Trade Mark Overview

Video overview by Dan Hunter on the need for the Trademark Law system.

Introduction to Trade Marks

Governed by the Trade Marks Act 1995 (Cth) ('TMA'). Gives the registered owner the exclusive right to use the trade mark or authorise another person to use the trade mark in relation to the goods or services in which it is registered and the right to obtain relief if the trade mark has been infringed (TMA s 20). Overcomes some of the limitations of passing off.

Rationale for Protection

Trade marks serve the economic function of reducing consumer search costs – helping consumers to find products they know and like. At the same time, trade marks give producers incentives to maintain quality standards and promotes investment.

Robert Hensel on the rationale for trade marks

The Registration Process

  1. Application made under TMA s 27
  2. Examination of the trade mark by the Trade Mark Office and Amendment (if necessary)
  3. Acceptance/Rejection - the trade mark office either accepts the trade mark or rejects it
  4. Opposition - the Trade Mark Office advertises the trade mark for two months, in which time any third party can object to the trade mark
  5. Registration - following the end of the opposition period if no oppositions are lodged, or after oppositions are successfully overcome, the trade mark is registered
  6. Renewal - a trade mark is valid for 10 years, and must be renewed every 10 years to remain on foot (TMA s 75)
  7. Amendment/Cancellation - once registered, a trade mark can be amended or cancelled on application of interested third parties or the registrar. The onus is on the party seeking the amendment or cancellation

Trade Marks Act 1995 (Cth)

The 1995 Act made significant changes to the law relating to trade marks and was in part a response to Australia’s new obligation under TRIPS. The Act broadened this by offering protection where a trade mark is used in relation to goods of the same description or in relation to closely related service.

The 1995 Act also offered extended protection to well-known marks, by granting protection where the trade mark is used on unrelated goods or services.

The 1995 Act further permits the registration of trade marks that are not inherently distinctive but become distinctive through use (TMA s 41).

While there are significant differences between the 1955 Act and the 1995 Act, many existing concepts were left in place in the 1995 Act, and so cases decided under the 1955 Act are still relevant.

Why Have a Registered Trade Mark System?

The TMA was introduced to help overcome some of the limitations of passing-off law. In particular, the legislative regime for registration sought to overcome the difficulty of having to prove reputation before an action could be brought against the misappropriation of a trade mark. It also provided a system of property rights in the mark itself, the appropriation of which was not dependent on their being a misrepresentation.

The TMA also provided certainty, by clearly defining the boundaries of a trade mark. It also gave property rights in the trade mark itself, rather than in the goodwill attached to the mark.

What Does Trade Mark Registration Give You?

Registration gives the registered owner the exclusive right to use the trade mark or authorise another person to use the trade mark in relation to the goods and services in which it is registered (TMA s 20(1)). The trade mark owner also has the right to obtain relief if the trade mark is infringed (TMA s 20(2)). A trade mark is infringed if it is used in a manner specified in TMA s 120.

Definition of a Trade Mark

Video overview by Dan Hunter on the definition of a trademark.

Types of Trade Marks

There are four types of trade marks which can be registered:

  1. Standard trade mark: A sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person (TMA s 17)
  2. Colllective trade mark: A sign used by members of an association to distinguish goods or services provided by persons who are not members of that association. For example, Industry Super Funds
  3. Defensive trade mark: Protects well-known marks where a trade mark has been used to such an extent for goods or services that its use on other goods or services is likely to mislead the public. A defensive trade mark is not subject to use requirements. For example Holden, Coke, Levi's.
  4. Certification trade mark: A sign distinguishing goods or services in respect of origin, material, mode of manufacture, accuracy or some other characteristics. For example Woolmark, Heart Foundation Tick, Fresh Care.

Ethan McCann on Certification Marks

Luke Chandler on Defensive Trade Marks

A Sign

A sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent (TMA s 6).

Chloe Bartzis on shape marks

Used or Intended to be Used to Distinguish

Use ‘as a trade mark’ is use of the mark as a badge of origin whether the trade mark would have been understood by consumers as being used so as to indicate a connection in the course of trade between the goods or services and the person using it.

Use of a trade mark in relation to goods/services also means use of the trade mark upon, or in physical or other relation to, the goods (including secondhand goods) or services (TMA s 7(4) and (5)).

Distinguishing Goods or Services in the Course of Trade

There is no requirement that trade result in actual sales or dealing in the goods – it is enough if the goods or services have been offered or advertised for sale or hire. However, a trade mark must be registered with respect to one or more classes of goods and/or services (TMA s 19). There are 34 classes of goods and 11 classes of services. See http://xeno.ipaustralia.gov.au/tmgoods.htm

Morgan Beames on the classification system for trade marks.

Non-Traditional Trade Marks

Aspect of Packaging, Shape

An aspect of packaging or part of a product may constitute a trade mark. For example, in Re Application by Hamish Robertson (1998) 13 IPR 69, the crest on the neck of a bottle of alcohol was capable of being registered as a trade mark, as it was very unusual and quite distinctive.

A shape may include the entirety of the goods. If the shape of the goods is not essential and is separate from the function of the goods, the shape can be registered as a trade mark. However, a shape cannot be registered if it is entirely functional (Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816.

In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, the 3D shape of an imaginary six-legged spider-like creature (the millennium bug), was capable of registration as a trade mark as it had no functional significance, was distinctive of the applicant's product and was not based on an actual bug that existed in nature.

However Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816, the design of a triple-headed rotary shaver could not be registered as a trade mark since the configuration of the three heads was the best design and did not add anything extra to distinguish the product.

Colour

Emily Rees on colour marks

Kate Clinton on colour marks

Colour can be registered as a trade mark if the colour is distinct and has no functional purpose.

In Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551, a terracotta shade on plastic pipes and pipe fittings could be registered as a trade mark as the colour had no functional purpose. In contrast, in Smith Kline and French Laboratories (Australia) Ltd v Registrar of Trade Marks [ 1967] HCA 42, the colour scheme of a pharmaceutical capsule which was half transparent and revealed multi-coloured pellets of medicine was refused registration as the trade mark could not be described apart from the capsule.

Paula Harrison on colours

Sound

Darren Brown on registering sounds

Registering scents

Luana Maeyke on Scent marks

Rica Ehlers on scent marks