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Trade Mark Overview

  1. History and Source of Trade Mark Law
  2. Introduction to Trade Marks
  3. Rationale for Protection
  4. International Law and Trade Marks
  5. The Registration Process
  6. Trade Marks Act 1995 (Cth)
  7. Why Have a Registered Trade Mark System?
  8. What Does Trade Mark Registration Give You?
  9. Definition of a Trade Mark
    1. A Sign
    2. Used or Intended to be Used to Distinguish
    3. Distinguishing Goods or Services in the Course of Trade
  10. Types of Trade Marks
  11. Non-Traditional Trade Marks
    1. Aspect of Packaging, Shape
    2. Colour
    3. Sound
    4. Registering Scents

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

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:

  1. Trade Mark Act 1995 (Cth);
  2. Trade Mark Regulations 1995 (Cth);
  3. International law and treaties; and
  4. The common law tort of passing off.

Introduction to Trade Marks

As noted above, trade mark law is governed by the Trade Marks Act 1995 (Cth) (TMA). Trade mark protection 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 relation to 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 Trade Mark Law System.

Rationale for Protection

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

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 registered 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 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 an 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 process of registering domestic and international applications for trade marks will be discussed in the following chapter.

Trade Marks Act 1995 (Cth)

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.

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.2

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?

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 there being a misrepresentation.

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?

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 for 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.

Definition of a Trade Mark

A trade mark is defined in section 17 as a sign which is used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from the goods or services of 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; 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 Trade Mark.

A Sign

A sign includes the following or any combination of the following: a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.5

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 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.6

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.7 There are 34 classes of goods and 11 classes of services. See IP Australia, Trade Marks Classification Search, Classes of Goods

Video overview by Maddy Ryan on The Classification System for Trade Marks

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, from goods or services dealt with or provided by any other person.8

  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. See video by Luke Chandler on Defensive Trade Marks

  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. See video by Ethan McCann on Certification Marks

Non-Traditional Trade Marks

Trade marks come in many different forms. Section 7 of the TMA defines “sign” to include any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or any combination of those.

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,9 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.10

In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks,11 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, in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd,12 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.5

The legal requirements for colours to be trade marks are that it:

  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. 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 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,13 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,14 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.

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.

To be distinct it must provide an audible identifier that sets the product out as being unique (as opposed to common functional sound).

Video overview by Darren Brown on Registering Sounds

Registering Scents

According to s 6 of the TMA a scent is capable of being a 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.

As with all other types of trade marks, scents are only registrable if they are capable of distinguishing the product. The natural scent of the product or a scent used to mask unpleasant natural scents of the product has a functional purpose and will not be capable of distinguishing 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 graphically represented in the trade mark application (this can be by way of a written description) and the applicant needs to be able to outline how the scent will be applied in the trade mark. Meeting the requirement for graphical representation is particularly challenging for scent marks.

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.

Video overview by Luana Maeyke on Scent Marks

Video overview by 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 6 ↩ ↩2

  6. TMA s 7(4) and (5) ↩

  7. TMA s 19 ↩

  8. TMA s 17 ↩

  9. (1998) 13 IPR 69 ↩

  10. Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816 ↩

  11. [2002] FCAFC 273 ↩

  12. [1999] FCA 816 ↩

  13. [2002] FCA 1551 ↩

  14. [1967] HCA 42 ↩