Trade Mark Overview

This chapter explores trade mark law in Australia.

Trade mark law is governed by the Trade Marks Act 1995 (Cth) ('TMA'). Trade mark protect 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. These exclusive rights include the right to obtain relief if the trade mark has been infringed. 1) Trade mark law overcomes some of the limitations of passing off.

Video overview by Dan Hunter on The Need for the Trademark Law System.

Trade marks serve the economic function of reducing consumer search costs by 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.

Video over by Brian Hensel on The Rationale for Trade Marks

The process of registering trade marks involves seven steps.

  1. Application: An application is made under s 27 TMA;
  2. Examination: The Trade Mark Office examines the trade mark, and Amendment is made if necessary;
  3. Acceptance/Rejection: The Trade Mark Office either accepts or rejects the trade mark;
  4. Opposition: The Trade Mark Office advertises the trade mark for two months, during which time any third party can object to the trade mark;
  5. Registration: 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 under s 75 TMA;
  7. Amendment/Cancellation: Once a trade mark is registered, it 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.

The 1995 Act made significant changes to the law relating to trade marks and was in part a response to Australia’s new obligations under the Agreement of Trade-Related Aspects of Intellectual Property Rights (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. 2)

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.

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.

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. 3) The trade mark owner also has the right to obtain relief if the trade mark is infringed. 4) A trade mark is infringed if it is used in a manner specified in TMA s 120.

A trade mark is defined as a sign which is used in trade or commence to distinguish a product from another. There are three elements which make up a trade mark. A trade mark must:

  1. Be a sign (or a symbol);
  2. Used or Intended to be Used to Distinguish Used; and
  3. Distinguishing Goods or Services in the Course of Trade.

These elements will be outlined in more detail below.

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. 5)
  2. Collective 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.

Video overview by Ethan McCann on Certification Marks

Video overview by 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. 6)

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. 7)

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. 8) There are 34 classes of goods and 11 classes of services. 9)

Video overview by Morgan Beames on The Classification System for Trade Marks

Video overview by Maddy Ryan on The Classification System for 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, 10) 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. 11)

In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks, 12) 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, 13) 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

Colour is an important element to brands. The colour often acts as a visual symbol provoking memories and attachment. Colour is expressly listed as able to constitute a sign (s6).

The legal requirements for colours to be trade marks are

  1. needs to be distinctive; and
  2. needs to be used as a trade mark.

In order for a colour to be distinctive it needs to be capable to distinguish goods and services from other products and services and can't be the submissive element of the trade mark.

In order for a colour to be distinctive it needs to be capable to distinguish goods and services from other products and services. To determine whether a colour is being used as a trade mark an objective analysis of the purpose and nature of the use of the colour must be undertaken. The colour must be used as a ‘ badge of honour’ to distinguish the product form those of other competitors.

Video overview by Emily Rees on Colour Marks

Video overview by 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, 14) 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,15) 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.

Video overview by Paula Harrison on Colours

Sound

Darren Brown on registering sounds

Registering scents

Luana Maeyke on Scent marks

Rica Ehlers on scent marks


1)
TMA s 20
2)
TMA s 41
3)
TMA s 20(1)
4)
TMA s 20(2)
5)
TMA s 17
6)
TMA s 6
7)
TMA s 7(4) and (5)
8)
TMA s 19
10)
(1998) 13 IPR 69
11)
Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816
12)
[2002] FCAFC 273
13)
[1999] FCA 816
14)
[2002] FCA 1551
15)
[ 1967] HCA 42
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