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Trade Mark Registration

  1. Registration Process
  2. Benefits of Registration
  3. Entitlement to Apply for Registration
  4. Registrability: Grounds for Refusal
    1. The Applicant is Not the Owner of the Trade Mark
    2. Contains a Prescribed Sign
    3. Graphically Represented
    4. Not Capable of Distinguishing
    5. Contrary to Law and Scandalous Trade Marks
    6. Connotation Likely to Deceive or Cause Confusion
    7. Substantially Identical/Deceptively Similar
  5. Grounds for Opposition

Registration Process

Trade mark registration is a relatively simply process. Applications can be made online and do not always require legal assistance. The below video provides an overview of the registration process.

Video overview by Dan Hunter on Registration of Trade Marks.

There are five stages in the application process.

The first stage is completing the application which can be filled out either online or by paper. The application is in a prescribed form.1 In order to complete the application, the applicant needs to set out the sign, list the goods and/or services for which they are seeking registration and the relevant goods/services classes. In order to determine the particular class the mark is to be registered in, the applicant will need to consider the 45 classes. Once the application is complete the applicant will pay the required fee and attend to filing.

The second stage of the process is the examination. The examiner reviews the application and determines whether there are any reasons why the trade mark should not be registered. There are a number of reasons a trade mark may not be registered. These will be discussed below in this chapter.

The third stage involves the outcome of the application; the decision. The application will be either accepted or rejected. If the application is accepted, the trade mark is then published for opposition.

The fourth stage is the opposition. The trade mark is published in the journal of the Trade Mark Office for the purpose of the public, especially other traders, to oppose the trade mark if they believe they will be affected by the registration. This may involve other trade mark holders opposing on the basis of a number of reasons including substantial identity/deceptive similarity. The opposition period is two months. If the trade mark is opposed there will be a hearing. If there is no opposition at the end of the two month period or if the opposition is dismissed the registration will be formalised.

The final stage is registration. If there are no grounds for refusal or successful opposition, the registrar must register the trade mark.2 The trade mark will be afforded 10 years of protection from the date of filing of the application. As noted in the previous chapter, this period of protection can be extended indefinitely.

The below video is a detailed overview of the mechanics of the trade mark registration process.

Video overview by Dan Hunter on The Trade Mark Registration Process

Benefits of Registration

Registered trade marks are registered for a period of 10 years initially and can be renewed indefinitely after this time.3 The basic requirement to renew the trade mark is continuous use of the mark.

Trade marks are not domain names or business names or company names. They are signs that are applied to a product or service to distinguish a product or service from something else. The difference is that whilst names are significantly important, they are not trade marks. Unlike names, trade marks denote the origins of a product or service.

There are 45 goods and services classes used in trade mark registration systems.

Trade marks are geographically bound. For example, trade marks registered in Australia only apply in Australia and US trade marks only apply in the US. An example of this is Burger King and Hungry Jacks. Whilst Burger King owns Hungry Jacks in Australia, the trade mark for Burger King was already owned by another company in relation to burgers in Australia and as such, Burger King chose a new brand for their Australian chains. Burger King has since taken over the trade mark of Burger King in Australia. However, due to the positive reputation of Hungry Jacks, Burger King has not changed the brand of Hungry Jacks in Australia.

Trade marks are also considered a form of personal property. This allows the owner to license the mark to other people and companies. This can be very effective when using one brand on another product such as using the Superman logos on bed sheets.

Video overview by Dan Hunter on The Benefits and Requirements of Registration

Entitlement to Apply for Registration

A person may apply for registration if the person claims to be the owner of the trade mark.4 A person may apply for registration by showing actual use of the trade mark within the jurisdiction, before any other person. A person can also apply for an un-used mark if the person created the trade mark, intends to use it and applies for registration before anybody else.

Pursuant to s 17 of the TMA, trade marks must be used in order to be registered. Use is generally straightforward; a mark is applied to a product or service which satisfies the use requirement. There are some marks where use is not as clear. These situations are where consumers do not recognises the mark as an indication of source. In these instances the use requirement may not be satisfied.

The key question to be considered is whether the mark, in the eyes of the consumer, denotes the source. The following video discusses this complexity of use in trade mark law.

Video overview by Dan Hunter on The Use Requirements of Trade Mark Registration

Registrability: Grounds for Refusal

There are a number of grounds for refusal of a trade mark application.

These include:

  • The applicant is not the owner of the trade mark;4
  • The trade mark contains a prescribed sign;5
  • The trade mark cannot be represented graphically;6
  • The trade mark is not capable of distinguishing;7
  • The trade mark is scandalous or contrary to law;8
  • The trade mark is likely to deceive or cause confusion; and9
  • The trade mark is substantially identical or deceptively similar to a registered trade mark.10

There is a presumption of registrability.11

The Applicant is Not the Owner of the Trade Mark

The application for registration may be refused on the basis that the applicant is not the owner of the trade mark.12

Contains a Prescribed Sign

A trade mark cannot be registered if it contains or consists of a prescribed sign – as set out in r. 4.15 and Schedule 2 of the Trade Mark Regulations 1995.5 For example, a trade mark cannot contain ©, Patent, National Flags, Coat of Arms, names of cities, towns, public authorities etc.

Graphically Represented

A trade mark cannot be registered where it cannot be described in writing and/or drawing. A trade mark must be capable of being graphically represented.6 See Trade Marks Office Manual of Practice and Procedure Part 21.

Video overview by Chris Ormandy on Graphic Representation

Not Capable of Distinguishing

An application for registration must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services from the goods or services of other persons.13

Video overview by Nic Suzor on The Requirement of Distinctiveness

There are three categories of distinctiveness

  • Inherently adapted to distinguish;
  • Trade marks that in fact distinguish; and
  • Trade marks adapted to distinguish to some extent.

A trade mark must be rejected if it meets the negative criteria set out in TMA s 41.

Inherently Adapted to Distinguish

TMA s 41 Note 1 deals with trade marks that are inherently adapted to distinguish. Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) The kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of the goods or services; or

(b) The time of production of goods or of the rendering of services.

Trade marks that are capable of distinguishing due to their intrinsic characteristics will be inherently distinctive, irrespective of use, intended use or other circumstances. Kitto J in Clark Equipment Co v Registrar of Trade Marks,14 outlined the test for inherent distinctiveness:

‘The question whether a trade mark [MICHIGAN for earthmoving equipment] is adapted to distinguish [must] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated by only proper motives … will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.’

The following trade marks are not inherently adapted to distinguish:

Trade Marks that in Fact Distinguish

TMA s 41(3) applies where a trade mark is not to any extent inherently adapted to distinguish; and the applicant has not used the trade mark before the filing date to such an extent that it does in fact distinguish the goods/services as being those of the applicant.

Trade marks that are not at all adapted to distinguish should be dealt with exclusively under s 41(3) and will require a significant amount of pre-filing date use of the mark to show that it is factually distinctive at the time of filing. For example, in Ocean Spray Cranberries v Registrar of Trade Marks,17 2.5 years of pre-filing use was not enough to overcome the marks lack of distinctiveness.

Video overview by Patrick Johnson on Distinctiveness

Trade Marks Adapted to Distinguish to Some Extent

TMA s 41(4) applies where the trade mark is to some extent adapted to distinguish AND the trade mark does not and will not distinguish the designated goods/services having regard to the combined effect of the following:

  • (i) The extent to which the trade mark is inherently adapted to distinguish the goods/services from the goods/services of other persons;

  • (ii) The use, or intended use, of the trade mark by the applicant;

  • (iii) Any other circumstances.19

In Gazal Apparel Pty Ltd v Fine Lines Extraordinary Apparel Pty Ltd,19 it was held that the word combination ‘Fineform’ had some descriptive connotation, but it is not one most appropriate for normal description of the goods in question. When combined with the other relevant factors (evidence of sales, promotion, etc), the trade mark ‘Fineform’ for lingerie could be registered.

Video overview by Jessica Bell Distinctiveness

Distinctiveness of Non-Traditional Trade Marks

Non-traditional trade marks include, among other things:

  • Shape trade marks; and
  • Colour trade marks.

These two categories of non-traditional marks will be discussed below.

Shape Trade Marks

Whether a shape trade mark is distinctive often involves determining whether the shape has any functional significance.20

In Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd,20 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.

In Chocolaterie Guylian N.V. v Registrar of Trade Marks,21 the seahorse shape of Guylian chocolates could not be registered as a trade mark as Guylian did not use the shape as its trade mark. Despite evidence that consumers associated the shape with Guylian chocolates, Guylian solely used its name as a badge of origin for goods. The seahorse shape was thus not distinctive.

In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks,22 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.

Colour Trade Marks23

In Philmac Pty Limited v The Registrar of Trade Marks,23 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,24 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 Woolworths Limited v BP p.l.c.,25 Woolworths successfully opposed BP’s application to register a shade of green in respect of service stations. BP failed to show it used the colour as a trade mark, as the colour was always used in conjunction with the BP logo. The shade of green alone was not capable of distinguishing BP’s goods.

Contrary to Law and Scandalous Trade Marks

A trade mark will be contrary to law if its use would violate another law,26 (such as defamation, copyright, or Australian Consumer Law, Competition and Consumer Act (Cth) 2010) or if the trade mark is not allowed to be registered pursuant to law (e.g. Sydney Olympics, Melbourne Commonwealth Games, Australian Grand Prix). See, for example, Advantage Re-A-Car v Advantage Car Rental P/L.27 where the trade mark was refused because it would contravene the Copyright Act 1968 (Cth), as it would give rise to copyright infringement of an artistic work.

A trade mark will be deemed scandalous if it is found to cause a significant degree of disgrace, shame or outrage.2829

Video overview by Scott Thompson on Scandalous Marks

Connotation Likely to Deceive or Cause Confusion

An application for registration must be rejected if, because of some connotation the trade mark (or a sign contained in the trade mark) has, the use of the trade mark in relation to the relevant goods or services would be likely to deceive or cause confusion.9 The connotation may exist because the mark falsely suggests some quality or connection to the goods or services that it does not have.

In Scotch Whisky Association v De Witt,30 an application for the trade mark ‘Glen Oaks’ for bourbon was refused on the basis the words ‘Glenn Oaks’ (particularly ‘Glenn’) conveyed a clear connotation of Scottish origin, and its use in relation to bourbon products was likely to deceive or cause confusion.

Video overview by Trent Stephens on Section 43 Deceptive and Confusing Marks

Substantially Identical/Deceptively Similar

An application must be rejected if the trade mark is substantially identical with or deceptively similar to an existing trade mark.10 This applies:

  • Where the application is for goods – the existing trade mark is for similar goods or closely related services

  • Where the application is for services – the existing trade mark is for similar services or closely related goods.

TMA s 44 requires the goods/services to be either similar or closely related.

TMA s 14 defines what ‘similar’ goods and services are. Under TMA s 14(1), goods are similar to other goods if they are the same as the other goods; or if they are of the same description as that of the other goods. Under TMA s 14(2), services are similar to other services if they are the same as the other services; or if they are of the same description as that of the other services.

If the public would not expect the same business to supply both the goods/services, then the two are unlikely to be considered closely related. In Registrar of Trade Marks v Woolworths Ltd,31 retailing and wholesaling services in the nature of supermarkets, department stores, variety stores, boutiques, speciality products stores, liquor outlets and discount stores were services closely related to the following goods: meat of all kinds, confectionery, mens, womens and children under and outer wear but not including footwear, games, toys and playthings but not including scooters, bicycles or exercise bikes, chairs, combs and hairbrushes.

Substantially Identical32

Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd,32 observed that:

‘In considering whether marks are substantially identical they should … be compared side by side, their similarities and differences noted and the importance of these assessed by having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.’

Whether trade marks are substantially identical is a question of fact which requires a side-by-side comparison of the marks. Regard must be to the similarity and differences of the ‘essential features’ of the marks. However, the test is not purely visual – aural similarity will also be relevant. The totality of the characteristics of the trade mark will be taken into account.

Substantial identity cannot be established simply on the basis that one trade mark is contained within another trade mark. For example, ‘St Agnes Liquor Store’ was held not to be substantially identical to ‘St Agnes’.33

In Coca Cola Co v All-Fect Distributors Ltd,34 the Full Court observed:

‘compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from that comparison.’

The case concerned coke bottle lollies, which used a similar shape that Coca-Cola had protected by a shape trade mark. The court held that even when the confectionary was laid out flat, it didn’t have the pronounced waisting effect that the bottom quarter of Coca-Cola’s mark had. While there was space for the label on the confectionary, it was of a different shape and had ‘Cola’ written across it. The only similarities between the mark and the confectionary was the fluting. Therefore, a total impression of similarity did not emerge by comparison of the mark and the confectionary and therefore they are not substantially identical.

Video overview by Laura O’Brien on the Test of Substantial Identity35

In Woolworths v Register of Trade Marks,35 the ‘Woolworths Metro’ logo was held to be registrable, despite the fact that the word ‘metro’ was already registered. This is because when the logo, which included wavy lines, was compared to the word, they could not be said to be similar.

In Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited,36 Torpedoes Sportswear owned two trade marks for ‘Paradise Legends Torpedoes’ word and ‘Torpedoes’ logo. It opposed the registration of ‘Thorpedo’ for sportswear.

The court said the respective wholes (essential components) of the marks had to be compared. In relation to the ‘Paradise Legends Torpedoes’ mark, the first two words formed part of the substantial identity and therefore the marks were not similar. In relation to the logo, the visual elements of it were an essential part, which was not substantially identical to the ‘Thorpedoes’ word - the aural differences also gave an impression of dissimilarity. Therefore, the trade marks were not substantially identical.

Deceptively Similar

A trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.37 Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd32 observed:

‘On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibition … An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained in necessarily.’

The marks need not be compared side by side. Instead, the residual impression on consumers that the trade mark leaves is considered - both aural and visual. To some extent, common prefixes and suffixes are discounted to make this comparison. It is the net impression of the mark that must be considered – how the mark is perceived as a whole – are consumer likely to be ‘caused to wonder’ if the goods or services are connected.38

In Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd,38 the High Court approved the wonderment test - the trade mark will be deceptively similar if it causes a reasonable person to wonder whether it might not be the case that the two products come from the same source. In that case, the words ‘Southern Cross’ were applied for in respect of refrigerators. This was successfully opposed by Toowoomba Foundry, which owned the mark ‘Southern Cross’ in respect of well drilling machinery, milking machines, engines and windmills. There was evidence of actual confusion between the marks. Particularly relevant was that the ‘Southern Cross’ mark was used for many years over a large range of goods, sold at country stores that sold a wide range of products. Therefore, the marks were deceptively similar.

In Campomar Sociedad Limited v Nike International Limited,39 Campomar marketed a ‘Nike Sports Fragrance’ and applied for a trade mark in class 3. Nike had no registration in this class. The court held there was no likelihood of confusion in 1986 when the first mark was applied for, but some likelihood of confusion from 1992 when the second mark was applied for, once Nike engaged in a worldwide advertising campaign.

Crazy Ron’s v Mobileworld,40 concerned Crazy Johns, which operated since 1993 and Crazy Ron’s, which operated since 1996. It was held the words CRAZY RON’S did not infringe the Crazy Johns globe device mark, as the words ‘Crazy John’s’ was not an essential feature of the logo. However, a different conclusion might have been reached if the reputation of Crazy John’s was greater.

In Wingate Marketing v Levi Strauss,41 ‘Revise’ was held to be deceptively similar to ‘Levis’, both aurally and visually - ‘Revise’ was pronounce ‘Ree-vise’ to sound like ‘Levis’, as it was remade second-hand Levis.

Grounds for Opposition

A trade mark can be opposed by an interested third party within two months of the trade mark being advertised for opposition purposes.42 The grounds on which a trade mark can be rejected include:

  • All grounds on which an application may be rejected, except graphical representation;43
  • The applicant is not the owner of the trade mark;44
  • The applicant is not a prior continuous user of the trade mark;45
  • The applicant is not intending to use the trade mark;46
  • The trade mark has acquired reputation and the other trade mark would deceive or cause confusion;47
  • The trade mark contains or consists of false geographical indication;48
  • The application was defective;49 and
  • The application was made in bad faith.50

Video overview by Lucy Jorgensen on Opposing a Trade Mark Application

Video overview by Louis Jennings on [Opposition on Grounds of False Geographical Indication] (https://www.youtube.com/watch?v=UGSDPbr3Ju8)

Video overview by Reily B on Opposition on Grounds that Applicant Has no Intention to Use

Video overview by tcava3 on Opposition on Grounds that Applicant Has no Intention to Use

  1. TMA s 27 ↩

  2. TMA s 68 ↩

  3. TMA s 72(3) ↩

  4. TMA s 27(1) ↩ ↩2

  5. TMA s 39 ↩ ↩2

  6. TMA s 40 ↩ ↩2

  7. TMA s 41 ↩

  8. TMA s 42 ↩

  9. TMA s 4330 ↩ ↩2

  10. TMA s 44 ↩ ↩2

  11. TMA s 33 ↩

  12. TMA s 33, s 27(1) ↩

  13. TMA s 41(1) ↩

  14. [1964] HCA 55 ↩

  15. [1973] HCA 15 ↩

  16. http://www.austlii.edu.au/au/cases/cth/HCA/1973/15.html ↩

  17. [2000] FCA 177 ↩ ↩2

  18. [1998] FCA 440 ↩

  19. [1999] ATMO 90 ↩ ↩2

  20. [1999] FCA 816 ↩ ↩2

  21. [2009] FCA 89122 ↩

  22. [2002] FCAFC 273 ↩ ↩2

  23. [2002] FCA 1551 ↩ ↩2

  24. [1967] HCA 4225 ↩

  25. [2013] ATMO 61 ↩ ↩2

  26. TMA s 42(b) ↩

  27. [2001] FCA 683 ↩

  28. TMA s 42(a) ↩

  29. See for example Nuckin Futs Trade Mark Application No. 1408134 (24 February 2011) and Pommiebasher (Peter Hanlon [2011] ATMO 45 ↩

  30. [2007] FCA 1649 ↩ ↩2

  31. [1999] FCA 1020 ↩

  32. [1963] HCA 66 ↩ ↩2 ↩3

  33. Angoves Pty Ltd v Johnson (1982) 43 ALR 34934 ↩

  34. (1999) 96 FCR 107 ↩ ↩2

  35. [1999] FCAFC 102036 ↩ ↩2

  36. [2003] FCA 901 ↩ ↩2

  37. TMA s 10 ↩

  38. [1954] HCA 8251 ↩ ↩2

  39. [2000] HCA 1240 ↩

  40. [2004] FCAFC 19641 ↩ ↩2

  41. [1994] FCA 1001 ↩ ↩2

  42. TMA s 52 ↩

  43. TMA s 57 ↩

  44. TMA s 58 ↩

  45. TMA ss 58A, 44(4) ↩

  46. TMA s 59 ↩

  47. TMA s 60 ↩

  48. TMA s 61 ↩

  49. TMA s 62 ↩

  50. TMA s 62A ↩

  51. [1973] HCA 43 the aural similarities between ‘Berlei’ and ‘Bali’ made the mark deceptively similar by reason of phonetic confusion. A consumer would be caused to wonder if there was a relationship between the two brands.39 ↩