Trade Marks Law - StudentVIP

Trade Marks Law

Contents Intro/Registration:

• Intro and types of trade marks • Definitions and concepts • Registration process • International Registration

Rego Problems • Removal from register for non-use: ss 92-105 • Infringement: ss 120-144 • Offences: ss 145-160

Infringement/Defences: • Grounds for rejecting registration: ss 39-44 • Grounds for opposing registration: ss 57-62A • Amendment/cancellation and revocation of registration • Assignment and transmission ss 106-111

Commercial • Licensing • Parallel imports

Domain Names International

• EU • USA • UK • Brazil

Introduction Specifications

• Protection obtained through registration or 1st use • Length of protection = potentially indefinite • Infringement occurs through using goods/services covered by

the registration Legislation

• All IP is governed by the Federal Parliament through s 51(xviii) o Or through the external affairs power in s 51(xxix) o Administration is the responsibility of the Attorney-

General’s department • Australia’s obligations under

IP Supernotes – Trade Marks

o Arts 15-21 of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement)

o The Trade Mark Law Treaty Definition: Trade Marks Act 1995 (Cth), s 17

• 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 another person

• Definition of a sign: s 6 o A letter, word, signature, numeral, device, brand, heading,

label, ticket, aspect of packaging, shape, colour, sound or scent (or any combination thereof)

• Excluded from the definition: s 18 o Any sign specified in the Regulations not to be a trade

mark or part thereof Concept of a Trade Mark

• Trade marks are signs (or combinations of signs) that indicate the origin or quality of goods/services

o The market share of a product can be protected by a brand name with a solid reputation and goodwill

Who May Apply for Ownership of a Trade Mark

• A person may apply for registration of a trade mark if they claim to be the owner of the mark: s 27(1)

o They must also: § Be in Australia § Use or intend to use the mark in relation to goods

and/or service • A trustee can file an application to be the owner of a trade mark,

although a trust itself cannot o The trustee can choose whether to name themselves only

as trustee, or as trustee for a particular trust o If filing internationally, it is usually better to not include 'as

trustee for x' in the applicant name (especially for non-common law jurisdictions)

IP Supernotes – Trade Marks Types of Trade Marks Descriptive Words

• Must be inherently adapted to distinguish a product in order to be registered

• Names can be registered (eg ‘Hilton Hotels’), but they cannot be descriptive of the business

o If the name-person sells their business, they should make sure the name does not go with it

o Where the mark is valuable to the business, the previous owner can license it to the new owner

Mark Foy’s Ltd v Davies Coop (1956)

• HELD: The words ‘Tub Happy’ do not have direct reference to the character or quality of the goods

o Most people would conclude that these words suggest that the garments will emerge from the tub in a clean and well state, but that is only due to a failure to logically think of any other possible connotation

• RULE: The test is whether the words “convey any meaning sufficiently tangible to amount to a direct reference to the character or quality of the goods”

• It seems as if descriptions that are laid out in proper English are

unable to be trade marked o Descriptions that are meaningfully incorrect enough to not

be a specific description can be trade marked o As long as the description does not trespass on the right of

competitors to use any ordinary English words or phrases referring to the quality of their goods

• In a later case, the word ‘Motorine’ was deemed to be a registrable mark for motor oil as, although it no doubt suggested that it was an oil to be used on a motor, it did not have any direct reference to the character or quality of the goods

Figurative Devices

• A picture of some kind o A ‘figurative’ mark on IP Australia is a mark with a

figure/device in it (it may or may not also include words)


• Figures also includes words and phrases that are not in the Roman Alphabet

o The Chinese transliteration for BEN FU (Penfolds) is a figurative mark

• It may not be registrable if it lacks distinctiveness through being so common that another trader would innocently want to use it to describe their own goods/services

Composite Marks

• Any combination of words and aesthetic or stylistic elements • Registration protects the words, only in that look/style • Provides less protection than a word mark, but is easier to

register because it is inherently more distinctive

Signatures

• Become an issue when they are either: o So illegible that they are basically a device o So legible that they are basically a description in words

• Remember that is the appearance of the word (not the word itself) that is trademarked

o Otherwise anyone with that name would be liable

Invented/Foreign Words or Phrases

• Just because a word is invented does not mean it will be registrable


o Rohoe was deemed too descriptive of a rotary hoe for example

• The question is simply whether it deprives a member of the community of the right to use the existing vocabulary as he or she might be expected to want to do in relation to the same goods or services

o Eastman Photographic Materials Co v Comptroller-General of Patents, Designs and Trade-marks (1898)

• What is relevant is the meaning conveyed by a word to those who will be concerned with the relevant goods

o So, for foreign words, the direct translation of the word is only relevant – not critical

• As of September 2018, IP Australia now record marks with special characters (ñino/Björn/etc)

Shapes

• The shape must be: o Original o Striking to the eye o Unique to the goods

• The unusual aspect of the shape must be ornamental, not functional

o Shapes with significant functional purposes are difficult to register

o The toblerone triangle is merely decorative - not functional - so it can be trademarked

• Other traders must not have any reasonable basis for a desire to use the shape

Kenman Kandy Australia Pty Ltd v Register of Trade Marks [2002]


• The shape of a 6-legged bug could be trademarked because it was inherently adapted from a normal looking bug

o This particular shape was suggestive of being an insect, but didn’t look like any particular type of bug

o It was more like an alien Novelty Shapes

• If a shape is one which other traders would normally expect to be freely available and which, for the sake of fair competition, they should be at liberty to use, the shape will not be registered

• Belgian chocolates began producing sea-horse-shaped chocolates and wanted to trade mark it

o They were unable to do so because it was a ‘novelty shape’ and should be free for use on the market

o If the sea-horse had other distinvctive features (like a hat or something) it may have been registrable

Colours

• A specific shade of colour or combination thereof can be registered

o However significant evidence of use is required, especially for common or indistinct colour patterns

• Requirements: o The public has come to identify that colour as synonymous

with the brand (‘secondary meaning’ o The colour/pattern alone is capable of distinguishing the

good/service o The colour is the trademark – not part of the goods or

packaging • If the colour performs a function, such as indicating quality or

flavour, it is likely to be denied o Black would be denied for soft-drink bottes, because it

functions to keep out light and retain flavour • Trade mark protection only relates to a specific shade of the

colour and the specific class of goods/services o Eg: you can’t register green for turf

Cadbury Case


• Cadbury owns a registered trade mark over Pantone 2685C o It can only prevent competitors from using that exact

shade in relation to the packaging of chocolate products o It won its case in the HCA against Darrell Lea

§ However it lost the same case in the UK High Court against Nestlé

Frucor Beverages Ltd v The Coca Cola Company (2018)

• Coca Cola successfully opposed V’s registration on 2 grounds: o V attached swatch 7727C to its application instead of the

intended 376C o The intended trade mark was not capable of distinguishing

V from other energy drinks § Although the colour was substantial, the V logo on

the packaging functioned as the trade mark, not the colour

§ V uses different colours for different varieties of the drink

§ Other drinks use green descriptively Sounds

• Can be trademarked • Examples:

o The ‘ping’ in the McCain ads o The Happy Little Vegemites Theme o The Intel Sound

Scents

• The scent of Eucalyptus was registered as a trade mark in Australia for golf trees

Hashtags

• The # will only form part of the trade mark when the hashtag itself has been used so much that consumers recognise it as a brand identifier

• Usually, only the text after the # is trade mark material o Often a hashtag will be desired by all competitors in a

market (#nicekicks for example)

IP Supernotes – Trade Marks Movements

• Examples: o The Toyota Jump o The Microsoft animated sequence

• Require a video of the movement to be submitted as part of the application

Certification Marks: Part 16 (ss 168-183)

• Indications that a person certifies the goods as being of a particular quality, accuracy, origin, material, standard etc

o And thus distinguishable from other goods of the same type

• The certification may be based on quality, geography (a ‘geographical indication’) or both

• The registration is similar to that of a normal trade mark o But the mark’s set of rules must also be submitted o These rules are considered by the ACCC

• Australian examples: o Heart Foundation tick (quality) o Scotch Whisky (GI)

§ The SWA is rapidly seeking certification in other countries too, most recently in South Africa

o The Australian Made logo (GI) • Other examples:

o Recycling logo? o [find more]


Geographical Indicators

• A type of certification trade mark and registered under the same system

• Australia – EU free trade agreement o The EU has published a list of GIs it wishes to protect

under the proposed agreement, which include: o BEAUFORT (cheese, France) o CAMEMBERT DE NORMANDIE (cheese, France) o COMTE (cheese, France) o ROQUEFORT (cheese, France) o COGNAC (spirit, France) o EAU-DE-VIE DE COGNAC (spirit, France) o MÜNCHENER BIER (beer, Germany) o Greek transliteration of ELIA KALAMATAS (olive, Greece) o Greek transliteration of KALAMATA (olive oil, Greece) o OUZO (spirit, Greece, Cyprus) o Greek transliteration of FETA (cheese, Greece)

§ Currently in the EU, only cheese made in Greece using a mix of sheep and goat milk can call itself Feta cheese

o GORGONZOLA (cheese, Italy) o GRAPPA (spirit, Italy) o PROSECCO (wine, Italy) o GOUDA HOLLAND (cheese, The Netherlands) o SCOTCH BEEF (meat, UK) o SCOTCH WHISKY (spirit, UK) o IRISH WHISKEY (spirit, Ireland) o POLISH VODKA (spirit, Poland)


• Geographical indications for wine can also be registered through the Wine Australia Act 2013 (Cth)

Collective Trade Marks: Part 15 (ss 161-167)

• Possible under part 15 of the Trade Marks Act 1995 • Used by members of an association to distinguish the goods from

those of non-members o Eg: The CA trade mark which only chartered accountants

may use • Distinguishes goods as that belonging to an association, rather

than distinguishing the quality or origin of goods o Natural persons cannot register collective trade marks (I

think?)

Defensive Trade Marks: Part 17 (ss 184-189)

• Intended to provide partial protection for famous marks, allowing them to be registered for goods and services in which they are not actually used

• Eg: Nike registers the swoosh as a defensive trade mark on candles, even though they have no intention to sell candles

o The swoosh is so popular that if another company used it on a candle, consumers would mistakenly believe the candle is associated with the Nike brand

• There is no obligation for the owner to ever use a defensive trade mark

o Non-use cannot kill a defensive trade mark Series Trade Marks

• Have different fees imposed • Requirements:

o The marks must closely resemble each other


o The marks can only differ by: § Statements/representations as to the goods/services § Statements/representations as to the number, price,

quality or names of places ú Upper and lower case versions of the mark are

not a valid series § The colour of any part of the mark

• For example, a series might cover the same mark on clothing, footwear and headgear

• Concepts: s 17 Provided in the Course of Trade

• Trade includes more than just the actual sale and purchase of marked goods

• Use of a mark in an ad counts as ‘in the course of trade’ o Even if the goods are yet to come onto the market

• Use of the mark on goods that are still under consideration for the market is NOT deemed to be in the course of trade

Kind of Goods

• The goods or services that the mark has been used on have to be ‘similar’ to the kinds for which the registration was made

o They have to be the ‘same kind’ § In re Hick’s Trade Mark (1987)

o This indicates that there must be great similarity between them

§ For example, handbags and backpacks are not considered to be of the same kind

‘Use’: s 7

• In relation to goods (7(4)): o Use of the trade mark upon, or in physical or other

relation to, goods (including 2nd hand goods) • In relation to services (7(5)):

o Use of the trade mark in physical or other relation to the services

IP Supernotes – Trade Marks What Constitutes Use Aston v Harlee Manufacturing Co (1960)

• FACTS: The trade mark in question had been used in the US but not yet in Australia

o The plaintiff complained that this should not prevent him from denying use of the mark in Australia

• ISSUE: Could someone in Australia become the owner of the same trade mark?

• HELD: The mark could be used by the defendant o So far as Australia is concerned, he was the author of the

mark o Harlee was yet to use the mark in Australia

• RULE: Where there has been no use in Australia, an applicant for an identical trade mark is entitled to be regarded as the author of the mark

o It is not good enough that the plaintiff merely thought of the mark first, there must be use

o If intention of the original owner is high enough that they actually begin an application for registration (before the new applicant starts it) they can show use

Moorgate Tobacco Co Ltd v Phillip Morris Ltd (No 2) (1984)

• FACTS: P claimed that they had ownership of the trade mark and had used it to the sufficient extent

o Therefore the application from D would be void • ISSUE: What is the standard for sufficient use in Australia? • HELD: There was no local use of the mark in Australia at all, only

preliminary discussions about whether it would be used o This was not deemed to be enough o The mark was attached to advertising material that had

been delivered to Australia, but this material had not yet been used to advertise the product

• RULE: The mark must be attached to goods or services that were at least offered for sale in Australia

o Or the mark must be used in advertisement of those goods/services

o It is irrelevant whether the goods have actually been imported to Australia yet

IP Supernotes – Trade Marks Ward Group Pty Ltd v Brodie & Stone Pls [2005]

• ISSUE: What is the status of a trade mark that has been used on the internet?

• HELD: • RULE: The use of a trade mark on the Internet, uploaded on a

foreign website, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded

o If the use was specifically intended to be directed at a particular jurisdiction then there may be a use in that jurisdiction when the mark is downloaded

Used or Intended to be Used:

• The sign must be used or intended to be used o The mark can be registered before it is used as long as

there is a real and present intention to use it Duckers Trade Mark (1928)

• The intention must be to definitely use the mark or a resolve to use it in the immediate future upon goods

o For the purpose of indicating the goods are those of the owner

Honest, Concurrent and Continuous Use

• If there has been honest concurrent use of an otherwise illegal trade mark (or if it is just proper to do so), the registrar may accept the application of the mark

o Subject to any conditions the registrar wants to impose • The registrar cannot reject the application if the applicant has

used the trade mark beginning before the priority date? Pirie & Sons Application (1933)

• The court held that the mark Abermill was able to be registered for writing paper, despite the existence of the mark Hammermill on another product of writing paper

• Factors: o The possibility of confusion was minimal


o 5 years of honest concurrent use of Abermill was proved § In that 5 years, no evidence of confusion could be

produced o Abermills business had increased substantially in the past 5

years whereas Hammermills had not Part V of the Act becomes relevant after the registrar has accepted an application but before the application has gone through

• It is still possible for third parties to oppose registration here Conscious or Unconscious Use

• A trade mark may have been used even when the owner in this country does not know about the use

o As long as the owner was originally the person who authorised the use of the trade mark as a trade mark on the goods

o E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] Authorised Use: s 8

• A person is an authorised user if they use the mark in relation to goods/services ‘under the control’ of the owner

• Authorised users are usually licensees of the registered owner for the purpose of using the mark in Australia

o But a person is not an authorised user merely because they have a licence agreement in place: Lodestar

• There must be actual control from the owner, which can be exercised through:

o The licence agreement (if the terms are onerous enough as to the quality control/use of the mark)

o Regular oversight from the owner o The nature of the relationship between the owner and user

Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557

• F: Campari granted Wild Geese Wines an exclusive licence to use the marks in Australia

o the licence agreement contained specific requirements relating to quality control and a requirement that Wild Geese provide samples to Campari when requested


§ Campari never exercised this control • H: Wild Geese was not an authorised user of the marks

o Campari was required to exercise actual control over the marks, not just possess a theoretical possibility of contractual control

• R: Control in s 8 means actual control in relation to the use of the mark from time to time

o There mere grant of a licence is not enough o Oversight is not required where obedience to the TM owner

is so instinctive and complete that instruction is not necessary

Hells Angels Motorcycle Corporation (Australia) Pty Limited v Redbubble Limited [2019] FCA 355.

• F: An image of HA's logo was uploaded to Redbubble by an independent artist

o The U.S. branch of the group owned the mark and exclusively licensed the Aus branch to use it in Australia

o The licence agreement was relatively silent on guidelines for use and there was little to no ongoing oversight from the U.S. branch

• I: Was the Aus branch of the group an authorised user of the mark?

• H: The relationship between the two branches implied authorised use

o Both branches were of a clear understanding that Aus would behave (including in relation to the mark) in the way required by the U.S. branch

o This meant that any explicit licence terms or ongoing conduct was unnecessary (distinguishing Lodestar)

o RB was infringing by facilitating sales of products bearing the mark, but only nominal damages awarded as not many sales were made

It has since been held that actual control is not evidenced only by notices of ownership of the mark: Trident Seafoods Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100


• F: Trident was acquired by Manassen, who undertook use of the trade marks (but Trident remained the registered owner). The products were mostly Asian flavoured foods but not fish.

o Trident Seafoods, a US company, moved to sell fish products in Australia. Shortly after, Trident Foods applied to use the Trident mark in relation to fish products.

o The two companies had common directors, common place of business and a common ultimate holding company

o Trident argued that there was an unwritten licence agreement that Manassen was an authorised user of the marks and used them under the control or supervision of Trident (using Lodestar as authority)

§ All products sold by Manassen bore a notice that the trade marks were owned by Trident

• I: Was 'authorised use' exercised by Manassen? • H: Manssen was an authorised user

o It was expected that there wouldn't be any instances of actual control, due to:

§ The two companies having the same directors § The companies having the same purpose, being to

sell the trident products § Both companies wanting to ensure maintenance of

the value of the brand o It was a relationship of inherent control, despite the

direction of the relationship § This was not like Lodestar where there was no

relationship between the companies other than a licensing relationship

• R: "The issue is not whether one company controlled the other but rather whether [the owner] … had control over [the using company's] use of the trade marks"

o Even where the owner is a subsidiary of the user o Unity of purpose between the companies is also indicative

of actual control

• Criticism: if two companies in the same family wish to enjoy the benefit of the corporate veil, it is not fair to suddenly claim that


they are one in the same company when it comes to authorised use of trade marks

o Because Trident didn't show that it did anything [in terms of authorising use and controlling] that a company with common directors wouldn't do anyway. It seemed to argue that the mere fact that it had common directors, and acted as companies with common directors normally do, was enough to establish control

Showing Evidence of Use

• You should be gathering evidence from the beginning of the brand promotion

• Helpful items of evidence: o Brochures/pamphlets o Photographs of the mark applied to goods o Labels/packaging/tags (together with dated design

drawings) o Independent press publications o Invoices o Website extracts

• Always better if the evidence of is dated and geo-stamped • You want to show the goods/services that the mark is being used

in relation to Registration of a Trade Mark Role of Registered Trade Marks

• Registration gives statutory protection for the owner of the mark o It is not compulsory to register a trade mark

Registered and Unregistered Marks

• Registered trade marks allow the owner to (s 20): o Use the mark o Allow others to use it for a fee o To obtain relief if the mark is infringed

• Unregistered trade marks are still protected under the common law action of passing off

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Trade Marks Law - StudentVIP