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Trade MarksLPAB Winter SessionTherese Catanzariti
European Trade Guilds 1266 Bakers Marking Law (pinpricks on bread)
◦ Protect consumers – know where bad bread comes from◦ Develop reputation in quality bread
Silversmiths Porcelein
badge of origin badge of control zeitgest / image of brand
origin
IP Australia application Designated classes of goods and services (Nice Classification – 45 classes)
designated goods in designated class designated services in designated class IP Australia examination=>acceptance or rejection
opposition
IP Australia hearing registration
rectification
registration process
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person
trade mark – s17
workers' trade mark indicate goods were product of individual / association of Australian
workers
Not “trade mark” within Constitution
1 a property right 2 owner being a person engaged in trade 3 right corresponds with dealing with goods in course of trade 4 owner of right has independent dominion over goods as to entitle
him to affix mark on them 5 mark distinguishes the goods as having been dealt with by some
particular person or persons engaged in trade
workers mark not a right in property Workers mark not indicate that goods should be distinguished from
other goods dealt with by other persons Union did not constitute a person who had dominion over the goods to
which the mark was applied and who would be referenced by application of the mark
AG(NSW)vBrewery Employees Union
letter word name signature Numeral device brand
Sign – s6
• heading• label• ticket• aspect of
packaging• shape• colour• sound or scent.
Intel Jingle
Nokia ringtone
use of the trade mark upon, or in physical or other relation to, goods or services – s7
visual use and aural use (if trade mark is letter, word, number)
Owner’s use and authorised use◦ person uses the trade mark in relation to goods or
services under the control of the owner of the trade mark
◦ quality control over goods and services◦ financial control over trading activities
used or intended to be used
to distinguish goods or services dealt with / provided by a person from other person’s goods or services
to distinguish goods provided by person
Shorter Oxford Dictionary1 To divide or separate; to class, classify 2 To mark as different or distinct; to separate
Roget’s Thesaurusdifference, discrimination, severalise,
separate
these are X goods, not Y goods or Z goods.
to distinguish
indicator of origin whether it indicates the trade origin
using a sign to indicate a connection in the course of trade between the goods and the person who applies the mark
dealt with or provided by a person
A brand owner does not want a sign to say these goods are big, these goods are
yellow, these goods are plastic A brand owner wants the sign to say these
goods are different from all other big goods, from all other yellow goods, from all other plastic goods
A brand owner wants sign to yell, unequivocally
These goods are different from other goods These goods are MY goods
Capsule – half coloured, half colourless good themselves can’t be a trade mark trade mark must be capable of being described and
depicted as something apart from the goods to which it is to be applied or in relation to which it is to be used.
Can’t get monopoly in all types of goods
Contrast Smith Kline v Stirling Winthrop Coloured capsules could be registerable even though trademark covered whole visible
surface
Smith Kline v Registrar of TM
Koninklijke Philips Electronics NV v Remington Products Australia
Phillips registered triple-headed shaver
Remington copied the shaverRemington NOT using as a trade mark
functional shapes were incapable of acting as trade markscompetitors should be free to use shapes that were attractive and popular with the buying public.
“Millenium bug” stylised 6 legged creature confectionary
Shape that distinguishes the goods may be the entire shape of the goods themselves
NOT if shape serves a function, or shape that is part of the nature of the good
Kenman Kandy
Cola flavoured, cola bottle shaped confectionary silhouette, fluting and band are striking features of the
confectionary, and are apt to distinguish it from the goods of other traders
the non-descriptive features have been put there to make the goods more arresting of appearance and more attractive, and thus to distinguish them from the goods of other traders.
All-Fect was using cola bottle as a trade mark It indicates a connection in the course of trade between
goods and the person who applies the mark to the goods.
Coca Cola v All-Fect Manufacturers
Seahorse not used as a badge of origin
not used in any sense to identify Guylian but to illustrate some examples of the elegance of the chocolates and the contents of the box more generally
simply one of the chocolate shapes out of a number of sea shell/marine shapes that Guylian sells and markets
not enough that consumers associated with Guylian
not enough that used for many years
Chocolaterie Guylian v Registrar
contain certain signs – s39 (s18, r4.15)◦ “patent”, coat of arms, official flag, official seal etc
can’t be graphically represented – s40 not distinguish goods/services – s41 scandalous or contrary to law – s42
◦ a red cross, ANZAC, Olympic logo, etc likely to deceive or cause confusion – s43 substantially identical or deceptively similar -
s44◦ Services – similar services / closely related goods◦ Goods - similar goods/closely related services
reject application
Inherently adapted to distinguish
to some extent inherently adapted combination of◦ use and intended use◦ extent inherently adapted◦ other circumstances
not inherently adapted to distinguish but use before filing date does in fact
distinguish
not distinguish goods/services-s41
must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services from other person’s goods and services
not capable of distinguishing the designated goods◦ not to any extent inherently adapted to distinguish AND
not used to such an extent that in fact distinguishes◦ to some extent, but not sufficiently, inherently adapted
to distinguish AND will not distinguish having regard to Extent to which inherently adapted Use or intended use any other circumstances
Section 41 (note – 2013 reforms)
Inherently adapted in context ◦ designated goods and services◦ people in the relevant market
whether it is likely that other traders trading in the designated goods and services, in the ordinary course of their business and without improper motive, would wish to use the same trade mark
“the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess”
Registrar of Trade Marks v W & G Du Cros Ltd Clark Equipment Co v Registrar of Trade Marks
inherently adapted
kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services
time of production of goods or of the rendering of services
geographical indicationCOLORADO - Blount Inc v Registrar of Trade MarksNOKIA – which came first, river town or company3M – Minnesota Minerals and Mining
qualities CRANBERRY CLASSIC - Ocean Spray Cranberries v Registrar TM
Intended purposeTENNIS WAREHOUSE - Sports Warehouse v Fry Consulting
not inherently adapted if descriptive–n 1
does not need to absolutely unsuggestive of qualities of the goods provided not a normal description
may be inherently adapted if indirect or allusiveMark Foy v Davies Coop – TUBHAPPY
NOT if misspelling or phonetic equivalent of descriptive
NOT if contraction of two or more descriptive wordsHoward Auto Cultivators v Webb Industries - ROHOE
inherently adapted
Invented words Unrelated words
◦ APPLE for computers◦ CATERPILLAR for shoes
part of a mark or word/device mark rather than word itself
provided that device is more than stylised letter
inherently adapted
Crazy Ron’s Communications v Mobileworld Communications
relatively large fantasy cartoon character holding a mobile telephone astride a stylised globe
Words not especially prominent and subsidiary to fantasy character which occupied dominant position in overall image
Crazy Ron not infringe Crazy John because mark is device
Image overwhelm words
contrast Blount Inc v Registrar of Trade Marks
use of upper-case letters, and the oval device surrounding the word "Oregon” not sufficient to make descriptive words “Oregon” distinctive
contrast Bayer Pharma v Farbenfabriken Bayer
the name is feature which makes the device what it is - the feature which stands out as operative thing in it, and to which everything else is merely assistant - the feature which ... `would strike the eye and fix in the recollection
merely provides a fancy method of presenting the name `Bayer’
because of some connotation ◦ that trade mark has◦ that sign contained in trade mark has
Big Country Developments v TGI Friday's Incconfusion did not depend upon some connotation in
the registered mark, but because TGI Friday using a similar name – not covered by s43
likely deceive or cause confusion – s43
DIANA’S LEGACY IN ROSES together with a device comprising doves, a wreath of flowers and a stylised letter "D”
real tangible danger that, by virtue of the connotation of the late Princess in the impugned mark, consumers in Australia would be deceived or confused by incorrectly believing that the mark was indicative of some endorsement or approval by the Fund or the Estate of the late Princess
McCorquodale v Masterton
substantially identical OR deceptively similar registered mark for services
◦ similar services◦ closely related goods
registered mark for goods ◦ similar goods◦ closely related services
◦ unless honest concurrent use – s44(3)◦ unless prior use – s 44(4)
s44
Shell Co Australia v Esso Standard Oil compared side by side, their similarities and
differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison
Solahart v Solar Shop SOLAHART not substantially identical
SOLARHUT
substantially identical - s44
Deceptively similar if so nearly resembles that other trade mark that it is likely to deceive or cause confusion’ – s10
Crazy Ron’s v Mobileworld impression based on recollection of the applicant’s
mark that persons of ordinary intelligence would have compared to impression such persons would get from respondent’s mark
human frailty so imperfect nature of recollection aural similarity may be important tangible risk of deception – enough if ordinary person
entertains a reasonable doubt
deceptively similar – s44
Effem registered trade marks SCHMACKOS and DOGS GO WACKO FOR SCHMACKOS
Wandella apply for WHACKOS in same class
WHACKO not deceptively similar SCHMACKOS because SCHMACKOS more complex sound and more visually complex
but WHACKO deceptively similar to DOGS GO WACKO FOR SCHMACKOS because total phrase derives whole of its force from the word WACKO. WACKO was powerful component of Effem's mark which would be retained in consumer’s memory and recalled when Wandella's mark seen
Effem Foods v Wandella Pet Foods
consider all legitimate uses which may reasonably make of the mark within ambit of the applicant’s registration Southern Cross Refrigerating v Toowoomba Foundry
=>whether any of the registered designated services are closely related services to any of designated goods
similar goods / closely related services
Southern Cross v Toowoomba Foundry gas absorption refrigerators and electric
refrigerators and parts thereof well-drilling and boring machinery hand or
power, milking machines, engines, windmills
similar goods involves consideration of ◦ nature of goods◦ uses to which they are put◦ whether they are commonly sold together to the
same class or classes of customers
similar goods
Registrar of Trade Marks v Woolworths Ltd a practical judgment whether the closeness of the
relationship and the resemblance of the mark together cause deception or cause confusion
range of relationships between goods and services which may be "closely related” - In most cases relationships defined by function of service with respect to goods. Services which provide for installation, operation, maintenance or repair of goods are likely to be treated as closely related to the goods
Caterpillar Loader Hire v Caterpillar Tractor Co Confusion is more likely to arise where services protected
by service marks necessarily involve the use or sale of goods or where services (eg consultancy services) involve goods
closely related services
(1) the honesty of the concurrent use; (2) the extent of the use in terms of time,
geographic area and volume of sales; (3) the degree of confusion likely to ensue
between the marks in question; (4) whether any instances of confusion have
been proved; and (5) the relevant inconvenience that would
ensue to the parties if registration were to be permitted.
exception – honest concurrent use – s44(3)
Mary McCormick registered MCCORMICK for instant batter associated with distinctive fish and chips sold by Mr and Mrs McCormick from roadside caravan
aware at time name chosen that certain mixed herbs, paprika, pepper and basil products were sold under MCCORMICK brand
May be honest even though aware
Was entitled to be registered in Queensland but opposed because of section 60 Mary McCormick later changed to “Mary Macks”
McCormick v McCormick
mark is substantially identical or deceptively similar to previously registered mark
BUT applicant used before the previously registered mark was registered
exception- prior use – s44(4)
Applicant’s use Other Owner’s registration
Applicant’s application
same grounds as rejection – s57 applicant not owner of mark – s58 opponent’s earlier use of similar trade mark –
58A applicant not intending to use mark – s59 trade mark similar to mark that has acquired a
reputation – s60 mark consists of a false geographical indication
- ss61 application is defective - s62 application made in bad faith – s62A
oppose registration
common law owner of mark person who first publicly used the mark in
Australia as a trade mark to indicate a connection in the course of trade between goods/services and person
not any goods /services designated goods/services and
goods/services that are that are the “same kind of thing”
applicant not owner – s58
if mark not used by any person
“an application to register a trade mark so far unused must be founded on proprietorship
proprieter of the mark is combined effect ◦ authorship of the mark◦ intention to use it upon or in connection with the
goods◦ applying for registration”
Shell Co (Aust) Ltd v Rohm & Haas Co (1949) 78 CLR 601
applicant not owner – s58
Mark may be registered where mark is substantially identical or deceptively similar to previously registered mark if the applicant used before the previously registered mark was registered – section 44(4)
BUT can reject if the owner of the previously registered mark used before the applicant
opponent’s earlier use – s58A
Other Owner’s use
Applicant’s use Other Owner’s registration
Applicant’s application
use it upon or in connection with goods
intention at date of application but evidence use/non-use after date may be
relevant Food Channel Network Pty Ltd v Television
Food Network GP
not just non-use – need to prove no intention
not intending to use – s59
TASTEE FREEZ iced milk intention looked at in context of proprietorship
does not need to be actual use, or an immediate intention or an intention within a limited time of using a registered mark
“A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. If he in fact does not use any of them for the period specified in s. 72, the unused mark or marks may be expunged under that section. On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars”
Aston v Harlee Manufacturing Co
prevent trade mark dilution◦ register in related classes that don’t intend to use◦ register related words / logos that don’t intend to
use cybersquatter / trade mark pirates
may be opposed – s59 may be removed for non-use – Part 9 owner can use other mechanisms
◦ closely related goods and services – s120(1)/(2)◦ well-known marks – s120(3)
ghost marks
IG couldn’t register MERIT – descriptive
IG registered NERIT as defensive mark to prevent others using MERIT
no genuine intention to use NERIT
Imperial Group Limited v Phillip Morris
another trade mark has reputation AND because of reputation likely to deceive or cause
confusion
reputation does not have to be registered reputation demonstrated by evidence of sales,
marketing, advertising and licensing
reputation can be in any goods or services doesn’t have to relate to designated goods / service BUT if reputation relates to very different goods or
services it will be difficult to show that the reputation will deceive or cause confusion
similar to mark with reputation – s60
McCormick & Company Inc v McCormick reputation means the recognition of the marks by the public generally.
McDonalds v Bowditch GOLDEN BOOMERANGS
McDonalds v Macri Fruit Distributors MCSALAD, MCFRUIT
Greenpeace v Taylor GREENPIECE
Qantas v NV Sumatra JETSTAR for coffee, tea, cereal, biscuits, cocoa
Intel v Third Party Corporation BELLINTEL – stock-broking services
NOT Coca Cola v The Big Australian SOLA COLA
Fry Consulting v Sports Warehouse unscrupulous, underhand or unconscientious
deliberate misspellings registered trademark register foreign trade mark with no Australian
market penetration with purpose of selling to foreign owner
cyber-squatting
not include mere negligence, incompetence or a lack of prudence
application made in bad faith – s62A
No intention to use when apply AND not in fact used as trade mark in good faith in Australia since
registration
registered for 3 years and not used as trade mark in good faith in Australia for 3 years
Woolly Bull Enterprises Pty Ltd v Reynolds Not necessary that there be an actual trade in the sense of the
offering for sale and the sale of goods bearing the mark BUT must go beyond investigating whether to use the mark and
beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, ie, to carrying its intention to use the mark into effect.
Good faith – real not token, colourable
remove OR impose limitations or conditions
non-use – s92
person claims to be the owner of the trade mark
AND intends to use the mark authorised / intends to authorise another to
use intends to assign to body corporate about to
be incorporated
who can apply for mark – s27
registered owner exclusive right – s20◦ Use / authorise the trade mark in relation to
designated goods/services◦ obtain relief if trade mark infringed
registered trade mark personal property– s21
registered owner may deal with trade mark and give discharges in good faith – s22
equities may be enforced against registered owner except PPSA security interests
rights
authorised user – uses trade mark in relation to goods/services under registered owner’s control – s8
Authorised owner rights – s26◦ use trade mark on designated goods/services ◦ Sue for infringement with owner’s consent◦ Sue for infringement after end prescribed period if owner doesn’t sue within
prescribed period◦ Give notice to customs to prevent importation◦ Permission to alter / deface mark on goods
E & J Gallo Winery v Lion Nathan Issue whether Gallo used mark BAREFOOT RADLER in AustraliaHoulihan trade mark owner (later Gallo) owned Barefoot CellarsBarefood Cellars applied mark to wine Barefoot Cellars sold wine to Einig-Zenzen, Germany who sold to
Beach Avenue, Australia who sold wine in AustraliaHoulihan exercised quality control over Barefoot Cellars
licensing
if the person uses as a trade mark a sign that is substantially identical with, or
deceptively similar to, the trade mark
in relation to s120(1) registered goods or services
s120(2) goods/services of same description or closely related goods or services
s120(3): well-known trade marks any goods / services
Infringement – s120
Substantially identical Shell Co Australia v Esso Standard Oil compared side by side, their similarities and differences noted
and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison
Deceptively similar if it so nearly resembles that other trade mark that it is likely to
deceive or cause confusion’ – s10 Crazy Ron’s v Mobileworld impression based on recollection of the applicant’s mark that
persons of ordinary intelligence would have compared to impression such persons would get from respondent’s mark
substantially identical or deceptively similar (see s44)
Coca Cola Distributors v All Fect Distributors Pty Ltd All-Fect was using cola bottle to indicate a connection in the
course of trade between goods and the person who applies the mark to the goods
certain striking non-descriptive features of the goods were put there to make the goods more arresting and to distinguish them from other similar goods, that is, to use those features as a mark
Johnson & Johnson (Tylenol) v Sterling Pharmaceuticals (Panadol)– CAPLET
a registered mark serves to indicate the origin of the quality in a particular business, whether known or unknown by name
Caplet was used to indicate or describe form or method of dosage of product found inside packages, and not a connection in the course of trade
Use as a trade mark
Top Heavy v Killin whether the sign is used to distinguish one person’s
goods and services from the goods or services of others Killin put words CHILL OUT on t-shirts as an exhortation
to relax, not to indicate a connection in trade
Pepsico Australia Pty Limited (t/a Frito-Lay) v Kettle Chip Co Pty Limited
Frito-Lay's use of the words "KETTLE", or "KETTLE COOKED", was not use as a trade mark
Frito Lay used words KETTLE or KETTLE COOKE for purpose and effect of describing qualities of the chips produced by Frito-Lay. The words have the effect of distinguishing between the qualities of those chips and those produced by means other than "kettle cooking”, but not to distinguish Frito-Lay's chips from Kettle’s chips
Southern Cross v Toowoomba Foundry similar goods involves consideration of
◦ nature of goods◦ uses to which they are put◦ whether they are commonly sold together to the
same class or classes of customers
Registrar of TM v Woolworths whether the closeness of the relationship and the
resemblance of the mark together cause deception or cause confusion
range of relationships between goods and services which may be "closely related”
similar / closely related
well-known marks
Person uses person’s name/ place of business (predecessor’s name) in good faithAngove’s Pty Ltd v Johnsonentitled to use words “St Agnes Liquor Store” in the name of its business in the Adelaide suburb of St Agnes, notwithstanding that plaintiff registered trade mark ST AGNES
Person uses sign in good faith to indicate kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services
Person uses trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services
Person uses trade mark in comparative advertising
Person would obtain registration if applied (eg honest concurrent use)
defences – s122
Use in good faith imports an absence of intention to make use of the goodwill which has been acquired by another trader
resemblance between the registered trade mark, of which the first respondent was aware and the name of the first respondent does not prevent the use being bona fide provided that there was an honest belief that no confusion would arise and if there were no intention of wrongfully diverting business
Wellness Pty Limited v Pro Bio Living Waters Pty Limited no evidence as to reason for choice of name and reason for
incorporation
in good faith
If person/ predecessor continuously used in the course of trade unregistered trade
mark in relation to similar/closely goods or
services from a time before registered owner’s use or
registration
may be limited to area of Australia
prior and continuous use – s124
Injunction Damages Account of profits (tho no damages/account of profits if mark
not used and mark removed – s127)
Groundless threat of legal proceedings – s129
Remedies – s126
Owner can give notice to Customs objecting to importation of goods infringing mark – s132
Customs may seize imported goods with a sign that is substantially identical or deceptively similar to a notified trade mark – s133
customs