Products, processes and/or trade marks covered by intellectual property rights should be marked (and/or marketed) accordingly. This puts potential infringers on notice and thereby improves the prospects of recovering damages for infringement.
Virtual marking (VM) is an alternative to conventional marking and is usually the better option, in our view.
Markings such as ‘Patent pending’ and ‘AU patent application no. 2018123456’ have long been applied to products, packaging and/or marketing materials. Such markings are still appropriate, particularly in very simple cases (e.g. in relation to a single right for a single product in a single country).
Typically, the appropriate markings will change from time to time, such as when a patent is granted on a patent application or when a patent ceases. It is important to keep the markings up to date. Falsely marking a product as patented (or a trade mark as registered, etc) is an offence. Updating conventional markings can be costly, e.g. if packaging has to be replaced.
VM minimises the cost of updating the markings. VM entails:
- maintaining a webpage listing the products, processes and/or trade marks and the corresponding intellectual property rights;
- maintaining a credible record of what the webpage looks like from time to time; and
- marking products, packaging and/or marketing materials with a reference to a webpage, e.g. ‘Intellectual property rights applied for – see www.mywebpage.com.au/ipr’.
VM is officially recognised in the United States. Whilst the position is not as clear elsewhere, virtual marking is usually the better option, in our view.