Differences

This shows you the differences between two versions of the page.

Link to this comparison view

Both sides previous revision Previous revision
Next revision
Previous revision
ausip:trade-mark-overview [2018/11/01 13:08]
jessiej_87 Edit and additional content
ausip:trade-mark-overview [2019/03/10 13:09] (current)
jessiej_87
Line 1: Line 1:
 # Trade Mark Overview # Trade Mark Overview
  
-This chapter explores trade mark law including the origins of trade marks, law in Australia and international trade mark law.+This chapter explores trade mark law including the origins of trade marks, ​the law in Australia and international trade mark law.
  
 ## History and Source of Trade Mark Law ## History and Source of Trade Mark Law
  
-The origins of trade mark law can be traced back to medieval times when trader ​often used signs and symbols to direct customers to their goods within a market place. Some historians believe that the use of marks in trade can be traced back even further to ancient civilisations where these marks were used to identify the origins of goods and indicate attributes such as quality and ownership. ​+The origins of trade mark law can be traced back to medieval times when traders ​often used signs and symbols to direct customers to their goods within a market place. Some historians believe that the use of marks in trade can be traced back even further to ancient civilisations where these marks were used to identify the origins of goods and indicate attributes such as quality and ownership. ​
  
 In Australia, there are a number sources of trade mark law including: In Australia, there are a number sources of trade mark law including:
  
-1. Trade Mark Act 1995 (Cth); +1. [Trade Mark Act 1995 (Cth)](https://​www.legislation.gov.au/​Details/​C2019C00085); 
-2. Trade Mark Regulations 1995 (Cth);+2. [Trade Mark Regulations 1995 (Cth)](https://​www.legislation.gov.au/​Details/​F2018C00773);
 3. International law and treaties; and 3. International law and treaties; and
-4. The commons ​law tort of passing off. +4. The common ​law tort of passing off. 
  
 ## Introduction to Trade Marks ## Introduction to Trade Marks
  
-As noted above, 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. ((//TMA// s 20)) Trade mark law overcomes some of the limitations of passing off. +As noted above, 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. ((//TMA// s 20)) Trade mark law overcomes some of the limitations of passing off. 
  
  
-**Video overview by Dan Hunter on [The Need for the Trademark ​Law System](https://​youtu.be/​G073FK1BzAU?​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty).** ​+**Video overview by Dan Hunter on [The Need for the Trade Mark Law System](https://​youtu.be/​G073FK1BzAU?​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty).** ​
  
 ## Rationale for Protection ## Rationale for Protection
Line 25: Line 25:
 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. 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](youtube>_AnH_0APBVo)**+**Video over by Brian Hensel on [The Rationale for Trade Marks](https://​www.youtube.com/​watch?​v=_AnH_0APBVo)**
  
 ## International Law and Trade Marks ## International Law and Trade Marks
  
-The trade marks legislation was amended in 1995 to align with Australia'​s obligations under the //Agreement of Trade-Related Aspects of Intellectual Property Rights// (//​TRIPS//​). As Australia is a //WTO// country, there are a number of minimum standards relating to trade marks that each WTO country must meet. This includes having a trade mark registration system. Whilst trade marks do not have to be registered, there are a number of benefits of using the trade mark system as opposed to relying on the common law to recognise ownership of trade marks through reputation. These benefits include 'prima facie proof of ownership'​. ​+The trade marks legislation was amended in 1995 to align with Australia'​s obligations under the //[Agreement of Trade-Related Aspects of Intellectual Property Rights](https://​www.wto.org/​english/​docs_e/​legal_e/​27-trips_01_e.htm)// (//​TRIPS//​). As Australia is a //WTO// country, there are a number of minimum standards relating to trade marks that each //WTO// country must meet. This includes having a trade mark registration system. Whilst trade marks do not have to be registered, there are a number of benefits of using the trade mark system as opposed to relying on the common law to recognise ownership of trade marks through reputation. These benefits include 'prima facie proof of ownership'​. ​
  
 ## The Registration Process ​ ## The Registration Process ​
Line 36: Line 36:
  
 1. Application:​ An application is made under s 27 //TMA//; 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;+2. Examination:​ The Trade Mark Office examines the trade mark, and an amendment ​is made if necessary;
 3. Acceptance/​Rejection:​ The Trade Mark Office either accepts or rejects the trade mark; 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; 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;
Line 43: Line 43:
 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. 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 process of registering domestic and international applications for trade marks will be discussed in the following chapter. ​  +The process of registering domestic and international applications for trade marks will be discussed in the following chapter.
-##Trade Marks Act 1995 (Cth) +
  
-The 1995 Act made significant changes to the law relating to trade marks and, as noted earlier, this was in part a response to Australia’s new obligations under the //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.+## Trade Marks Act 1995 (Cth) 
  
-The 1995 Act further permits ​the registration of trade marks that are not inherently distinctive but become distinctive through use((//​TMA// ​s 41))+The //TMA// made significant changes to the law relating to trade marks and, as noted earlier, this was in part a response to Australia’s new obligations under the //TRIPS//As a result of the changes, the //​TMA// ​was broadened to offer protection where a trade mark is used in relation to goods of the same description or in relation to closely related service.
  
-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// also offers extended protection to well-known marks, by granting protection where the trade mark is used on unrelated goods or services. 
 + 
 +The //TMA// 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 //TMA//, many existing concepts were left in place in the current //Act//, and so cases decided under the 1955 Act are still relevant.
  
 ## Why Have a Registered Trade Mark System? ## 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// 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.+The //​TMA// ​provides ​certainty, by clearly defining the boundaries of a trade mark. It also gives property rights in the trade mark itself, rather than in the goodwill attached to the mark.
  
 ## What Does Trade Mark Registration Give You? ## What Does Trade Mark Registration Give You?
Line 66: Line 68:
 ## Definition of a Trade Mark ## Definition of a Trade Mark
  
-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:+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); 1. Be a sign (or a symbol);
  
-2. Used or Intended ​to be Used to Distinguish Used; and +2. Used or intended ​to be used; and 
  
-3. Distinguishing ​Goods or Services ​in the Course ​of Trade.+3. Distinguishing ​goods or services ​in the course ​of trade.
  
 These elements will be outlined in more detail below. ​ These elements will be outlined in more detail below. ​
  
-**Video overview by Dan Hunter on [the definition ​of a trademark](https://​www.youtube.com/​watch?​v=LjKF7UrbCDI&​index=2&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty).**+**Video overview by Dan Hunter on [The Definition ​of a Trade Mark](https://​www.youtube.com/​watch?​v=LjKF7UrbCDI&​index=2&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty).**
  
-### Types of Trade Marks 
  
-There are four types of trade marks which can be registered:+### A Sign
  
 +A sign includes the following or any combination of the following, namely: letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. ((//TMA// s 6))
  
-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.  **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* ​+### Used or Intended to be Used to Distinguish
  
-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*+Use ‘as a trade mark’ is use of the mark as a *badge of originwhether the trade mark would have been understood by consumers as being used to *indicate a connectionin 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) ))
  
-**Video overview by Ethan McCann on [Certification Marks](youtube>​XhrvRSXeq2U?​small)** 
  
 +### 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 IP Australia, Trade Marks Classification Search, [Classes of Goods](http://​xeno.ipaustralia.gov.au/​tmgns/​facelets/​tmgoods.xhtml)
  
-**Video overview by Luke Chandler on [Defensive Trade Marks](youtube>​xfb8qqBdzp0?​small)** 
  
 +**Video overview by Morgan Beames on [The Classification System for Trade Marks](https://​www.youtube.com/​watch?​v=OQKNDMjn89M)**
  
-### 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))+**Video overview by Maddy Ryan on [The Classification System for Trade Marks](https://www.youtube.com/watch?​v=VUJxVWAMvIo)**
  
 +## Types of Trade Marks
  
-### Used or Intended to be Used to Distinguish+There are four types of trade marks which can be registered:
  
  
-Use ‘as a trade mark’ is use of the mark as a *badge of originwhether 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.+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, from goods or services ​dealt with or provided by any other person. ​((//TMA// s 17)) 
  
-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 ​goodsor services. ((//TMA// s 7(4) and (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 associationFor example, *Industry Super Funds
- +
- +
-### 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 hireHowevera 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)) +
- +
- +
-**Video overview by Morgan Beames on [The Classification System for Trade Marks](youtube>​OQKNDMjn89M)**+
  
 +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 Maddy Ryan on [The Classification System for Trade Marks](youtube>​VUJxVWAMvIo)**+**Video overview by Luke Chandler ​on [Defensive ​Trade Marks](https://​www.youtube.com/​watch?​v=xfb8qqBdzp0)**
  
 +**Video overview by Ethan McCann on [Certification Marks](https://​www.youtube.com/​watch?​v=XhrvRSXeq2U)**
  
  
 ## Non-Traditional Trade Marks ## Non-Traditional Trade Marks
  
-###Aspect of Packaging, Shape+### 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. 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.
Line 135: Line 134:
 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. 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.+However, in *[Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1999/​816.html)*, (([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 ### 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)) +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. ((//TMA// s 6)) 
  
 The legal requirements for colours to be trade marks are The legal requirements for colours to be trade marks are
Line 156: Line 155:
  
  
-Colour can be registered as  a trade mark if the colour is distinct and has no functional purpose.+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.+In *[Philmac Pty Limited v The Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2002/​1551.html)*, (([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](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1967/​42.html)*,(([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.
  
  
Line 170: Line 169:
 ### Sound ### Sound
  
-Sound trade marks are considered ​non-traditional trade mark and requires ​more  detailed information ​on order to be registered. This includes sheet music to represent the sound and an audio copy of the sound. ​+Sound trade marks are considered non-traditional trade marks and require ​more detailed information ​in order to be registered. This includes sheet music to represent the sound and an audio copy of the sound. ​
  
 Much like other types of trade marks, in order to register the sound mark the sound must be distinctive and needs to be used as a trade mark.  Much like other types of trade marks, in order to register the sound mark the sound must be distinctive and needs to be used as a trade mark. 
Line 179: Line 178:
    
  
-### Registering ​scents+### Registering ​Scents
  
-According to s 6 of the //TMA// a scent is capable of being trade marked. In order to be considered a trade mark, the scent must be distinctive enough to distinguish the product from other products and services. ​+According to s 6 of the //TMA// a scent is capable of being trade mark. In order to be considered a trade mark, the scent must be distinctive enough to distinguish the product from other products and services. ​
  
-Scents alone can’t be registered as a trade mark, they must form only part of other trade mark application. ​+Scents alone can’t be registered as a trade mark, they must form only part of the trade mark application. ​
  
-The trade mark legislation was amended in 1995 to include scents, and to date there has been no cases heard within Australia regarding scents and trade mark law.  ​+The trade mark legislation was amended in 1995 to include scents, and to datethere has been no cases heard within Australia regarding scents and trade mark law.  ​
  
-As with all other types of trade marks, scents only registrable if it they distinguish and so long as the scent does not form part of the product. For example, a coffee shop could not trade mark the scent of coffee as the scent forms part of the product.+As with all other types of trade marks, scents ​are only registrable if they distinguish and so long as the scent does not form part of the product. For example, a coffee shop could not trade mark the scent of coffee as the scent forms part of the product.
    
-Scents also must be adequately described in writing ​of graphically represented in the trade mark application and the applicant needs to be able to outline how the scent will be applied in the trade mark. +Scents also must be adequately described in writing ​or graphically represented in the trade mark application and the applicant needs to be able to outline how the scent will be applied in the trade mark. 
  
 There is no requirement to provide a sample of the scent when applying for trade mark registration,​ however it can be requested at the point the registration application is reviewed. ​ There is no requirement to provide a sample of the scent when applying for trade mark registration,​ however it can be requested at the point the registration application is reviewed. ​
  • ausip/trade-mark-overview.1541038080.txt.gz
  • Last modified: 10 months ago
  • (external edit)