hindrances, there are two ways that a business can trademark a geographical place name:

  1. Stylised Logo
  2. Ongoing Use and Community Recognition

Stylised logo

According to IP Australia, if a logo depicts a “highly stylised” or “unusual representation” of particular goods, services, or locations, it may be sufficient to satisfy the distinctiveness test.

If a logo portrays a conventional depiction of goods, or includes a map or national symbol, it is not likely that the trademark will be validated. This means that if a business were to use a common geographical place name, they would need to make sure their logo design is highly distinguishable so it is able to be registered as a trademark.

Ongoing use and community recognition

As an alternative to creating a distinctive name or logo, if your business is able to demonstrate that you have used a geographical place name extensively over time, IP Australia may accept the trademark based on ongoing use and community recognition.

This involves submitting evidence to prove you have continuously used the geographical place name in the market for a period of at least three years, and that customers distinguish your goods and services from others in the area on the basis of that geographical name. For more information on the benefits of registering a trademark for building brand awareness and strengthening your business reputation, please see our blog.

How Etheringtons Solicitors can help

A solicitor at Etheringtons Solicitors can provide clarification of the relevant law and its relation to your individual circumstances. If you need further advice or assistance with IP law matters, please contact one of our experienced solicitors on (02) 9963 9800 or via our contact form.

Am I Liable For the Voluntary Assumption of Risk?

Am I Liable For the Voluntary Assumption of Risk?

In this article, we identify the liabilities involved in the voluntary assumption of risk and how to avoid breaching duty of care.

In March 2010, a security guard sued his employer and the owner of Lidcombe Power Centre, for PTSD resulting from an intruder threatening his life. This case, Capar v SPG Investments Pty Ltd t/a Lidcombe Power Centre (2020) (‘Capar’), sheds light on how far an employer’s duty of care extends when an employee voluntarily assumes risk of injury.

The Capar case

The plaintiff was employed as a security guard for Lidcombe Power Centre. Whilst on duty surveying the CCTV footage, he detected an intruder entering the premises. As the plaintiff left the control room to investigate, he came upon the intruder who wielded an axe and threatened to kill him. The security guard fled to the control room for safety and called the police; who arrived shortly and apprehended the intruder. The guard suffered from PTSD as a result of the incident and initiated proceedings in negligence against the owner of the shopping centre, the security company that was paid to provide security for the premises, and his own employers (the sub-contractors of the security company).

Injured persons and “obvious risks”

The plaintiff’s negligence claims were initially dismissed by the NSW Supreme Court.

In accordance with the Civil Liability Act 2002 pt 1A div 4, the Court ruled that the security guard was aware of the “obvious risk” of mental or physical harm when he chose to leave the control room and confront the intruder.

In negligence proceedings, the injured person is ‘presumed to have been aware of the risk of harm if it was an obvious risk’.  This means that the injured person is assumed to be conscious of risk ‘even if the person is not aware of the precise nature, extent or manner of occurrence of the risk’.

Voluntary assumption of risk and duty of care

The Civil Liability Act 2002 states that ‘a person (the defendant) does not owe a duty of care to another person (the plaintiff) to warn of an obvious risk to the plaintiff’.

In the Capar case, the security guard’s contract did not specify that he was obligated to confront the intruder. Owing to his voluntary assumption of an obvious risk, his employer’s duty of care was found not to extend to the actions which caused PTSD.

The principles of duty of care in the Civil Liability Act 2002 pt 1A div 2 stipulate that a person is negligent in taking precautions against a risk of harm if;

  1. the risk was foreseeable, and
  2. the risk was not insignificant, and
  3. in the circumstances, a reasonable person in the injured person’s position would have taken those precautions.

Owing to these conditions, neither the occupier of the premises, the contractors nor the security guard’s employers, were made liable for negligence.

How do I avoid breaching duty of care?

There are a number of steps that can be taken to help protect your business from risks of liability in negligence:

  • Ensure all staff understand their duties and perform them correctly. Have a clear written guide because if staff are unclear on their responsibilities, the likelihood of risk and personal harm may increase.
  • Implement security measures on your premises that reduce the risk of liability caused by the actions of trespassers.
  • Communicate a clear plan to all employees in case of an invasion. In the case of an invasion, staff should not approach or confront an intruder. They should retreat to safety and contact the police immediately.
  • If you are employing security personnel, have clear and explicit discussions on the extent of their role and the potential risks that may arise.

If you would like to learn more about how breaches to duty of care may affect your personal or professional life, please see our blog for more information.

How Etheringtons Solicitors can help

A solicitor at Etheringtons Solicitors can provide clarification of the relevant law and its relation to your individual circumstances. If you need further advice or assistance with employment law or negligence matters, please contact one of our experienced solicitors on (02) 9963 9800 or via our contact form.

Welcome Update to Electronic Processes for Businesses during COVID-19

Welcome Update to Electronic Processes for Businesses during COVID-19

Disclaimer: The directives in this article relating to the COVID-19 pandemic may no longer be in force. Please use caution if you are citing legislative material from this article as laws are subject to change. We recommend that you seek the most up-to-date law.

The Treasury Laws Amendment (2021 Measures No. 1) Act 2021 (“the Act”) was passed by Federal Parliament on 10 August 2021 and became effective from 14 August 2021. The Act amends section 127 of the Corporations Act 2001 (Cth) (“Corporations Act”) to facilitate the electronic processes and execution of documents and allow businesses to carry on “as usual” as much as possible whilst navigating the challenges of COVID-19. The changes made will remain in effect until 31 March 2022.

Australian Institute of Company Directors CEO and Managing Director Angus Armour has welcomed the changes, saying:

‘This reform provides greater certainty for companies to make disclosures to the market, without the apprehension of speculative class actions challenging this disclosure with the benefit of hindsight, and that is in everyone’s interest. We are hopeful that over time these changes will also help to rebalance skyrocketing insurance premiums’. 

Apart from amending the Corporations Act to allow companies to execute company documents electronically, the Bill also allows company meetings (including general meetings) to be held virtually. Companies may also send notices of meetings through electronic communications or by providing sufficient information to allow electronic access to the notice.

Electronic execution of documents 

We have written previous articles on how legal documents such as a will or an affidavit can be witnessed electronically and the witnessing of the fixing of seals can be performed electronically via audio-visual link. However, in these instances, it must be stated within the document that the fixing of the seal has been observed by electronic means.

Documents can also be executed using separate copies, providing that the copy includes all the original document’s contents and the signing method must identify the signee, record their intention to sign and must be reliable for the circumstances of the signing, for each of the signatories.

Notices to Shareholders

Whilst previously the default position was to send hard copies of notices of meetings (and shareholders can still elect to receive physical copies), it is now sufficient to provide them electronically via email or by sending an electronic address from which the material may be downloaded.

Company Meetings

The Act has introduced new emergency powers of relief that allow the Australian Securities and Investment Commission (ASIC) to grant companies temporary relief from certain Corporations Act requirements. Notably, ASIC can now make a determination to extend the timeframe for public companies to hold an AGM on a class basis where extraordinary circumstances (such as COVID-19) would make it unreasonable for such meetings to be held.

The changes also allow companies or registered schemes to hold virtual meetings, even if their company constitution does not allow it, where ASIC considers it would be unreasonable to expect them to conduct in-person meetings. Importantly, such relief cannot be in place for more than 12 months after it has been commenced.

Whilst these reforms are great news for the 2021 fiscal year AGM, if companies wish to continue using virtual mediums to conduct shareholder meetings, it is prudent to update the company constitution to reflect this. Further, companies will still need to be cognisant of their obligations to allow shareholders to speak and ask questions orally as well as in writing within the virtual AGM format. Therefore, the platforms used by companies will need to offer a two-way audio exchange such as through the video conferencing platform Zoom.

How Etheringtons Solicitors can help

A solicitor at Etheringtons Solicitors can provide clarification of the relevant law in relation to your individual circumstances. Furthermore, Etheringtons Solicitors can assist with a variety of Business and Company Law matters. If you need further advice or assistance understanding your company’s obligations, please contact one of our experienced solicitors on (02) 9963 9800 or via our contact form.

Deceptive Similarity in a Craft Beer Trade Mark Dispute

Deceptive Similarity in a Craft Beer Trade Mark Dispute

A trade mark that distinguishes one trader’s goods from another is a valuable asset, however a recent Federal Court case concerning craft beer has demonstrated that registered trade marks are not always protected from cancellation in a trade mark dispute.

In the case of Urban Alley Brewery Pty Ltd v La Siréne Pty Ltd [2020] FCAFC 186, Urban Alley Brewery Pty Ltd’s (Urban Alley) appeal was dismissed and their trade mark “Urban Ale” was cancelled under section 88(1)(a) of the Trade Marks Act 1995 (Cth). This was an important case which determined that a trade mark registration must be cancelled or rejected if it is deceptively similar to another registered trade mark.

Facts

  • Urban Alley was a craft brewery in Melbourne which produced a beer product called “Urban Ale”.
  • La Siréne also operated as a craft brewery in Melbourne and produced a beer product under a similar name “Urban Pale”.
  • La Siréne first sought orders to cancel the Urban Alley’s registered trade mark under the Trade Marks Act 1995 (Cth) s 88(1)(a).

Significance of the Case

This case demonstrated the importance of adopting a trade mark which is sufficiently distinctive from other existing trade marks and ahead of prevailing trends. Further, difficulties may arise when descriptive words are used. It was concluded that the terms “urban” and “ale” were too descriptive of beer to be distinctive from other goods or services. Therefore, the key terms of Urban Alley’s trade mark had become descriptive as a result of prevailing trends, causing Urban Alley’s trade mark to be deemed invalid for lack of distinctiveness and deceptive similarity.

As there was no factual distinctiveness, they upheld the primary judge’s finding that Urban Alley’s trademark should not have been registered, and thus it was cancelled.

Trade Marks Distinguishing Goods or Services

The key point is that a trade mark must be capable of distinguishing an applicant’s goods or services. It was found that Urban Ale was not “inherently adapted” to be capable of distinguishing its beers from those of other producers. This decision was based on evidence that the term “urban” was commonly associated within the industry with beer products and breweries.

The court considered the following factors:

  • The term “urban” is not significant regarding the beer style or flavour, and has been used by numerous Australian businesses, including in La Siréne’s “urban pale” without improper motive. Instead it is used to describe the location of the brewery, as used by many other traders and journalists.
  • On Appeal, it was found that the terms “urban” and “ale” were descriptive of the goods (beer) and should be interpreted with their common meaning.
  • Urban Alley could not produce sufficient evidence that they had established a reputation based on the “urban ale” trade mark.

The Test for Deceptive Similarity

The relevant test for deceptive similarity is to compare between a trade mark and the recollected impression retained of another previously registered trade mark. A side by side comparison of trade marks may not convey the same meaning or idea, however, they may when imperfectly recalled under this test. Furthermore, the trademark must be viewed in its entirety, unlike the substantially identical which requires the examination of individual trade mark elements.

Etheringtons Solicitors can assist you with enforcing your trade mark

Etheringtons Solicitors can advise you throughout the development and adoption of your trade mark to ensure that it is distinguishable from other goods and services and to avoid future trade mark disputes.

We can assist you with registering a trade mark in Australia and advise on whether your trade mark includes any descriptive qualities which could affect its validity. We may advise you to consider securing other versions of trade marks which have the potential to cause a challenge risk.

If you need further advice or assistance regarding trademarks or other intellectual property matters, please contact one of our experienced solicitors on (02) 9963 9800 or via our contact form.

Registering a Trade Mark in Australia

Registering a Trade Mark in Australia

The advantage of registering a trade mark is that it confers far more benefits than registering a business name, company name or domain name. Marketing is an important business tool, and a registered trade mark is crucial in allowing you to protect any value or credibility which you have built on your brand. 

What is a trade mark?

A trade mark identifies a product or service, distinguishing it from the goods or services of other entities in the same sphere. A registered trade mark protects any branding element within a business including letters, numbers, words, phrases, sounds, smells, shapes, logos, pictures and aspects of packaging. Registration alone of a business name, company name or domain name does not give you that kind of protection.

Registering a trade mark allows the owner of the trade mark to commence legal action to stop others using it. Trade marks can be used to help build market position and stop others from imitating your brand. The registration of a trade mark is effective for 10 years and can be renewed for further 10 year periods thereafter.

Registration of a trade mark covers the entire Commonwealth of Australia. For worldwide protection, an application can be filed with each country in which the trade mark will be used, or a single international application can be filed through IP Australia nominating the countries in which protection is required.

Applying for a trade mark 

Trade marks are registered in specific classes relevant to the description of the goods or services for which the mark will protect. The application for registration must nominate one or more classes of goods or services for which the mark is intended to be used and associated. If the mark applies to more than one class, the wider the protection that mark has once the trade mark is registered.

Before making an application to register your trade mark, the following should be considered:

  • Identify the relevant class of goods or services for which the mark will apply. Schedule 1 of the Trade Marks Regulations 1995 prescribes the available classes and describes the types of goods of services specific to each class. A search should be carried out before applying to register a trade mark to check that a similar trade mark is not already registered in that class.  An application to register your trade mark could be rejected if there is an identical or similar trade mark already registered which covers similar goods or services. 
  • Only minor changes can be made to a trade mark once an application has been filed and published.
  • A trade mark registration is for the goods and services you actually trade in or intend to trade in in the near future. Once an application is filed and registered, goods and services cannot be added. Therefore, you should clearly define the marketplace you trade in to ensure the best possible protection.
  • Your trade mark must be something that is capable of distinguishing your goods and services. Exclusive rights are difficult to register over everyday language, names and descriptions of products and services 

Once you are happy with your trade mark, you can apply to register it through the IP Australia website. You can also request an assessment of the likelihood of your trade mark achieving registration through TM Headstart.

The cost of applying for a trade mark will vary depending on the scope of the application. Generally, the minimum cost to apply is $120 for each class of goods and services. In Australia there are 45 different classes of goods and services and each additional class costs an extra $300. 

The application process

Once your trade mark is accepted, it will be advertised in the Australian Official Journal of Trade Marks and the application is open to opposition for a period of 3 months (which can be extended by an opponent for a further 3 month period where there has been an error or omission).

If your application is not challenged, your trade mark will be registered once the registration fee is paid (payment must be made within 6 months from the date acceptance is advertised or your application will lapse).The registration of a trade mark in Australia takes at least 7 months after an application is filed.

Seek legal advice

When applying for an Australian trade mark it is important to ensure your trade mark description and classes accurately reflects of the goods or services you intend to use your trade mark on. By investing in protecting your brand today, you can avoid the costly and uncertain exercise of preventing unauthorised use of your unregistered trade mark in the future. We are experienced in intellectual property matters and can work with you to ensure your trade mark is registered in the appropriate class or classes, and to respond to any opposition to the proposed registration. We are also able to assist with trade mark and copyright disputes.   

If you or someone you know wants more information or needs help or advice regarding trade marks, please contact us on (02) 9963 9800 or via our contact form.