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Trademarks and Trade
Secrets
13 Oct 2015 Chris Wilkinson
What is a trade mark?
• A sign used to identify the trade source of goods or
services: a “badge of origin”.
– Most trade marks are words or logos, but a trade mark may also
be a colour, shape, sound or smell.
Word marks
• Four distinct categories of word marks – Invented words (KODAK for film)
– Suggestive or emotive words (SUNSILK for shampoo)
– Arbitrary words (APPLE for computers)
– Purely descriptive words (NICE for wine)
• Descriptive words are difficult, and thus expensive, to obtain and enforce • the normal descriptive name for a product, common
surnames, geographical names
Colour trade marks
• Colour TERRACOTTA registered in relation to non-
metallic rigid irrigation pipe fittings and connectors
– TM Reg. No. 796572 – Philmac Pty Ltd
– Endorsement: The trade mark consists
of the colour TERRACOTTA
(PMS 484c + /- 10% Lab, when
observed under a controlled
D65 illuminant) applied to the
connecting inserts of the goods,
as shown in the representation
attached to the application.
Sound trade marks
• 759707 - The trade mark comprises the words "AH McCAIN" followed by a "PING" sound, being a high pitched ping sound of short duration, followed by the words "YOU'VE DONE IT AGAIN". (McCain Foods)
• 1110068: The trade mark consists of the sound of five musical notes, namely C, D, E, G and A as represented in the musical notation on the application form, as recorded on the compact disc accompanying the application form. (Toyota)
Scent trade marks
• TM Reg. No. 1241420 – E-Concierge
Australia Pty Ltd
• Class: 28 Golf tees
Endorsements: The mark consists of a
Eucalyptus Radiata scent for the goods.
Trade Marks –
Types of Protection
• Common Law Trade Mark TM
– Rights obtained through use in the marketplace
– Protection obtained by gaining reputation in a particular
geographical location
– Only available in some countries
• Registered Trade Mark ®
– Rights obtained by registration at IP Australia extend
Australia wide
– Stronger, more enforceable right
Why register a trade mark?
• Unregistered trade marks may still have
protection under the common law and/or the
consumer protection legislation.
• Common law: the tort of “passing off”
• Competition & Consumer Act, s18:
• However TM registration can provide a
“stronger” and more easily enforceable right.
Advantages of TM
registration
• No requirement to establish a reputation in the trade mark
• The addition of other distinctive elements will not provide a defence to TM infringement
• Deterrent effects of registration
• Policing by TMO
Business, Company and
Domain names
• A business name registration is required if you are conducting a business under a name other than your own personal name.
• Incorporation of a company creates a new legal entity.
• Registration of a business/company name does not give you any entitlement to use such names in a way that constitutes a breach of another person’s registered mark (or constitutes passing off or misleading/deceptive conduct). The same applies to domain names. – ie a registered business name does not confer trade mark rights
– You should separately check trade mark register
Goods and Services
• A trade mark is registered in relation to goods and services it is to be used in relation to
• Protection extends to those goods/services and similar goods/services
• The same mark can be registered for unrelated goods and services
– Requirement is that there is no reasonable risk of confusion
The Trade Mark
Classification System
• The goods and services classification system is an
administrative tool for purpose of grouping related goods or
services into easily searchable lists
– used to facilitate searching of the Register for conflicting trade mark registrations/
applications
• Australia follows the WIPO NICE classification system in which
goods and services are allocated between 45 classes
– Classes 1-34 = Goods
– Classes 35-45 = Services
– See ATMOSS for overview and searchable interface
• Trade mark applications must list classes and specify goods and
services in each class the mark is to used in relation to
– Filing costs are based upon the number of classes
The importance of searching
• Before a trade mark is adopted, searches should be conducted to check the availability of the proposed mark for use and registration – if someone else has registered a similar mark, and/or commenced
use of a similar mark, this may block the application or they may be in a position to object to the use of the proposed mark.
• It is important to search the Australian Trade Marks Register (ATMOSS) and general checks should also be made of the internet, ASIC database etc.
• Consider using IP Australia’s “Headstart” system to have a search done
Registration process
• Applicant applies to the TMO for registration of the mark for defined classes of goods and services
• TMO considers application, searches the Register for conflicting marks and considers other potential grounds of objection (eg distinctiveness)
• Application will be accepted unless there is a good objection to it - applicant may appeal rejection to the FCA
• acceptance is advertised - others may then oppose - if not, granted
• The initial period of registration is 10 years - duration is potentially indefinite, if you pay the renewal fees
• Once a TM is registered, the ® symbol may be used. The “TM” symbol may be used for unregistered marks.
Filing
• Before filing, must ensure all filing details correct as only
minor amendments can be made once application filed.
• Double check the trade mark is in the correct format
– i.e. simple word mark, stylized logo, etc.
– Ensure copyright in any logo has been assigned
– Cannot do any amendments which change the identity of the trademark
– File what you intend to use
• The Owner must be a legal person/entity
– applications cannot be filed under a business name, trust, clubs, etc
• Check the classes and goods/services cover the actual or
intended use
– After filing only certain narrowing amendments which do not broaden the
scope of the application are allowed
Filing – Standard or
Headstart Application • Standard Application
– examined in 3-4 months
– 21 months to respond to any objections
• Headstart Application – quick search/examination
– Two part application process
– Part 1 Search & Initial “Examination” Report of any objections (or none) performed
in 5-10 days of filing
– 5 Days to decide whether to proceed and if so pay Part 2 Fees
– If Part 2 fees not paid, the application is not published and will be treated
as never filed
– Note that occasionally further objections may be raised later
Examination
• Trademark Examiners examine application against requirements
and issue Examination Report with any objections
• 15 months from the date of 1st Report to overcome objections
and have the application accepted
– Not a response deadline - must overcome all objections, including any
further objections
– Can obtain 6 months of extensions by paying monthly extension fees
– Further extensions available in limited circumstances (e.g. errors)
– Other options to buy more time is to file a divisional application.
• Examiner’s objections overcome trade mark ACCEPTED.
• If examiner’s objections cannot be overcome application lapses
– Applicant can request an Oral Hearing (appealable to Federal Court)
Grounds for rejecting an
application
– s39: TM containing prohibited signs
– s40: TM cannot be represented graphically
– s41: TM not distinguishing applicant’s
goods or services
– s42: TM scandalous or its use contrary to law
– s43: TM likely to deceive or cause confusion
– s44: identical etc trade marks
S41 - Capable of
distinguishing
• S41 - is a mark capable of distinguishing the applicant's goods or services from the goods or services of other persons – ie not descriptive
• Inherent property of the trademark – ie use does not change inherent ability to distinguish
• Act provides three options: – Inherently adapted to distinguish
– To some extent inherently adapted to distinguish
– Not to any extent inherently adapted to distinguish
Test of inherent adaptability
to distinguish
• The question to be asked in order to test
whether a word is adapted to distinguish one
trader's goods from the goods of all others
• is whether the word is one which other traders
• are likely in the ordinary course of their
business and
• without any improper motive,
• to desire to use upon or in connection with their
goods.
S41 – Trade mark lacks
distinctiveness • Section 41 Often raised against marks descriptive of the
goods and services the registration is being sought for
– eg Oranges for Orange Juice will be refused because it is a word which
other traders would, in good faith, also wish to use to describe the same
goods
– Most non traditional trade marks (colour, sound, etc) lack inherent ability
to distinguish
• Overcome by:
– filing written submissions,
– amending the goods/services, or
– providing evidence of use and/or actual recognition in the marketplace
s44 – conflicting marks
• A TM application will be rejected if the TM is
substantially identical with, or
deceptively similar to,
a pre-existing registration/application that
covers same or similar goods/services.
• deceptively similar = so nearly resembles another
trade mark that it is likely to deceive or cause
confusion
Similarity of Marks
• In considering whether marks are substantially identical they should… be 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
• On the question of deceptive similarity, a different comparison must be made – The marks are not now to be looked at side by side. The
issue is not abstract similarity, but deceptive similarity.
– An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device
Factors to be considered when comparing
trade marks
• Imperfect recollection – a person who is familiar with both words will neither be
deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived.
– Consider sound and appearance
– The doctrine of imperfect recollection must not be carried too far. In considering its application not only must the class of person likely to be affected be considered, but no more than ordinary possibilities of bad elocution, careless hearing or defective memory ought to be assumed.
Factors to be considered when comparing
trade marks
• Invented words – There is a much greater possibility of deception and confusion between words
which are not in common use in the language.
• Descriptiveness of mark – Less attention will be paid to descriptive elements
• Words and devices depicting words – A word and its equivalent pictorial representation will often convey the same
mental image to the customer
• Marks which contain another mark – In general, if a dominant portion of both marks is the same then confusion
may still be likely despite the existence of other material in the marks.
– An exception to this is where, because of additional or different material, the marks as a whole convey significant different impressions
Factors to be considered when comparing
trade marks
• Type of customer
– “The usual manner in which ordinary people behave must be
the test of what confusion or deception may be expected.
• Type of goods and services and trade channels
– The nature of the goods and the market through which they will
be purchased will affect the care with which purchasers will
view trade marks on goods which they select.
– Expensive or technical goods compared to cheap or mass
consumer goods
S44 – Overcoming a s44
objection
• Response options are:
– file written submissions,
• Eg actual confusion unlikely due so specific circumstances
– amend the goods/services,
• May be able to file a divisional application to pursue deleted
goods and services
– provide letter of consent from owner
– commence non-use proceedings against cited trade mark,
– provide evidence of honest concurrent use or prior use,
– defer acceptance of your mark
Acceptance and Registration
• Once accepted, the acceptance of the trade mark is
advertised – Third parties have 2 months to oppose acceptance
• Once registration fees are paid a Certificate of
Registration is issued – Can only start using the ® symbol once Certificate of Registration issued
– ™symbol can be used even if the trade mark is not registered.
• Registration last 10 years – Registration may be renewed indefinitely for further period(s) of 10 years
– If renewal is not paid by the due date, there is a six month grace period in
which we can still pay (late fees apply)
Oppositions
• Any third party can oppose acceptance – Must file a notice of opposition within 2 months of acceptance
– Follow-up within one month with a statement of grounds and particulars
• The applicant has 1 month to file a notice of intention
to defend
• If defended, both sides must then file evidence in
support of their respective claims
• Opposition then considered by a Hearing Officer – Either on submission or more commonly at an Oral Hearing
– Decision may be appealed to the Federal Court of Australia.
Grounds for opposing
registration – s57: registration may be opposed on same grounds as for
rejection (ss39, 41, 42, 43, 44 but not s40)
– s58: applicant not true owner of trade mark
– s58A: opponent has earlier use of a similar mark
– s59: applicant not intending to use trade mark
– s60: use of the TM likely to deceive/cause confusion because of the reputation established in another mark(s)
– s61: TM containing or consisting of a false geographical indication
– s62: application etc. defective etc.
– s62A: application made in bad faith
Non use Actions and
Rectification of the Register • Non Use – third parties can file non-use removal
action to remove a trade mark from the Register – However can only be filed after an initial period of 5 years from the date of
filing of the registered mark (allows the owner some leeway in the case of
delayed initial use).
– Any use (including a single use) by the owner in three years preceding
the filing of the non-use action is sufficient to defeat non-use action.
• Can also apply to the Federal Court of Australia to
rectify the Register by canceling the registration,
removing or amending an entry wrongly made or
remaining in the register, etc
Benefits of Registration
• Registration of a Trade mark provides – A trade mark gives the owner the exclusive right to use, license or sell
the mark within a jurisdiction in relation to particular goods and services
• Right to sue for infringment
– Entitles the owner to use the ‘®’ with their trade mark
– Eliminates good faith defence that other party did not know that the mark was a trade mark
– Do not need to prove there is a reputation in the trade mark separate to its registration
• Term of registration – 10-year registration, indefinitely renewable if eligibility maintained and
registration not abandoned and trade mark is used continuously
Infringement of a Registered
Trade Mark
• Use of a sign as a trade mark
• that is substantially identical or deceptively similar to the registered mark; and
• on the same goods or services for which mark is registered;
• or closely related goods or services; or
• If it is a well-known mark, on unrelated goods or services in a way to suggest a connection with the well-known mark;
• Remedies: injunctions, damages, account of profits
Unregistered Trade Marks ™ -
Common law rights under tort of
passing-off • Exclusive right to enforce a trade mark for goods or
services belongs to the one who first (actually) uses it in connection with those goods or services
• The owner of an unregistered trade mark may use the ‘™’ symbol with the trade name or logo
• Use under common law gave rights only where the mark was used plus a “zone of natural expansion”
– Need to show reputation and extent of reputation in any action
• In some jurisdictions, prior unregistered use may provide rights against a later registrant
International Filings
• Two ways to file internationally
– national applications directly in each country OR
– through the Madrid Protocol designating certain member countries.
• Convention Claims: Under Paris Convention, any person who
files a trademark application in a member country may claim
priority of that filing date if an application is filed in any other
member country within six months from the date the original
application was filed.
– ie 6 months to file overseas and have it treated as same filing date in AU
– Must be for the same trade mark and same (or narrower) statement of
goods/services
– Also means an original application in Australia can’t be accepted in less
than 6 months in case an overseas mark was filed earlier
Protect a trade mark
overseas
• Additional searches should be conducted
before commencing use overseas.
• Note that some countries operate a first to
use system whilst others are first to file
– Eg China is first to file with limited bad faith
provisions
– file first before talking to distributors, etc
Common law tort of
“Passing Off”
• Protects Commercial Reputation – Not just unregistered marks but also imagery, “get
up”/product dress or advertising
– Prevents suggestion of a connection where none exists
• Key Elements of Passing Off – Business reputation or goodwill possessed by the
plaintiff
– Deceptive conduct by the defendant
– Actual or possible damage to the plaintiff resulting from that conduct
Determining what is deceptive
conduct under passing off
• Surrounding factors other than
similarities in getup will be relevant,
including:
– how brand and price conscious consumers are
– the trade channel and manner in which the
goods/services are marketed
– the expense of the product
– time available for consumer selection
Misleading and Deceptive
Conduct
• S18 of the Australian Consumer Law:
– "A person must not, in trade or commerce,
engage in conduct that is misleading or
deceptive or is likely to mislead or deceive."
– Former legislation: Trade Practices Act 1974
(Cth)
• Remedies – injunctions, damages etc
– But not an account of profits
Misleading and Deceptive
Conduct
• Similarities to passing off - many claims brought jointly under both – Will be a question of fact in the circumstances
– Note copying is not necessarily misleading
• Advantages over passing off – able to attack misleading conduct that lacks any
association to a business reputation
– able to attack unauthorised associations to third parties
– less importance connected to establishing reputation in the area
Confidential Information
• Confidential Information is not strictly a form of property
– Protected by way of an action for breach of confidence
• A person who is under an obligation of confidence will be
prevented from using or disclosing the confidential
information until they are released
• If the information passes into the hands of a third party
without any wrongful action by that person and without
any obligation of confidence arising, the owner of the
information has no remedy against that third party
– Typically someone under a bound of confidentiality will be
released once the information enters the public domain
A Trade Secret is a form of
Confidential Information
• No Exact Definition – Broadly it is confidential information arising in a
commercial context
• Secret formulae and processes, plans for financial expansion and the development of new products and processes are typical examples – Customer profile information such as
names/demographic info, and purchase histories /spending habits probably are.
• Information need not be technical or inventive – But can’t be too speculative
TRIPS Agreement Definition
of Confidential Information
• Members states must protect "undisclosed information" against use which is contrary to "honest commercial practices“
• TRIPS requires protection of information if it is: – secret in the sense that it is not, as a body or in the precise
configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
– has commercial value because it is secret; and
– has been subject to reasonable steps under the circumstances by the person lawfully in control of the information to keep it secret.
Assessing Trade Secret
• Relevant factors are: – the extent to which the information is known outside the owner's
business;
– the extent to which it is known by employees and others involved in his business;
– the extent of measures taken to guard the secrecy of the information;
– the value of the information to him and to his competitors;
– the amount of effort or money expended by him in developing the information; and
– the ease or difficulty with which the information could be properly acquired or duplicated by others.
• Similar reasoning applies to confidential information
Breach of Confidence Action
• Requires: – The confidential information which is sought to be
protected must be identified with precision, and not merely in global terms.
– The information must have the necessary quality of confidence.
– The information must be received by the defendant in circumstances so as to import an obligation of confidence.
– There must be actual or threatened misuse of the information, without the consent of the plaintiff.
Remedies
• a variety of equitable remedies are
available including
– an injunction,
– the delivery up of items containing confidential
information,
– damages
– an account of profits
– equitable compensation.
Identify Confidential
Information with Precision
• Mere concepts not protectable
– know how may not be protected as a trade
secret unless it can be specifically defined
• Speculative information/ideas are thus
generally not protectable
– Are significant follow on experiments or
research required to define the
problem/solution with sufficient precision
Is the information actually
confidential?
• Typically it is insufficient to assert that all information learned by in the course of employment, negotiations, or resulting from a professional association, is confidential.
• Bestowing the epithet "confidential", "trade secret", or "commercial in confidence" on information will not turn non-confidential information into confidential information capable of being protected
• Instead must identify specific information to be protected
Identifying Confidential
Information with precision
• An agreement which clearly identifies the
nature of the information that is to be
disclosed will typically protect both parties
– Court seeks to prevent global claims which have
the potential to used to oppress or harass ex-
employees or third parties
– Patent specification has been found to be sufficient
– Confidentiality agreement can be used when
describing a new idea to another party
Obligation of Confidence
• Determined using reasonable person test and
particular purpose test
– Would a reasonable person have realised the information
was being provided in confidence
– Was the information provided only for a particular purpose
• May be imposed by an express term in a contract or,
in appropriate circumstances, by an implied term
• May arise within the context of an existing
relationship or by the circumstances of disclosure
– Verbal warning may be sufficient
Quality of Confidential
Information
• Provided there is no term of sale or other limitation preventing
disassembly, reverse engineering a product will not typically be
a breach of confidentiality
– Information which can be determined by carrying out tests, or taking apart
a product generally lacks the requisite quality of confidence
• Exact product formulation can sometimes be protected
– For example if exact ratios not easily reverse engineerable
• Courts will act to prevent springboarding
– Occurs where confidential information which can be reversed engineered
from a product is provided to a third party early
– That third party cannot use it to their advantage
• ie prevent an unfair headstart
– Includes using as a basis to make a different/variant competing product
Employer Owns Confidential
Information
• Confidential information developed in the course of an employee's employment "belongs" to the employer – Employer retains control over how to use the information
and when to take action in case of actual or threatened breach
• However skills and knowledge gained by employee through doing their job is not generally considered to be confidential information – In some cases employer may be able to enforce a post
employment restraint period but courts are wary of oppressive conduct by employers
Transfer and Licensing of
Confidential Information
• Confidential Information can not be directly
transferred or licenced
• However they can be effectively transferred or
licensed in commercial agreements through
controlling the right to use or disclose
• Typically transfer is in the form of a licence to use the
information with undertakings from the discloser that
they will neither make any further use of the
information nor disclose it to others
Attitude of Employer is
Important
• An employer who treats the protection of information seriously will significantly increase the likelihood that a court will provide relief if an ex-employee/third party threatens to misuse the information
– Identify information with precision and mark
– Explain implications of misuse to employees
– Consider using confidentiality agreements
– Restrict access to the confidential information
Any Questions?
