by Paul RojasRoad Map to Trade Marking
Trade Marking is the process of creating an identifying aspect of a product or service that distinguishes it from other similar products or services within the marketplace. A trade mark may include a word, phrase, letter, sound, number, shape, smell, logo, picture or aspect of packaging or a combination of these.
Upon Registration the trade mark covers all areas of Australia. It gives the registered owner the legal right to use the name, logo and picture, for the goods and services under which it is registered.
While you are not required to register your trade mark, it is prudent to do so as common law action may arise if you use a trade mark that is not registered.
Why would you trade mark?
A trade mark is commercially recognised as being a vital element in developing and maintaining a brand and viability of a business. The development of a recognised trade mark is an integral part of an effective marketing strategy for goods or services and a business in general.
A recognised trade mark quickly becomes an identifying element for a customer base. Trade marking becomes pivotal in building your goodwill and reputation, and will ultimately contribute to the overall success of a business.
Is your mark registrable?
In order to register a trade mark it needs to meet the requirements of the Trade Marks Act 1995 (Cth). The applicant must have legal personality and is to be classified as either:
- an individual;
- Company;
- Incorporated association; or
- a combination of these.
Trade Mark needs to be distinctive in nature
Your trade mark needs to be distinctive in nature and is not something that is used in the everyday vernacular. The name cannot be descriptive in nature and can not impose any connotations that would be perceived to be unfair or unequitable to others operating within the marketplace.
In terms of registering the name, it is important to ensure that you do not have a combination of commonly used initials or surnames. There is also to be no confusion between other goods or services currently within the marketplace. Provided that you comply with the above requirements, there is a higher chance of successfully achieving registration.
Trade Mark needs to not be used in normal course of trade
The trade mark needs to be a new addition to the market place, in order to avoid confusion. It is crucial to ensure that customers are not confused between trade marks as the repercussions of this could be potential legal action.
It is prudent to conduct a search for any registered or pending trade marks which may already be in existence. It may be possible for similar trade marks to co-exist and be registered provided that the goods and services offered are in different classes or classifications.
Identification of classes
Trade marks are divided into groups of goods or services, these two categories are then divided into a further 45 classes. The classes can be located at the link below:
http://xeno.ipaustralia.gov.au/tmgns/facelets/tmgoods.xhtml
It is crucial that you clearly outline a clear, concise description of your services which you wish to trade mark.
Does a trade mark expire?
The registration of a trade mark lasts for 10 years. Upon expiry you may renew your registration for an addition 10 years and pay the prescribed fee. There is significant business value that can be placed upon registration and renewal of trade marking and ultimately the decision to obtain a trade mark will need to commercially assessed on an individual basis.
The Application process
Applications for trade marks are to be filed with the Trade Marks Office of Intellectual Property Australia.
Upon submitting your trade mark for application you will be allocated a filing number which enables you to easily track your application. Should your trade mark be accepted for registration, the details pertaining to your application will need to be advertised in the official Journal of Trade Marks.
From this point onwards anyone may lodge an objection to your trade mark application within three months of the advertisement date. If no objection is lodged against your trade mark application, your trade mark becomes registrable upon payment of the registration fee.
You will then be required to pay the registration fee no later than 6 months from the date the acceptance is advertised.
Upon registration IP Australia will issue you with a Certificate of Registration and record the details pertaining to your trade mark in the Register of Trade Marks.
Time frame of the application process
The estimated time frame for a trade mark application is approximately 5 months if no issues arise during the
application. Upon being granted a trade mark your rights will accrue from the date of filing the application rather than the date you are notified of successfully obtaining the trade mark.
Trade marking a Logo (colours)
Trade mark may be registered:
- with limitations as to colour;
- with limitations in respect to whole or part of the trade mark; or
- in the capacity that the trade mark is registered without any limitations as to colour.
However, if your trade mark is registered without colour limitations, your trade mark is taken to be registered to cover all colours.
For more information on trade marking and other areas of intellectual property law, please contact our Intellectual Property experts.
by Paul RojasProblems with a builder in Queensland?
If you have been the victim of defective or incomplete domestic building work then you may be eligible to claim from the QBCC insurance scheme to allow rectification of the defects and completion of the works.
Queensland Building and Construction Commission (QBCC) administers a compulsory domestic building insurance scheme (Scheme). When you sign a building contract for the construction or additions to a domestic building, the insurance is paid by the builder.
The Scheme applies where there is defective building work or where the contract with the builder has been lawfully terminated or the building company has become insolvent (liquidated or bankrupt).
Once a claim has been made to the QBCC, an inspector will assess the defective or incomplete work and issue a notice to the builder to rectify or complete the work within (usually) 14 days. If the original builder refuses or is unable to rectify the work, the QBCC will ask you to obtain quotations from other contractors.
Assuming these are in order, the QBCC will approve and insurance payment for the lowest quotation and then you may choose any contractor to rectify the problems.
Insurance is usually available for minor defects up to 6 months from the date of practical completion and for structural or major defects up to 6 years.
The QBCC also offers mediation services and may be able to assist you with general inquiries with respect to builders prior to commencement of building works.
Prior to entering into a contract with a builder, we recommend that you make inquiries of your builder’s qualifications, seek references from past clients and consult with your solicitor.
If you would like any information on the QBCC or your entitlement to claim under the Insurance scheme, contact us today.
For more information on the QBCC visit their website at www.qbcc.qld.gov.au.
by Paul RojasThe Subcontractors’ Charges Act – A Case Study
In this construction law blog, Paul Rojas discusses a recent case where the validity of a charge issued pursuant to the Subcontractors’ Charges Act 1974 (Qld) (“the SCA”) was considered.
by Paul RojasWinding up a company based on Shareholder disputes
It is not uncommon in closely held private companies for there to be disputes between the shareholders which result in a complete breakdown of relationship. In such cases-what can the shareholders do to resolve the dispute?
In Van Wijk (Trustee) ,in the matter of Power Infrastructure Services Pty Ltd, (214) FCA 1430, (12th December 2014) the shareholders could not resolve their differences and applied to the Court for orders appointing a liquidator and winding up.
The Court granted the orders sought under the “just and equitable” provisions of the Corporations Act:
Under S 461 (1) (k) the Corporations Act 2001, the Court may order a winding up if “the Court is of opinion that it is just and equitable that the company be wound up.”
In this regard, the Applicant relied on s 467(4) of the Act as raising relevant considerations.
That subsection provides where the application is made by members on the ground that it is just and equitable that the company should be wound up, the court, if it is of the opinion that:
(a) the applicants are entitled to relief either by winding up the company or by some other means; and
(b) in the absence of any other remedy it would be just and equitable that the company should be wound up,
must make a winding up order unless it is also of the opinion that some other remedy is available to the applicants and that they are acting unreasonably in seeking to have the company wound up instead of pursuing that other remedy.
In the case, the company was solvent and trading. The dispute was acrimonious and the mutual co operation and trust between the competing shareholders had broken down completely. The Court reviewed the authorities and cited with approval authorities where the disputes led to a frustration of the commercially sensible operations of the company in accordance with the incorporator’s expectations and a loss of confidence was justified.
In the circumstances-while acknowledging the consequences of such a drastic option-the Court appointed a provisional liquidator.
The decision highlights the grounds for winding up under the just and equitable grounds where there is a shareholders dispute which results in a breakdown of mutual trust and confidence such that it will frustrate the commercial operations of the company.
It is important that in establishing companies that in the first instance-there is a proper means of resolving disputes in shareholder agreements and that efforts are made to exhaust alternative dispute resolution.
In the absence of a resolution however-those shareholders affected may rely on the Courts for an ultimate solution.
For assistance and advice on shareholder disputes, contact us.
by Paul Rojas10 Golden Rules of Credit Control
The first step to effective credit control is to consider whether your business will provide credit and if so, to whom and on what terms.
by Paul RojasHas your company been served with a Statutory Demand?
If your company has been served with a creditors statutory demand for payment you must act with urgency, as allowing it to expire can cause irrevocable harm.
The most simple way that a company can be wound up and liquidators appointed is when an application is brought after the expiry of a statutory demand. The statutory demand allows 21 days from service within which the recipient company must satisfy the creditor of the amount contained therein, or otherwise bring an application before the Court to have the demand set aside on grounds of the demand being defective or that there is a genuine dispute in relation to the debt.
Should the company fail to comply with the demand, by making full payment of the demand within 21 days or by applying to have the demand set aside, a company is deemed to be insolvent and a creditor may make an application to the Court to wind up the company. No further evidence is required to prove insolvency.
For a company that may be asset rich but suffering from a temporary lack of liquidity, 21 days to comply with a statutory demand will often not be enough time in which to realise some of its assets and to make good on the demand.
Companies can attempt to oppose a winding up application on the basis that the company is in fact solvent. This is a complex application to bring before the Court as it involves, amongst other things, overturning the presumption of insolvency. A more effective approach is to deal with creditor who issued the statutory demand within the 21 day period to ensure that the presumption of insolvency does not arise at all.
If a company has been served with a demand and it does not consider that it owes the debt or that there is an irregularity in the document it may apply to the Court have the demand set aside. However, this application must be made within 21 days and there is a large volume of case law that indicates the Court treats the 21 days in the strictest of terms.
Alternatively, if your company does owe the debt raised in the statutory demand, it is often beneficial to seek advice with a view to formally approaching the creditor’s legal representatives on a ‘without prejudice’ basis to attempt to negotiate payment terms, allowing for further time outside of the 21 day limit.
If your company has been served with a statutory demand, contact us for advice in relation to the most appropriate response for your circumstances.
by Paul RojasDirectors who provide Statutory Declarations personally liable
In the decision of 470 St Kilda Road Pty Ltd v Robinson [2017] FCA 597, the Federal Court of Australia found that a Chief Operating Officer of a building and construction company was personally liable for falsely declaring in a statutory declaration that all subcontractors had been paid.
Facts
In October 2010, 470 St Kilda Road Pty Ltd (“the Principal”) engaged Reed Constructions Pty Ltd (“the Builder”) for the redevelopment of an office building at 470 St Kilda Road, Melbourne (“the Contract”). The Contract required the Builder to provide a statutory declaration prior to delivering a payment claim which affirmed all monies owing to subcontractors and suppliers had been paid.
Mr Glenn Robinson (“Mr Robinson”), as the Chief Operating Officer of the Builder, sent to the Principal a statutory declaration (“the Declaration”) confirming all subcontractors and suppliers have been paid in full. The Builder then submitted a payment claim seeking payment.
The Principal relied upon the Declaration and made payment $1,426,641.70 to the Builder.
The Declaration was later discovered to be false after the Builder entered into liquidation owing $132 million to unsecured creditors.
Mr Robinson argued that the Declaration was merely a statement of his mind and one as to the enquires that had been made to inform that state of mind.
Held
The Court held that the Declaration of Mr Robinson was not merely a statement of his state of mind, but rather a solemn promise acknowledging that the contents are true and correct, which, if falsified, amounts to perjury.
Mr Robinson was held to have engaged in misleading and deceptive conduct as he knew the Declaration was untrue and had the Principal known the true position of the Builder, it would not have made payment of the payment claim.
The Court held Mr Robinson personally liable to pay the Principal the sum of $1,426,641.70, being the total of the claim previously submitted by the Builder to the Principal.
Practical Considerations
The requirement for statutory declarations certifying payment of all outstanding subcontractors and suppliers is commonplace in the construction industry. The practical effect of the decision highlights the importance of ensuring that all reasonable steps are taken to warrant the truth of the statutory declarations at the time it is signed. It also highlights the consequences of failing to take these steps or for signing an untrue statutory declaration.
Additionally, directors need to be aware of the possible implications of this conduct on director’s liability insurance which may limit or void the director’s coverage.
The RCR Construction team are market leaders in construction litigation and dispute resolution. Contact us or visit our dedicated Construction website for more information on your rights and obligations.
The above information is intended only as general information and should not be interpreted or relied upon for legal advice.
by Paul RojasThe New Security of Payment Regime
In late 2017, the Queensland Government enacted the Building Industry Fairness (Security of Payment) Act 2017 (“the BIF Act”). The BIF Act brings significant changes to the security of payment regime for the Queensland building and construction industry.
by Paul RojasQ&A: Using Caveats Over Real Property in Debt Collection
Common questions and answers for using caveats over real property in debt collection…
by Paul RojasBuilding Industry Fairness (Security of Payment) Act 2017 – Major changes for the Queensland building and construction sector are here
On 10 November 2017, the Building Industry Fairness (Security of Payment) Act 2017 received royal assent.
Although the key provisions of the Act do not come into force until a date to be proclaimed by the Queensland Government, it is anticipated that the major reform to the operations of the Queensland building and construction industry will take effect from early 2018.
The controversial changes were enacted following a six-months consultation with the industry stakeholders and an intensive advertising campaign focusing primarily on the project bank accounts as a mechanism for a ‘fair’ recovery of payments for the tradie subcontractors. 1
The Act consolidates the current Queensland security of payment legislation2 and introduces some important amendments to the Queensland Building and Construction Commission Act 1991, particularly in relation to tougher measures in prosecuting unlicensed building work and targeting insolvency in the building industry. We will be discussing the changes to the QBCC Act in a separate publication, so watch this space.
Project Bank Accounts
The mandatory use of project bank accounts will be gradually phased in over the next two years. From the early 2018, all Queensland Government construction projects of the value between $1 million and $10 million will be covered by the operation of the Act. From 1 January 2019, all of the construction projects above $1 million including the private, 3 commercial and government sector will be required to operate the compulsory project bank accounts. Separate contracts for building work at the adjacent sites for a combined value of over $1 million between the same parties will be taken to be a single contract and thus also covered by the project bank account requirements.
Although a large body of the procedural matters will be addressed by a regulation, which is yet to be drafted, we have summarised the most important provisions with respect to the project bank accounts below.
Despite the flavour of the earlier advertising campaign and the Government’s various press releases, 4 only the head contractors and tier one subcontractors 5 will be covered by the new security of payment regime through the operation of project bank accounts, leaving the end suppliers and subsequent subcontractors out.6 However, these categories of the building industry operators will still be able to recover payments from their employers through the usual channels, like the payment claims and subcontractors’ charges.
Each of the project bank accounts will be utilised to hold on trust only the following amounts:
- payments by the principal to the head contractor under the building contract;
- payments to a subcontractor from the head contractor under the first-tier subcontract;
- retention monies withheld under the first-tier subcontract; and
- monies the subject of a payment dispute.
This system will necessitate the operation of three separate trust accounts7 for each project, with the head contractor being the trustee and beneficiary of these accounts, while each of the first-tier subcontractors are to have a beneficial interest in the amounts held on trust. The accounts must be operated by a financial institution within Queensland and be generally opened within 20 business days after the head contractor enters into a first-tier subcontract.
There are strict requirements for the operation of the project bank accounts, in particular, deposits and withdrawals only by electronic transfer, withdrawals and transfers between the accounts only by using a payment instruction given to the financial institution.
The head contractor will not be entitled to pay itself unless sufficient funds are held in the trust account to cover payments due to the subcontractors and must cover any short fall in the trust funds, which is unpaid by the principal. If there are insufficient funds in the account the head contractor must pay all of the subcontractors to whom payments are due on a pro rata basis.
There is an express exclusion of the trust account funds from the creditor claims (other than the subcontractor beneficiaries), as well as a prohibition on investment of these funds other than interest earned on each of the accounts. The head contractor is unable to recover the costs of the administration including the bank fees from the funds held in the project bank accounts or from the subcontractor beneficiaries.
Payment claims
The Act establishes a new process for progress payments and associated dispute resolution, which is largely based on the modified provisions of the Building and Construction Industry Payments Act 2004. As opposed to the project bank account provisions, this process is applicable to all suppliers and subcontractors who contribute to a construction contract and the definitions of construction work and the related goods and services for the purposes of the payment claims are very wide.
The new procedure for submission of the payment claims is somewhat more favourable towards the claimants (similar to the old regime prior to the 2014 amendments).
The requirements for the payment claim remain unchanged, although there is currently no express prerequisite for stating that a payment claim is made under the Act (similar to the security of payment legislation in NSW). However, further requirements as to the form and content may be enacted under a regulation for both the payment claim and the payment schedule.
An additional final reference date is added for terminated contracts.
If the construction contract does not provide for a due date of a progress payment, the due date will become the 10 th business day from the date a payment claim is made.
A payment claim must generally be given within 6 months of the carrying out the work or the supply of the related goods and services, unless provided for otherwise in a construction contract. Although only one payment claim is to be made for each reference date, any amounts from previous payment claims may be included in the subsequent claims.
The payment schedule must be provided by no later than 25 business days after the day the payment claim is given or earlier if the shorter period is specified under the relevant construction contract. If the respondent fails to give the payment schedule, as prescribed, the amount in the payment claim becomes payable by the due date for the relevant progress payment, which means that if the contract is silent as to the due date, the respondent is immediately liable for the full amount of the payment claim.
Penalties, as well as disciplinary action under the QBCC Act, now apply for a failure to provide a payment schedule in response to a payment claim.
Dispute Resolution Process
If the respondent does not issue a payment schedule and fails to pay the amount of the payment claim, the claimant may elect to recover the claim as a debt through court action or to apply for adjudication.
There is a further entitlement for the claimant to suspend work with notice upon the conditions specified in the Act.
The claimant may apply for adjudication within the following time frames:
- for a failure to deliver the payment schedule: 30 business days after the later of the due date for the relevant progress claim or the last day when the respondent could give the payment schedule.
- for a failure to pay the amount stated in the payment schedule: 20 business days after the due date for the relevant progress payment; and
- for a dispute with respect to the amount stated in the payment schedule: 30 business days after the claimant receives the payment schedule.
The respondent will be unable to submit an adjudication response if no payment schedule was given with respect to the payment claim. Any adjudication response also may not include any new reasons, which were not included in the payment schedule.
The adjudication response must be given to the adjudicator within the following time frames (‘response date’):
- for a standard claim within the later of 10 business days after receiving a copy of the adjudication application or 7 business days after receiving adjudicator’s notice that the adjudication application was accepted.
- for a complex claim (over $750,000 excl GST) 15 business days after receiving a copy of the adjudication application or 12 business days after receiving adjudicator’s notice that the adjudication application was accepted. These timeframes may be further extended at the discretion of the adjudicator for up to 15 additional business days upon application (which must be made within a specified time limit).
After the adjudication response date (which will apply as specified above regardless of whether the respondent is entitled to give the adjudication response), the adjudication decision must be made within 10 business days for a standard claim and 15 business days for a complex claim respectively.
As an alternative to the adjudication process, the claimant may give a 5 business days’ warning notice to the respondent of the intention to commence court proceedings to recover the payment claim. Such notice must be given within 20 business days from the due date of the relevant progress payment. The claimant will then be able to apply for judgment provided that the court can be satisfied that the progress payment was not paid by the due date and that the payment schedule was not given (if applicable). The respondent will be unable to bring as counterclaim or any defence with respect to the matters arising out of the relevant construction contract in those proceedings (similar to the old regime prior to the 2014 amendments).
Subcontractors’ Charges
The provisions of the Subcontractors’ Charges Act 1974 appear to have been adopted with little change. The most notable variation however is the inclusion of the mandatory response period to a claim of charge within 10 business days of service of the claim. Further, a charge under Chapter 4 of the Act will not attach to the funds held in the project bank accounts, which means that from early 2018 the subcontractor’s charges are likely to be only effectively utilised by the subcontractors below the first tier under a building contract. If the claim of charge is issued, the claimant will be unable to enforce a progress claim or to initiate proceedings under Chapter 3 of the Act unless the claim of charge is withdrawn.
Further observations
The Act provides the QBCC with an active role as a watchdog for compliance including, for example, audit of the project bank accounts, registration and administration of the adjudicators and processing of the various hefty fines and penalties under the Act. Strict compliance is anticipated to be enforced, given that imprisonment terms apply to the offences against several provisions of the Act. However, it is yet to be clarified by regulation as to due processes for imposing those penalties.
Curiously, the Act contains a provision for a compulsory review of the reform by the minister to be commenced no later than 1 September 2018, which indicates that the new law is in a live test mode for now.
These changes will affect every stakeholder in the building and construction industry in Queensland. The above information is intended only as a selective overview of the provisions of the Act and should not be interpreted or relied upon for legal advice.
For further information please contact our construction team on (07) 3009 8444.
1 For example, TV commercial from Queensland Department of Housing and Public Works published on Youtube on 1 February 2017.
2 Repeal of the Building and Construction Industry Payments Act 2004 and the Subcontractors’ Charges Act 1974.
3 The contract for construction of three or less residential dwellings and associated structures is currently excluded from this requirement.
4 For example, Premier’s and Minister’s statement on 30 November 2016 published by the Queensland Government.
5 The relevant tiers of subcontracts are defined in s 6 of the Act.
6 With the exception of second-tier subcontractors, in the circumstances where the head contractor and the first-tier subcontractor are related entities – Part 2 Division 3 of the Act.
7 To be opened and maintained by the head contractor.