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Scott Coulthart

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Brand Control, Part 10: “The Brand Lives On” — Trade Marks in Exit, Investment, and Succession

Your brand might be your single most valuable asset. But when serious money is on the table — whether in an investment round, a business sale, or passing the business to the next generation — the question isn’t just what your brand is worth. It’s whether it can stand up to scrutiny.

💰 IP in Due Diligence

Investors, acquirers, and their lawyers will dig deep. Expect questions like:

  • Does the entity actually own the trade mark registrations?

  • Are they registered — and in the right markets?

  • Are there pending disputes, opposition proceedings, or known copycats?

If the answers aren’t clear, expect your deal timetable (and possibly your deal value) to suffer.

🔗 Assignment and Licensing Clean-Up

A surprising number of brands have messy ownership histories. Fix them now, not during due diligence:

  • Ensure every assignment is documented — especially transfers from founders or prior owners.

  • Identify and resolve any co-ownership or “grey” IP where a contractor or third party may have rights.

  • Review licensing arrangements, particularly where related entities use the brand, to ensure they’re properly authorised.

An untidy chain of title can turn into a deal-breaker.

🧓 Succession Planning

For personal brands and family-run businesses, registered trade marks make succession far smoother. A registered right can be assigned or licensed in a clean, documented transfer — helping preserve not just the name, but the goodwill behind it.

💡 IP Mojo Tip
Your brand won’t retire when you do. If you want it to survive a sale, investment, or handover, protect it like an asset — not a slogan. A clean title today can be worth millions tomorrow.

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Your Data, My Model? Why AI Ambitions Demand a Contract Check-Up

As AI capabilities become standard fare in SaaS platforms, software providers are racing to retrofit intelligence into their offerings. But if your platform dreams of becoming the next ChatXYZ, you may need to look not to your engineering team, but to your legal one.

The Problem with “Your Data”

Most software providers already have mountains of processed, transformed and inferred data—data shaped by customer inputs and platform logic. That data could supercharge AI development, from powering smarter dashboards to training predictive algorithms.

But here’s the rub: just because the data isn’t raw customer input doesn’t mean you can freely use it.

You may assume your standard software licence or SaaS agreement gives you all the rights you need. It probably doesn’t.

What Does the Contract Say?

Take a typical clause like this:

“The Customer grants the Provider a non-exclusive, irrevocable licence to use Customer Data to the extent reasonably required to provide the Services and for use in the Provider’s business generally.”

Even a broad “use in our business generally” clause won’t necessarily cover:

  • Using processed or aggregated data from multiple customers

  • Training an AI model whose outputs are shared with others

  • Commercialising new AI-powered features not contemplated in the original deal

And if the data is derived from inputs that were themselves confidential or personal, you’ve got even more legal landmines—Privacy Law, confidentiality obligations, and IP ownership issues if the customer contributed meaningful structure to the dataset.

Is Deidentification Enough (or even Allowed)?

A common fallback is: “We’ll just deidentify the data.” But that’s not a bulletproof strategy.

Under most privacy regimes, data is only considered deidentified if re-identification is not reasonably possible—a high bar, especially in small or specialised datasets. Even deidentified data may still be contractually protected if it originates from information the customer expects to be confidential.

More fundamentally, your contract might not give you the right to deidentify the data at all, unless required to do so by law.

Most software licences and SaaS agreements treat customer data as confidential information. Unless the contract expressly permits you to transform, aggregate or deidentify that data for secondary use (like AI training), doing so could itself amount to a breach. Moreover, if the data includes personal information, you’ll need to navigate privacy laws that impose their own limits—regardless of your contractual rights.

So before you start feeding your LLM, make sure you’re not breaching your SLA.

What to Look For (or Add)

If you’re a provider:

  • Check whether your agreement expressly allows you to create, collate, and use aggregated and deidentified customer data for AI training and product development.

  • Ensure the licence to use data extends beyond service delivery and includes improvements, analytics, and R&D.

  • Include language around data governance, privacy compliance, and ownership of AI outputs.

If you’re a customer:

  • Scrutinise clauses that allow use of data for “business purposes” or “analytics”—these may reach further than you think.

  • Consider negotiating limits, notice obligations, or opt-out rights when your data could be used to build broadly deployed AI systems—unless, of course, that can be turned to your advantage.

In the Age of AI, Contracts Are Training Data Too

Training AI on customer data can unlock immense value—but only if your agreements keep up. Your model is only as smart as your data. And your data rights are only as strong as your contract.

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Brand Control, Part 9: “From Garage to Global” — Building an International Brand Protection Strategy

Your brand might be born in a garage, a studio, or a co-working hub — but if your business has international ambitions, your trade mark strategy needs to grow up fast.

Exporting? Licensing? Franchising? Operating online with overseas customers? You’ll need more than an Australian trade mark certificate. You’ll need an international brand protection plan.

🌍 Start Local, Think Global

The journey starts at home. To secure international protection, you’ll almost always need to file in your “home” country first. For Australian businesses, that usually means filing with IP Australia before looking abroad.

From there, you have options:

1. The Madrid Protocol
This is the global trade mark filing system administered by WIPO. It lets you extend protection to 130+ member countries through a single application, based on your Australian filing. It’s cost-effective, streamlined, and a good first step into international protection.

2. National Filings
Some jurisdictions don’t play well with the Madrid system. Others may be technically covered by Madrid but are better handled directly due to practical issues or local procedural hurdles. In those cases, it’s worth filing directly through local counsel.

📆 Timing Is Critical

Trade mark rights are territorial — and in some jurisdictions, the “first to file” gets the prize, regardless of who used it first.

Fortunately, the international system gives you a 6-month priority period from the date of your first (Australian) application. If you file overseas within that time, your foreign applications are treated as having the same filing date as your original Australian one.

Miss the window? You risk losing rights to local trade mark squatters — especially in high-risk jurisdictions like China or parts of South America.

✋ Local Sensitivities and Brand Bloopers

Global trade mark strategy isn’t just about paperwork. It’s also about cultural nuance, language, and local business practices.

Brand names that work in English might fall flat — or worse — elsewhere.
The Mitsubishi Pajero famously ran into trouble in Spanish-speaking markets because “pajero” has an unfortunate slang meaning. Even benign names can run into problems if they’re hard to pronounce, culturally insensitive, or already associated with local businesses.

And in China, don’t delay. It’s a strict “first to file” jurisdiction, and trade mark squatting is endemic. If your brand has potential in China, file early — even if you’re not trading there yet.

✅ Practical Tips for Expanding Globally

  • File early: Don’t wait until you enter a market. File when you’re even considering it.

  • Use the Madrid Protocol — but wisely: It’s efficient, but not always the best fit for every country.

  • Check for conflicts: Do clearance searches in each target market to avoid headaches later.

  • Localise carefully: Think about transliteration, local language versions, and regional variants of your mark.

  • Work with local counsel: Especially in high-risk or high-value jurisdictions.

💡 IP Mojo Tip:

Your brand can travel — but it needs a passport.

Registering internationally isn’t just a legal formality. It’s your defence against copycats, squatters, and lost market opportunities.

A global brand strategy doesn’t mean filing everywhere. It means filing smart — in the markets that matter to your business, at the right time, in the right way.

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Café Conundrum: Black Star Pastry’s Trade Mark Trouble

Richards v Black Star Pastry Pty Ltd (No 2) [2025] FedCFamC2G 1226 is a cautionary tale in brand coexistence gone wrong — where parallel growth by two businesses using similar names eventually led to a Federal Circuit and Family Court stoush over coffee, cakes and trade mark rights.

Brewing conflict

Martin Richards and his then-wife started a Brisbane-based social enterprise in 2007 called Blackstar Coffee, roasting beans and selling espresso from carts and cafés. He registered the word mark BLACKSTAR in 2007 and a composite BLACKSTAR COFFEE mark in 2009, covering coffee, coffee beverages and related goods.

Unbeknownst to him at the time, pastry chef Christopher Thé opened a bakery in Newtown, Sydney in 2008 under the name Black Star Pastry — complete with its now-famous strawberry watermelon cake and a reputation that soon spread globally (and virally). Thé registered Black Star Pastry as a business name in 2008 and eventually incorporated Black Star Pastry Pty Ltd (BSP) in 2011.

Though Richards became aware of the Sydney business around 2011 and made contact with Thé, no formal resolution followed. Over the next decade, BSP grew into a multi-store operation in NSW and Victoria, increasingly offering café services and coffee beverages — areas overlapping with Blackstar Coffee’s core trade mark rights.

Trade marks collide

The dispute centred on whether BSP’s use of the phrase BLACK STAR PASTRY — including in logos and retail branding — infringed Richards’ earlier BLACKSTAR marks.

BSP argued that:

  • Its core business was bakery, not coffee;

  • The term Black Star Pastry was distinguishable;

  • Its trade marks had been accepted and registered by IP Australia after amending the specification to exclude “café services” and “specialty coffee retailing”;

  • Any coffee sales were ancillary or covered by its own “bakery services” registrations;

  • Richards had acquiesced by failing to object earlier.

Richards, meanwhile, argued that BSP:

  • Was selling coffee and operating cafés under the Black Star Pastry name;

  • Was using the sign as a trade mark in relation to goods and services covered or closely related to his registrations;

  • Was likely to cause consumer confusion;

  • Couldn’t rely on s 122(1)(e) as a defence because coffee wasn’t squarely within BSP’s registered bakery services;

  • Should not benefit from any perceived delay in enforcement.

The Court’s blend

Judge Manousaridis found in favour of Richards on the infringement claim. The key findings:

  • BSP was using BLACK STAR PASTRY as a trade mark for both coffee and café services.

  • These services were either directly covered by or closely related to the BLACKSTAR registrations.

  • The marks were deceptively similar — particularly given the visual and phonetic similarity, the shared “Black Star” element, and the use in closely related contexts (coffee and cafés).

  • BSP could not rely on its own trade mark registrations as a defence under s 122(1)(e) — because those registrations expressly excluded coffee retailing and café services.

  • Richards’ prior knowledge and phone call with Thé did not amount to acquiescence or delay sufficient to bar relief.

Takeaways: more than just crumbs

This decision serves up some useful reminders:

  • Clearance is key: Registering a business name doesn’t grant trade mark rights — and failing to conduct proper searches can be costly a decade down the line.

  • Expansion needs a check-up: A pivot or expansion into adjacent services (like coffee within a bakery) may breach earlier rights, even if your mark was initially registrable with exclusions.

  • Acquiescence isn’t easily made out: A polite phone call in 2011 won’t shield years of brand growth from an infringement claim — especially when the overlap intensifies over time.

  • Name components matter: While Black Star Pastry and Blackstar Coffee may sound just different enough to lawyers, the average café-goer isn’t parsing the spacing.

In the café world, Black Star may once have stood for two different brands in two different cities — but as the beans (and cakes) spread, the law says one star had to fall.

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Brand Control, Part 8: “Don’t Touch That Dial” — Monitoring and Enforcing Your Brand Rights

Registering a trade mark isn’t the end of your brand protection journey — it’s the start of your enforcement strategy.

Your registration gives you the legal tools to stop others from using your brand — but your competitors are not going to put their hand up from time to time and say “Hey, I just starting using a trade mark just like yours – hope you don’t mind!”.

Enforcement is not someone else’s job – it’s yours. If you don’t police misuse, you may not just miss an opportunity to stop infringement — you could also weaken your rights over time.

So what does effective brand monitoring and enforcement look like in practice?

👀 Watching the Watch List

If a competitor (or clueless newcomer) adopts a brand that’s similar to yours, you’ll only know about it if you’re actively watching. Here’s how to stay alert:

  • Trade Mark Monitoring: Keep an eye on the IP Australia register. You can use the official ATMOSS search tool, subscribe to their watch notices, use automated platforms like Markify or CompuMark for more comprehensive coverage, or hire an expert IP lawyer to watch for you (click here for details of one expert IP lawyer you should get to know).

  • Google Alerts: Set up alerts for your brand name — and for phonetically or visually similar names too. It’s free and easy, and can alert you to online content that references the brand.

  • Domain and Social Media Monitoring: Watch for new domain registrations, especially .com.au and .com variants. Do the same for social handles — brand impersonation or opportunistic registrations are common, particularly with new or growing businesses.

🛡️ Enforcement Options

Once you detect a potential issue, you’ve got several tools at your disposal. The right approach depends on the facts — and your appetite for escalation.

  • Letter of Demand: Often your first step. It should be firm but not aggressive — and proportionate to the conduct. Overreaching can backfire, both legally and reputationally.

  • Opposition Proceedings: If someone tries to register a trade mark that conflicts with yours, you can oppose the application within the allowed timeframe. Don’t let similar marks slip onto the register unchallenged.

  • Infringement Action: For more serious or persistent issues, you may need to bring proceedings in court. You’ll need to prove use of your registered mark and that the other party’s mark is either substantially identical or deceptively similar.

  • Misleading or Deceptive Conduct: If a competitor’s conduct is causing confusion — even if it doesn’t meet the threshold for trade mark infringement — you may have a claim under the Australian Consumer Law.

  • Passing Off: This common law action protects the goodwill associated with your brand. If a competitor is misrepresenting their goods or services as being connected with yours — for example, by copying your get-up, name, or branding in a way that misleads consumers — you may be able to bring a passing off claim. You’ll need to show that you have a reputation in the mark, that the conduct is likely to cause deception, and that you’ve suffered or are likely to suffer damage. It’s often run alongside an ACL claim, but can also stand alone — especially if your mark isn’t registered.

  • Take-Down Mechanisms: Major platforms (Amazon, Meta, Google, domain registrars) have processes for removing infringing content, counterfeit listings, or cybersquatted domains. These are often faster and cheaper than court action, and can be effective — if you have the paperwork and rights to back it up.

💡 IP Mojo Tip

Silence equals permission. If you don’t act against brand misuse, courts and platforms may assume you’re okay with it. That can hurt your position if you later try to enforce your rights — and it can embolden others to test your boundaries.

Staying vigilant is part of staying strong. A trade mark isn’t just a certificate on a register — it’s a tool to be used. Know when and how to use it, and your brand will thank you later.

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Copy Paste App? The Pleasures and Pitfalls of Screenshot-to-Code Tools

Imagine this: you take a screenshot of your favourite SaaS dashboard, upload it to a no-code AI tool, and minutes later you have a functioning version of the same interface — layout, buttons, styling, maybe even a working backend prototype. Magic? Almost.

Welcome to the world of screenshot-to-code generators — tools that use AI and no-code logic to replicate functional software from images. These platforms (like Galileo AI, Builder.io, and Uizard) promise rapid prototyping, faster MVP launches, and a lower barrier to entry for founders, designers, and product teams alike.

But while the tech is impressive, the legal waters are murkier. Here’s the pleasure and the pitfall.

🚀 The Pleasure: Design to Prototype at Lightspeed

The promise is seductive:

  • Rapid prototyping: What used to take weeks of front-end dev can now take hours — sometimes minutes.

  • Visual to functional: AI converts static designs (or even screenshots of existing apps) into working interfaces with mock data or basic logic.

  • Lower costs: Startups or solo devs can build more for less — less code, less labour, and less time.

Tools like Galileo AI and Uizard are being used to generate mock admin panels, mobile UI concepts, and even pitch-ready MVPs. They’re ideal for internal dashboards, client demos, or iterating fast before investing in full-stack builds.

But many users go further — taking screengrabs from existing platforms (think Notion, Salesforce, Figma, Xero) and asking the AI to “make me one of these.”

And that’s where the problems begin.

⚠️ The Pitfall: Copyright, Clones, and Clean Hands

Just because a tool can replicate an interface doesn’t mean you should — especially if your starting point is a screenshot of someone else’s software.

Here are the big legal traps to watch out for:

1. Copyright in the Interface

While copyright doesn’t protect ideas, it does protect expressions — including graphic design, layout, icons, fonts, and even the “look and feel” of certain interfaces. If your cloned UI copies the visual design of another product too closely, you may be infringing copyright (or at least inviting a legal headache).

Australia’s Desktop Marketing Systems v Telstra [2002] FCAFC 112 reminds us that copyright can exist in compilations of data or structure — not just in pretty pictures.

2. Trade Dress and Reputation

Even if your app doesn’t copy the code, a lookalike interface could fall foul of passing off or misleading conduct laws under the Australian Consumer Law if it creates confusion with an established brand. That risk increases if you’re operating in a similar space or targeting the same user base.

The global tech giants have deep pockets — and they’ve sued for less.

3. Terms of Use Breaches

Many platforms prohibit copying or reverse engineering their interfaces. Uploading screenshots of their product to an AI builder might violate their terms of service — even if your clone is only for internal use.

This isn’t just theory: platforms like OpenAI and Figma already use automated tools to detect and act on terms breaches — especially those that risk commercial leakage or brand dilution.

4. No Excuse Just Because the Tool Did It

You can’t hide behind the AI. If your clone infringes IP rights, you’re liable — not the platform that helped you build it. The tool is just that: a tool.

In legal terms, there’s no “my AI made me do it” defence.

🤔 So What Can You Do?

  • ✅ Use these tools for original designs: Sketch your own wireframes, then let the AI flesh them out.

  • ✅ Take inspiration, not duplication: You can draw ideas from good UI — but avoid replicating them pixel-for-pixel.

  • ✅ Use public design systems: Many platforms release UI kits and components under open licences (e.g., Material UI, Bootstrap). Start there.

  • ✅ Keep it internal: If you must replicate an existing interface to test functionality, don’t deploy it publicly — and definitely don’t commercialise it.

  • ✅ Get advice: If you’re close to the line (or don’t know where the line is), speak to an IP lawyer early. Clones are cheaper than court.

🧠 Final Thought: Just Because You Can…

…doesn’t mean you should.

AI is rapidly transforming the way software is built — but it’s also tempting users to cut corners on IP. Using these tools responsibly means treating screenshots not just as pixels, but as possibly protected property.

Build fast — but build clean.