Part 19A - Use of a Trade Mark - IP Australiamanuals.ipaustralia.gov.au/trademarks/Part_19A.pdf · The use of a trade mark to indicate a connection in the course of trade has been

Part 19A Use of a Trade Mark

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Effective Date: 15 February 2017 1

Part 19A




Table of Contents Part 19A Use of a Trade Mark ............................................................................................... 5

Relevant Legislation .............................................................................................................. 5

1. Use of a trade mark generally ........................................................................................... 6

2. Use 'as a trade mark' ........................................................................................................ 7

3. Use 'in the course of trade' .............................................................................................. 14

4. Australian Use ................................................................................................................. 18

5. Use 'in relation to goods or services' ............................................................................... 21

6. Use by the trade mark owner, predecessor in title or an authorised user ........................ 22

7. Use of a trade mark with additions or alterations ............................................................. 24

8. Use of multiple trade marks ............................................................................................. 25





Relevant Legislation

The Act

Section 6 Use of a trade mark Use of a trade mark in relation to goods Use of a trade mark in relation to services

Section 7 Use of a trade mark

Section 8 Definitions of authorised user and authorised use

Section 17 What is a trade mark?

Section 27 Application - how made

Section 41 Trade mark not distinguishing applicant’s goods or services

Section 44 Identical etc. trade marks

Section 120 When is a registered trade mark infringed

Section 121 Infringement of trade mark by breach of certain restrictions

Section 122 When is a trade mark not infringed

Section 124 Prior use of identical trade mark etc.

Section 228 Use of a trade mark for export trade

1. Use of a trade mark generally



1. Use of a trade mark generally Trade mark law concerns the trading of goods or services in commerce. 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 (section 17). As such, ‘use’ is a concept fundamental to trade mark law.

Whether a trade mark has been used is relevant to a number of questions, including:

• whether a trade mark is, or will become, capable of distinguishing

• whether there has been honest concurrent or prior use of a trade mark

• who is the owner of a trade mark

• whether a trade mark should be removed from the Register for non-use

• whether a trade mark has been infringed

• whether a defensive trade mark should be registered

Provisions relating to use of a trade mark are contained in sections 6, 7, 8, 17, 27 and 228 of the Act. Importantly, a significant body of principle has also been developed in case law and decisions of the Registrar that assists in determining when a trade mark has been used.

The act of filing an application implies that the trade mark is used or intended to be used (Aston v Harlee Manufacturing Co, (1960), 103 CLR 391). However, in answering any of the questions listed above, it is necessary to determine whether in fact there has been actual use of the trade mark. In brief, for the purposes of the Act, use must be:

i. as a trade mark;

ii. in the course of trade;

iii. Australian use;

iv. upon or in relation to the goods and/or services; and

v. by the trade mark owner, predecessor in title or an authorised user

Each of these criteria is considered below.

2. Use 'as a trade mark'



2. Use 'as a trade mark' Not all use of a particular sign will constitute use ‘as a trade mark’. In Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at 19, the Full Bench of the Federal Court held :

Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of 'trade mark' in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

This statement was expressly approved by a majority of the High Court in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 at 43.

The use of a trade mark to indicate a connection in the course of trade has been referred to as the ‘branding function’ of the trade mark (see Anheuser-Busch, Inc v Budejovický Budvar, Národní Podnik & Ors [2002] FCA 390 and Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299). In Nature's Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117 at 19, the Full Court held:

The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 422.

Use that is solely descriptive or laudatory is unlikely to be use of a sign as a ‘badge of origin’ and the sign is unlikely to perform a ‘branding function’. Such use is therefore not use of a sign ‘as a trade mark’.

Context is all important in determining whether a sign has been used as a trade mark or for some other purpose (Shell Co of Australia v Esso Oil (Aust) Ltd (1963) 109 CLR 407). The subjective intention of the user will be of secondary importance in assessing whether there has been trade mark use in a particular context. In Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874 at 30, Hill J said:

In most, if not all cases, the question whether there has been use as a trade mark will be determined by an objective examination of the use in the context in which it appears

The nature of the sign in question is also a relevant consideration. It will generally be more difficult to establish that use of a descriptive word is use of a sign ‘as a trade mark’. In Aldi Stores, Hill J held at 23:

Where the word has or a combination of words have a clear meaning in ordinary use, the question will be much more difficult as the word or combination of words may either have taken on a secondary meaning indicating the origin of the goods or may simply convey an ordinary meaning (ie some message other than the trade origin of the goods): see Top Heavy Pty Ltd v Killin (1996) 34 IPR 282 at 286.

However, his Honour went on to say:




It is well established that there is not a true dichotomy between words capable of being used as a badge of trade origin and words that are descriptive: see Johnson & Johnson at 347 per Gummow J and at 339 per Lockhart J.

In Woolworths Limited v BP Plc (No. 2) [2006] FCAFC 132 at 77, the Full Court provided a concise summary of the relevant considerations for use as a trade mark:

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin…

In Nature's Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117 at 19, in the context of infringement proceedings relating to a sign used on goods and in the presence of other distinctive material, the Full Court held:

Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or ‘context’) of the impugned words: Johnson & Johnson at 347; Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik [2002] FCA 390

Set out below (2.1-2.4) is a discussion of the use of signs in particular circumstances and whether this constitutes use ‘as a trade mark’. Paragraph 2.5 contains some illustrative examples that assist in understanding and applying the abstract concepts discussed above. A summary of the relevant considerations is set out in 2.6

2.1 Aural use

An aural representation of a trade mark that consists of a letter, word, name or numeral, or any combination thereof, is considered use of the trade mark for the purposes of the Act (subsection 7(2)).

2.2 Use as a domain name, key word or metatag

It is common for many traders to provide their goods or services via a website that is identified by a domain name. Use of a domain name may in some circumstances constitute use of a trade mark. In Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, Kenny J held:

It is not suggested that mere registration of a domain name can amount to use of the mark. More must be shown. Plainly enough, not all domain names will be used as a sign to distinguish the goods or services of one trader in the course of trade from the




goods or services of another trader. Sports Warehouse is correct in its submission that that whether or not a domain name is used as a trade mark will depend on the context in which the domain name is used. In this case, the domain name is more than an address for a website, the domain name is also a sign for the Applicant’s online retailing service available at the website. In the context of online services, the public is likely to understand a domain name consisting of the trade mark (or something very like it) as a sign for the online services identified by the trade mark as available at the webpage to which it carries the internet user.

Goods or services available via websites are generally located via internet search engines. Internet search engine providers often sell words or phrases corresponding to registered trade marks as ‘key words’ or ‘metatags’. A purchaser of a key word or metatag will generally have their website prioritised in search results for that key word or metatag. Metatags contain computer coding statement of the content of a particular website and are used by search engines to index and find a page. The practice by search engines to optimise or rank the priority of a website appearing in its search result by Metatag is sometimes referred to as ‘Ad Word’ or key word advertising.

The decision of Advantage Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd [2016] FCA 255, affirmed that the metatag use was not use as a trade mark because it was not visible to the ordinary internet user. However, use in sponsored link advertisements (being visible to consumers) may constitute trade mark use.

2.3 Business names

A business name and a trade mark are two distinct concepts. A business name is the name under which a business operates. It is administrative, not proprietary, in character. Registration of a business name in itself creates no intellectual property rights and is not prima facie evidence that a sign has been used ‘as a trade mark’.

In Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278 at 73, Lander J held:

There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services. The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person. Because it has established that it intended to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.

Whether a person has used a sign that constitutes their business name as ‘a trade mark’ will depend on whether they have used it as a badge of origin taking into account the considerations outlined above.

2.4 Shape and colour trade marks



Effective Date: 15 February 2017

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• See Part 21 Non Traditional Signs

The normal rules apply when determining whether a shape or a colour has been used ‘as a trade mark’. However, the relationship of a shape or a colour to the relevant goods or services will influence how the general principles are applied.

In Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at 61, Sundberg J set out the criteria for determining whether use of a shape is use ‘as a trade mark’.

The principles relevant to use of shape as a trade mark are now set out.

a. A special shape which is the whole or part of goods may serve as a badge of origin. However the shape must have a feature that is ‘extra’ and distinct from the inherent form of the particular goods: Mayne at [67], Remington at [16] and Kenman Kandy at [137]

b. Non-descriptive features of a shape point towards a finding that such features are used for a trade mark purpose. Where features are striking, trade mark use will more readily be found. For example, features that make goods more arresting of appearance and more attractive may distinguish the goods from those of others: All-Fect at [25].

c. Descriptive features, like descriptive words, make it more difficult to establish that those features distinguish the product. For example, the word COLA or an ordinary straight walled bottle are descriptive features that would have limited trade mark significance: All-Fect at [25] and Mayne at [61]-[62].

d. Where the trade mark comprises a shape which involves a substantial functional element in the goods, references to the shape are almost certainly to the nature of the goods themselves rather than use of the shape as a trade mark: Mayne at [63]. For example, evidence that a shape was previously patented will weigh against a finding that the shape serves as a badge of origin: Remington at [12] and Mayne at [69].

e. If a shape or a feature of a shape is either concocted compared to the inherent form of the shaped goods or incidental to the subject matter of a patent, it is unlikely to be a shape having any functional element. This may point towards the shape being used as a trade mark: Kenman Kandy at [162] and Mayne at [69].

f. Whether a person has used a shape or a feature of a shape as a trade mark is a matter for the court, and cannot be governed by the absence of evidence on the point: All-Fect at [35].

g. Context "is all important" and will typically characterise the mark’s use as either trade mark use or not: Remington at [19] and Mayne at [60]-[62].

As is apparent from the foregoing propositions, a shape mark case may require consideration of different types of features in determining whether the mark is used as




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a trade mark for the purposes of the Act. At one end of the spectrum are shapes or features thereof that are purely functional. The features may have derived substantially from a patented product, such as the S-shaped fence dropper, or go to the usefulness of the product: Remington at [3] and [12]. Cases such as Mayne and Remington show that such features point away from trade mark use.

At the other end of the spectrum are those features of a mark that are non-descriptive and non-functional. They ordinarily make the shape more arresting of appearance and more attractive, thus providing a means of distinguishing the goods from those of others. All-Fect and Remington show that non-functional features add something extra to the inherent form of the shape. A concocted feature will typically be considered non-functional: Kenman Kandy.

Finally, there will be cases, such as the present, that fall between the ends of the spectrum. These cases are not black and white. They involve consideration of whether one set of features supersedes, submerges or overwhelms the other.

Similarly, considerations of functionality will be relevant in determining whether a colour has been used ‘as a trade mark’. In Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551 at 53, Mansfield J held:

… a trader might legitimately choose a colour for its practical utility. That is, the colour may be a feature of a product that serves to improve the functionality or durability of the product. The function of visibility is, for example, served by the colour yellow; heat absorption by the colour black; light reflection by the colour white; military camouflage by a combination of khaki, brown and green.

…

The shape mark cases properly indicate a reluctance to permit, by virtue of a trade mark registration, a permanent monopoly of matters of engineering design: Kenman per French J at [45]; Koninklijke Philips Electronics NV v Remington Products Australia Ltd [1999] FCA 816; (1999) 91 FCR 167; Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279 per Jacob J; British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281. In my view there is no reason why the functionality principles applied to the registration of shape marks should not also apply to the consideration of the application of colour marks.

It is important to bear in mind that even if an applicant can establish that a particular use of their shape or colour is use ‘as a trade mark’, that use may not be sufficient to demonstrate the mark is or will become capable of distinguishing for the purposes of section 41 (see Parts 21, 22 and 23).

2.5 Illustrative examples

It is not possible to list exhaustively all situations in which use ‘as a trade mark’ will or will not occur. However, the cases provide some illustrative examples.




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In Re Johnson and Johnson Australia Pty Limited v Stirling Pharmaceuticals Pty Limited [1991] FCA 310, an infringement action, the court considered whether use of the word CAPLETS on packaging for paracetamol was use ‘as a trade mark’. On the facts, the court held that there was no use ‘as a trade mark’. Relevant to the court’s decision was the fact that the word TYLENOL was the striking feature of the packaging and that the word CAPLETS was used in a similar sized font to clearly descriptive material (such as Paracetamol 500mg). Lockhart J held at 73:

The context in which CAPLETS appears on the TYLENOL packaging and in its advertising demonstrates plainly in my opinion that the use is essentially descriptive and not a badge of origin in the sense that it indicates a connection in the course of trade between the product TYLENOL and the appellant. A person looking at the packaging would assume that the word CAPLETS describes or indicates the shape of the product contained in it or the dosage form. It is used in a descriptive sense precisely as the words tablets or capsules are used.

In Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291, the court considered whether use of the words CIRCLE ON CAVILL by the respondent infringed various trade marks consisting of or containing these words. Reeves J considered the context of the respondent’s use, particularly the use in standalone format without any immediate connection to descriptive content and its depiction ‘banner style’ on various webpages.

In Chocolaterie Guylian NV v Registrar of Trade Marks (2009) FCA 891, the applicant was seeking registration of a seahorse shape for chocolates. The applicant used the shape on chocolates that also displayed the letter ‘G’ prominently. The shape was also displayed on the front of a box that contained other ocean themed shapes and the mark GUYLIAN as its most striking feature. In upholding the decision of the Registrar to refuse registration, Sundberg J said at 97:

Each case turns on its own facts and here my impression of the packaging and promotional material as a whole is that it is the “Guylian” trademark, together with the “G” logo”, that does the work of distinguishing the goods, not the seahorse shape.

2.6 Summary of relevant considerations

A summary of some of the main considerations for determining whether use of a sign is use ‘as a trade mark’ is set out in the following table:

Nature of sign Note:

Is the sign invented or does it have some descriptive or laudatory significance?

An invented sign is more likely to be perceived as a trade mark than a sign with some descriptive significance

Context of use Note:

Is the sign displayed prominently in A sign that is used ‘as a trade mark’ will




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advertising, on displays, webpages or packaging or is it made less noticeable by being included amongst other material?

generally perform a ‘branding function’. It may be difficult for a person to show that a sign is performing a branding function where use of the trade mark appears to be intended solely or primarily for some descriptive or laudatory purpose.

Is it use of the trade mark as applied for? Use of a sign that is not identical to the trade mark applied for can be considered if the additions or alterations do not substantially affect the identity of the trade mark (see 7).

Has use been demonstrated in conjunction with, or close proximity to, other signs that are clearly acting as trade marks?

Use with other signs may indicate the sign is not being used as a trade mark in its own right - However, it may be two separate trade marks operating concurrently. Even if it is being used as a trade mark, its significance may be diminished by other material. (see 8).

Does the sign have a primarily functional purpose?

Functional features (e.g. on a shape trade mark) make it less likely (though not impossible) that a sign is acting as a badge of origin

3. Use 'in the course of trade'



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3. Use 'in the course of trade' The term use ‘in the course of trade’ is not limited to the actual selling of the goods or services. In Angela Christou v Tonch Pty Ltd [2008] ATMO 24 at 24, the delegate usefully set out the three ways in which the authorities establish that use in the course of trade can be demonstrated. These are:

1. use through an actual dealing in the goods and/or services

2. use through an offering for sale of the goods and/or services

3. use through an intention to offer the goods and/or services which is manifested through preparatory steps showing an objective commitment to using the trade mark

3.1 Dealings

A ‘dealing’ generally means a sale where the mark is used on, or in physical or other relation to, the goods or services in question. In Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, a sale of a single boat as a prototype from an American company to an Australian importer was sufficient to constitute a dealing in the goods. The trade mark occurred in brochures, invoices and shipping documents relating to the sale. It was unclear whether the trade mark had been used on the boat itself, but Jacobs J did not need to be satisfied of this in order to conclude that the trade mark had been used in relation to the goods.

Similarly, in Blackadder v The Good Roads Machinery Co Inc (1926) 38 CLR 332, an Australian company imported machinery from the United States bearing the American exporter’s trade mark but removed it and affixed its own trade mark on the goods prior to sale. Although purchasers never saw the exporter’s trade mark, the exporter was held to have used it in Australia.

The free distribution of a real estate magazine to the public was found to be use of the trade mark for the purposes of the repealed Act (“Realtor” decision, Re Application by Estate Agents Co-Operative Ltd, 20 IPR 547). Note that in this case the magazine was supplied to real estate agents on the basis of a subscription and was then made available by the subscribers to the public for no charge. The magazine was therefore sold in the marketplace to the subscribers. However, Hearing Officer Hardie commented that the fact that the magazines were offered to the public to promote the applicant’s business operations established that they were used in the course of trade. See also Hospital World trade mark [1967] RPC 595, Update trade mark [1979] RPC 166, Golden Pages trade mark [1985] FSR 27 and Visa trade mark [1985] RPC 323.

The hire purchase or leasing of a product is also a dealing that constitutes use ‘in the course of trade’ (see Caravillas Trade Mark [1982] RPC 425).

3.2 Offering for sale of goods and/or services




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It is not necessary for goods or services to have actually been sold for use ‘in the course of trade’ to have occurred. The offering for sale of goods or services, if genuine, will suffice. In Moorgate Tobacco Co. Limited v Philip Morris Limited and Another, [1983-1984] 156 CLR 414, Deane J stated at 433 that:

The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.

His Honour went on to state that in the cases where a small amount of use had been found sufficient to determine that the trade mark had been used in the course of trade:

... it is possible to identify an actual trade or offer to trade in the goods bearing the mark...

In “Moorgate” it was found that there was no local use of the trade mark as a trade mark; there were merely preliminary discussions and negotiations about whether the trade mark would be used.

Use of a trade mark in advertising must be concurrent with the placing of the goods or services on the market. Advertisement where the goods/services are not immediately available for sale does not constitute use within the meaning of the Act (see the decision of the British Registrar in Radford & Co's Application (1951) 68 RPC 221 and John Toh v Paris Croissant Co. Ltd [2010] ATMO 34). However, it is important to note that while advertising by itself will not constitute an offer for sale, it will be relevant in determining an objective commitment to use (see 3.3 below).

Similarly, the provision of brochures or samples will not by itself constitute use ‘in the course of trade’ where the goods are not concurrently available for order or purchase. In Settef SpA v Riv-Oland Marble Co (Vic) Pty Limited (1987) 10 IPR 402 at 417, McGarvie J said:

I consider that it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia. The mark must be used for the purposes of trade: W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 at 191. The forwarding of samples and brochures is not sufficient to indicate that Settef was ready and willing to fulfil such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for Settef to export here.

3.3 Intention to use coupled with preparatory steps manifesting an objective commitment to use

This third category of use ‘in the course of trade’ encompasses situations where an owner has not dealt in goods or services or offered them for sale as at the priority date of the application, but has gone beyond mere preliminary activities. In Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 at 40, Drummond J held:




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…the owner will not use its mark unless it has so acted to show that it has gone 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, that is, to carrying its intention to use the mark into effect.

An example of conduct falling into this category can be found in the earlier decision of Gummow J in Buying Systems (Aust) Pty Ltd v Studio SrL [1995] FCA 1063. The case concerned the trade mark STUDIO for magazines. The opponent claimed to be the owner of the trade mark, and in support lodged evidence showing it had obtained business cards and letterheads bearing the mark. Crucially, it had also solicited third parties to advertise in the magazine. These activities could not constitute a dealing, as the application was in respect of magazines, not advertising services. However, the combination of activities indicated a clear intention, coupled with preparatory steps demonstrating an objective commitment to use, sufficient to ‘constitute a relevant use of the mark’ in respect of the relevant goods.

Whether an objective commitment has been demonstrated will depend on all the relevant circumstances. A case for objective commitment to use the mark at a particular date may also be difficult to establish where the person claiming use has not subsequently sold or offered for sale the goods or services in question (see Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261).

3.4 Examples of preliminary activities found not to constitute use in the course of trade

The cases highlight a number of activities that will not by themselves constitute use ‘in the course of trade’. Many of the cases below turned on a single instance of bona fide trade mark use being established and should be viewed in that context.

• Registration of a business or domain name (see Angela Christou v Tonch Pty Ltd [2008] ATMO 24)

• Hiring a graphic designer to design a product label (P & T Basile Imports Pty Ltd v Societe Des Produits Nestle SA (2002) ATMO 16)

• Use on business cards or letterheads (Unilever Australia Limited v Karounos [2001] FCA 1923)

• Creation of a price list and order form without evidence pertaining to who has seen these documents and in what circumstances (Bang on the Door Ltd v Playgro Australia Pty Ltd (2004) 60 IPR 117)

• Use of the sign on an A-frame board followed by the words ‘Coming Soon’ (Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278)

3.5 Signs used by charitable organisations




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Cases dealing with the question of whether there has been use ‘in the course of trade’ have generally addressed the issue in the context of commercial activities. However, determining whether use ‘in the course of trade’ has occurred can be more difficult if the user provides its goods or services for charitable or philanthropic purposes.

In Bravehearts Inc v Brainstorm Productions Pty Ltd [2009] ATMO 25 at 32, the delegate said:

As a not for profit organization, the opponent provides charitable services. As it does not sell its services, or offer goods for sale for its personal profit, it is dependent on establishing a commercial reputation through exposure of its marks to the public by other means, for example, community announcements, business papers and advertising material, fund raising activities and educational material.

Even if a user does not trade for profit, they might still show that they receive a monetary benefit for providing their goods or services under a particular sign. Such benefits may be in the way of donations or sponsorships allowing them to carry out their activities. Activities conducted under a sign for the purpose of raising funds via donation or sponsorship, or activities funded by donations or sponsorship, may have a sufficiently commercial character to establish that use of the sign is use ‘in the course of trade’. Similarly, use of the sign for purposes ancillary to these activities (such as advertisements and education programs for raising awareness in relation to a particular issue) might also be use ‘in the course of trade’ in respect of charitable fundraising or other philanthropic services carried out by the user.

4. Australian Use



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4. Australian Use The trade mark must be used in the course of trade in Australia. However, that does not mean that all activities connected with the trade must have taken place in Australia.

4.1 Goods sold or offered for sale but not present in Australia

In the Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199, it was held that a trade mark is used in Australia if the goods are offered for sale in Australia but at the time they are offered for sale are actually only in transit to Australia. It should also be noted that McGarvie J in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 401 was prepared to infer that, in the absence of any indication that any consignment of goods shipped from Italy to Australia did not arrive, that the consignments reached the consignees.

However, in W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182, where cigarettes were purchased and paid for in America and sent direct to consumers in Australia there was said to be no use of the mark in Australia as all “trade” in the goods took place in the United States. Trading ended once goods were purchased or otherwise acquired for consumption, that is, the course of trade had ended outside Australia.

4.2 Services provided outside Australia

In Carnival Cruise Lines Inc. v Sitmar Cruises Ltd. AIPC 91-049 Gummow J, in the Federal Court, found that although the actual services of carrying out cruises did not take place in Australia, “...crucial integers in the course of trade took place in Australia...” Trade commenced with ‘steps taken to encourage enquiries from prospective customers’ in Australia.

4.3 Advertising in foreign publications

Advertising in foreign publications available in Australia will generally not constitute use ‘in the course of trade’ in Australia unless there appears to be specific targeting of Australian customers. In Knickerbox Ltd v Pedita Australia Pty Ltd (1995) 31 IPR 108 at 117, the delegate held:

Apart from the indication that the goods illustrated in these advertisements originate from the opponent’s company, or are available at one of its retail outlets, no information has been made available as to how and where a person in Australia might order the goods, nor what the price of the goods, including their transport, might be in the local currency. I do not think these advertisements can be interpreted as offers for the purpose of soliciting trade in an article of clothing that will be supplied on order.

…

4. Australian Use



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I must concur with Mr Cowin’s submissions that, given the use of British currency and in the absence of the opponent company’s branches in Australia, the advertisements could not be seen to be directed to the Australian consumers, nor intended for the Australian subscribers of the magazines.

4.4 Use of a trade mark on the internet

A trade mark used on a website will not be used in Australia unless that website specifically targets Australian consumers. In Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471 at 43, Merkel J held:

…use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.

4.5 Inadvertent use

An owner may be able to establish use of the trade mark in Australia even if they had no knowledge of that use. In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 at 51, a majority of the High Court held:

The capacity of a trade mark to distinguish a registered owner's goods from those of others, as required by s 17, does not depend on whether the owner knowingly projects the goods into the Australian market. It depends on the goods being in the course of trade in Australia. Each occasion of trade in Australia, whilst goods sold under the trade mark remain in the course of trade, is a use for the purposes of the Trade Marks Act. A registered owner who has registered a trade mark under the provisions of the Trade Marks Act can be taken, in general terms, to have an intention to use that trade mark on goods in Australia. It is a commonplace of contemporary international trade that prior to consumption goods may be in the course of trade across national boundaries.

4.6 Goods produced for export

If a trade mark is applied in Australia in relation to goods and/or services to be exported from Australia the application of the trade mark to the goods or in relation to the goods or services constitutes use of the trade mark for the purposes of the Act (subsection 228(1)). Similarly if any act is done in Australia to export goods and/or services which, if done in relation to goods and/or services in Australia it would constitute use of a trade mark, then that act is use of the trade mark for the purposes of the Act.

See Deckers Outdoor Corporation v Luda Productions Pty Ltd (2006) ATMO 74.

4. Australian Use



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The equivalent of current section 228 was section 117 in the Trade Marks Act 1955. This referred only to goods. For this reason subsection 228(2) of the Act includes a retrospective provision: if the actions set out in paragraph 1.8 above have been done in relation to services prior to 1 January 1996, then they will be taken to be use of the trade mark for the purposes of the current Act. Exceptions to this provision will be cases where a court has made a decision or an appeal has been determined from a court decision before 1 January 1996 - those decisions will stand despite the provisions of subsection 228(2).

5. Use 'in relation to goods or services'



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5. Use 'in relation to goods or services' The use must be on, or in physical or other relation to, the goods or services, for example:

• Use on the goods themselves

• Use on swing tags or labels

• Use on invoices, receipts etc provided in the course of trading the goods or services

• Use in advertising material

• Use on other printed or electronic material offering the goods or services for sale

• Use on shop fronts, websites and physical displays where goods or services are offered for sale

6. Use by the trade mark owner, predecessor in title or an authorised user



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6. Use by the trade mark owner, predecessor in title or an authorised user Use of the trade mark must be by either the person claiming to be the owner, its predecessor in title or an authorised user.

6.1 Use by the trade mark owner

Care must be taken in determining whether the person claiming to be the owner is in fact the person who has used the trade mark. Evidence may demonstrate that it is another party that has used the trade mark (although this may constitute authorised use and still be considered use by the person claiming to be the owner – see 6.3 below).

6.2 Use by a predecessor in title

Trade marks are often assigned or transmitted from one person to another. This may be because of the sale of a business, a reorganisation of a corporate group or because a trade mark owner dies and their property passes to their beneficiaries.

Use by the predecessor in title will generally be taken to be use by the person who claims to be the owner. This is specifically provided for in subsections 41(5) and 44(4).

6.3 Authorised use

Often trade mark owners do not intend to use the trade mark themselves. Instead, they will authorise (license) another party to use the trade mark. This arrangement is common in corporate groups where the intellectual property is owned by a parent company or a nominated subsidiary, and the trading activities are carried on by another related entity.

Authorised use of a trade mark is taken, for the purposes of the Act, to be use of the trade mark by the owner of the trade mark (subsection 7(3)).

To be an authorised user the person who uses the trade mark must use the trade mark under the control of the owner of the trade mark (subsection 8(1)). The user must deal with or provide, in the course of trade, goods or services in relation to which the trade mark is used (paragraphs 8(3)(a) and 8(4)(a)).

Two types of control have been set out in subsections 8(3) and 8(4) but these in no way limit the meaning of the expression “under the control of” (subsection 8(5)). The two types of control expressly set out in the Act are:

• where an owner of a trade mark exercises quality control over goods or services (subsection 8(3)); and

• where the owner of the trade mark exercises financial control over the other person's trading activities in relation to the subject goods or services.

6. Use by the trade mark owner, predecessor in title or an authorised user



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There is no provision under the Act for recording authorised users of trade marks on the Register. This is in contrast to the provisions which existed under the Trade Marks Act 1955 for recording registered users. (See reference to powers of an authorised user of a trade mark under section 26 of the Act discussed in Section 8 of this Part.)

7. Use of a trade mark with additions or alterations



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7. Use of a trade mark with additions or alterations Sometimes a trade mark will be used with additions or alterations that do not substantially affect its identity. If this is established the Registrar and the courts have been invested with a discretion in deciding whether the trade mark has been used. In exercising this discretion regard is to be paid to the circumstances of the particular case (subsection 7(1)).

An example of a trade mark that was used with additions or alterations that did not substantially affect its identity can be found in QH Tours Ltd v Mark Travel Corp (1999) 45 IPR 553. In that case, the delegate found that use of the word ‘Funjet’ solus constituted use of the trade mark ‘Funjet-Service’.

7.1 Use of a word trade mark with an illustrative device

In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15, the High Court considered the significance of use of the word BAREFOOT with a footprint device that the Court regarded as ‘an illustration of the word’. The Court held, in the circumstances of the case, that the use, in light of the provisions of s7(1), was use of the registered trade mark (which consisted solely of the word BAREFOOT). The majority said at 69:

The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).

However, whether use of a word trade mark with an illustrative device added to it can meet the requirements of s7(1) will depend on the circumstances of each case. Particular regard must be had to whether such a device is an obvious illustration of the word trade mark. It is possible that a highly stylised device may not be considered use of the word trade mark.

8. Use of multiple trade marks



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8. Use of multiple trade marks Traders may use multiple trade marks in relation to the same goods or services, for instance a house mark and a trade mark for a specific line brand (e.g. INTEL and PENTIUM). It may be difficult to establish whether a person has used multiple trade marks or a single trade mark containing multiple elements. However this enquiry is necessary to determine whether there has been use of the trade mark in question.

Particular difficulties arise where one or more of the elements present is descriptive in nature. In Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, it was held that use of the word COLORADO with a device was use as a composite mark, and not use of the word COLORADO solus. However, in Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 at 133, Kenny J said:

I accept, as Sports Warehouse contended, that a sign may be registrable as a trade mark even though it is used together with another trade mark, and that there can still be use of a mark where it is a component of a larger composite mark: see Chocolaterie Guylian at 93 [97]; also E & J Gallo Winery at 662 [68]-[69]; also E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69 at 108 [186] (Flick J). Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 74 IPR 246 (‘Colorado’) is not authority for the contrary proposition. Each case turns on its own facts and the trade mark in question viewed in the context of those facts.

However, if we are to accept that a sign can be used as a trade mark even where it is used as part of a larger trade mark, the presence of more distinctive material in close proximity to the sign will likely make it difficult to establish use sufficient to demonstrate a capacity to distinguish in its own right. In Sports Warehouse, Kenny J held at 133:

Where an application for registration relies on use, the question is whether the particular sign for which registration is sought has itself been used as a trade mark so as to become capable of distinguishing the relevant goods or services. In my view, when the “TW” logo was placed in close association with the words “TENNIS WAREHOUSE” in 2003, this had the effect of substantially diluting any trade mark significance that attached to the words “TENNIS WAREHOUSE” by themselves.

See also Wellness Pty Ltd v Pro Bio Living Waters Pty Limited [2004] FCA 438; Michael Harvey v Lion-Beer, Spirits & Wine Pty Ltd [2013] ATMO 5.

Documents

Part 19A - Use of a Trade Mark - IP Australiamanuals.ipaustralia.gov.au/trademarks/Part_19A.pdf · The use of a trade mark to indicate a connection in the course of trade has been