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ausip:trade-mark-registration [2017/05/13 16:12]
58.96.32.145 [Grounds for Opposition]
ausip:trade-mark-registration [2019/03/10 13:22] (current)
jessiej_87
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 # Trade Mark Registration # Trade Mark Registration
-<WRAP box round 460px> 
-**Video overview by Dan Hunter on [registration of trade marks](https://​www.youtube.com/​watch?​v=NGTemMKgHaI&​index=3&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty).** 
- ​{{youtube>​NGTemMKgHaI}} 
  
-</​WRAP>​+## Registration Process
  
-<WRAP box round 460px>+Trade mark applications 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 [[https://​www.youtube.com/​watch?​v=HHX3ul97eXU&index=4&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty|the benefits and requirements of registration]].**+**Video overview by Dan Hunter on [Registration of Trade Marks](https://​www.youtube.com/​watch?​v=NGTemMKgHaI&index=3&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty).**
  
- ​{{youtube>​HHX3ul97eXU}}+There are five stages in the application process. ​
  
-</WRAP>+The first stage is completing the application which can be filled out either online or by paper. The application is in a prescribed form. ((//TMA// s 27)) In order to complete the application,​ the applicant needs to set out the sign and class which the sign will operate in. In order to determine the particular class the mark is to be registered in, the applicant will need to consider the 45 classes and choose the one which best suits the purpose of the sign. Once the application is complete the applicant will pay the required fee and attend to filing. ​
  
-##​Entitlement ​to Apply for Registration+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 two main reasons a mark may not be registered. First, if another person already has a mark registered in the same class which is deceptively similar ​to the mark being sought ​for registration. Second, if the mark is scandalous, such as a profanity. There are a number of other potential reasons a trade mark may not be registered. These will be discussed below in this chapter. ​
  
-A person may apply for registration if the person claims to be the *owner* ​of the trade mark (TMA s 27(1)). A person may apply for registration by showing actual use of the trade mark within the jurisdiction,​ before any other personA 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.+The third stage involves ​the outcome ​of the application; ​the decisionThe application will be either accepted or rejected. If the application is accepted ​the trade mark is then published ​for opposition
  
-<WRAP box round 460px>+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 are effected. This may involve other trade mark holders opposing on the basis of a number of reasons including 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. ​
  
-**Video overview by Dan Hunter on [[https://​www.youtube.com/watch?​v=lXleqV_8ikM&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty&​index=5|the use requirements of trade mark registration]].**+The final stage is registrationThe registrar must register the trade mark((//TMA// s 68)) 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   
  
- ​{{youtube>​lXleqV_8ikM}} 
  
-</​WRAP>​ 
  
-##​Registrability:​ Grounds for Refusal+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](https://​www.youtube.com/​watch?​v=RW0NjheL7bU)**
  
-* The applicant is not the owner of the trade mark (TMA s 27(1)) ​+## Benefits ​of Registration ​
  
-The trade mark contains a prescribed sign (TMA s 39+Registered trade marks are registered for a period of 10 years initially and can be renewed indefinitely after this time. The basic requirement to renew the trade mark is continuous use of the mark. ((//TMA// 72(3) ))
  
-The trade mark cannot be represented graphically (TMA s 40) +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.  ​
  
-* The trade mark is not capable ​of distinguishing (TMA s 41) +There are 45 goods and services classes within ​trade marks which refer to the different sorts of goods. These classes divide up the trade mark system so that you can have the same trade mark word in different classes.
  
-* The trade mark is scandalous or contrary ​to law (TMA s 42) +Trade marks are geographic. Australian ​trade marks 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.
  
-* The trade mark is likely ​to deceive or cause confusion (TMA s 43) +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. ​
  
-* The trade mark is substantially identical or deceptively similar to a registered trade mark (TMA s 44+**Video overview by Dan Hunter on[The Benefits and Requirements of Registration](https://​www.youtube.com/​watch?​v=HHX3ul97eXU&​index=4&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty)**
  
  
-Note that there is a presumption of registrability provided by TMA s 33.+## Entitlement to Apply for Registration
  
-###Contains a Prescribed Sign (TMA s 39)+A person may apply for registration if the person claims to be the *owner* of the trade mark. ((//TMA// 27(1) )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.
  
- ​A ​trade mark cannot ​be registered ​if it contains or consists of prescribed sign – as set out in Schedule 2 of the RegulationsFor example, a trade mark cannot contain ©, Patent, National Flags, Coat of Arms, names of cities, towns, public authorities etc.+Pursuant to s 17 of the //​TMA//, ​trade marks must be used in order to be registered. Use is generally straightforward; ​mark is applied to a product or service which satisfies ​the use requirementThere 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
  
-###​Cannot ​be Graphically Represented (TMA s 40)+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. 
  
-A trade mark cannot be registered where it cannot be described in writing and/or drawing. See [Trade Marks Office Manual of Practice and Procedure Part 21](http://​www.ipaustralia.gov.au/​pdfs/​trademarkmanual/​trade_marks_examiners_manual.htm). 
  
-<WRAP box round 460px> +**Video overview by Dan Hunter ​on [The Use Requirements of Trade Mark Registration](https://​www.youtube.com/​watch?​v=lXleqV_8ikM&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty&​index=5%7Cthe+use+requirements+of+trade+mark+registration)**
-**Chris Ormandy ​on Graphic Representation** +
- ​{{youtube>​T08fQLbW45Q}}+
  
-</​WRAP>​ 
  
-<WRAP box round 460px> +## Registrability:​ Grounds for Refusal
-**Jacob Briggs on s 40.** +
- ​{{youtube>​jAvxJvncWPI}}+
  
-</​WRAP>​+There are a number of grounds for refusal of a trade mark application. ​
  
-###Not Capable of Distinguishing (TMA s 41) +These include:
-<WRAP box round 460px> +
-**Video overview by Nic Suzor on [the requirement of distinctiveness ](https://​www.youtube.com/​watch?​v=emH1P49K0v0&​list=PLa0bKPnUKQrzadmRvIQclmAWk9Wmg1a0P&​index=5).** +
- ​{{youtube>​emH1P49K0v0}} +
-</​WRAP>​+
  
-An application for registration must be rejected if the trade mark is not capable of distinguishing ​the applicant’goods orservices from the goods or services of other persons ​(TMA s 41(1)).+  * The applicant is not the owner of the trade mark; ((//TMA// s 27(1) )) 
 +  * The trade mark contains a prescribed sign; ((//TMA// s 39)) 
 +  * The trade mark cannot be represented graphically;​ ((//TMA// s 40)) 
 +  * The trade mark is not capable of distinguishing; ((//​TMA// ​41)) 
 +  * The trade mark is scandalous ​or contrary to law; ((//TMA// 42)) 
 +  * The trade mark is likely to deceive or cause confusion; and ((//TMA// s 43)) 
 +  * The trade mark is substantially identical or deceptively similar to a registered trade mark((//TMA// s 44))
  
-**Categories of Distinctiveness** 
  
-A trade mark must be rejected if it meets the negative criteria set out inTMA s 41.+There is a presumption of registrability.((//TMA// s 33))
  
-__Inherently Adapted to Distinguish__+### The Applicant is Not the Owner of the Trade Mark
  
-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+The application for registration may be refused on the basis that the applicant is not the owner of the trade mark. ((//TMA// s 33))
  
-* (a) The kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic,​ of the goods or services; or +### Contains ​Prescribed Sign 
  
-* (b) The time of production of goods or of the rendering ​of services+A trade mark cannot be registered if it contains ​or consists of a prescribed sign – as set out in Schedule 2 of the [Trade Mark Regulations 1995](https://​www.legislation.gov.au/​Details/​F2018C00773). ((//TMA// s 39)) For example, a trade mark cannot contain ©, Patent, National Flags, Coat of Arms, names of cities, towns, public authorities etc.
  
 +### Graphically Represented
  
-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* [1964] HCA 55 outlined the test for inherent distinctiveness:​ +A trade mark cannot be registered where it cannot be described in writing and/or drawing. A trade mark must not be solely graphically represented. ((//TMA// s 40)) See [Trade Marks Office Manual of Practice and Procedure Part 21](http://​www.ipaustralia.gov.au/​pdfs/​trademarkmanual/​trade_marks_examiners_manual.htm). 
->​‘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.’+ 
 + 
 +**Video overview by Chris Ormandy on [Graphic Representation](https://​www.youtube.com/​watch?​v=T08fQLbW45Q)** 
 +  
 + 
 +**Video overview by Jacob Briggs on [s 40](https://​www.youtube.com/​watch?​v=jAvxJvncWPI)** 
 + 
 + 
 +### 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. ((//TMA// s 41(1) )) 
 + 
 +**Video overview by Nic Suzor on [The Requirement of Distinctiveness](https://​www.youtube.com/​watch?​v=emH1P49K0v0&​list=PLa0bKPnUKQrzadmRvIQclmAWk9Wmg1a0P&​index=5)** 
 + 
 +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](http://​classic.austlii.edu.au/​au/​cases/​cth/​HCA/​1964/​55.html)*, (([1964] HCA 55)) 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:​ The following trade marks are not inherently adapted to distinguish:​
  
  
-* The word WHOPPER[*Burger King Corp v Registrar of Trade Marks* [1973] HCA 15(http://​www.austlii.edu.au/​au/​cases/​cth/​HCA/​1973/​15.html) ​+* The word '​Whopper'​: *[Burger King Corp v Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1973/​15.html)*; (([1973] HCA 15)) ((http://​www.austlii.edu.au/​au/​cases/​cth/​HCA/​1973/​15.html)
  
-* The words CRANBERRY CLASSIC: *Ocean Spray Cranberries v Registrar of Trade Marks* [2000] FCA 177 +* The words '​Cranberry Classic'​: *[Ocean Spray Cranberries v Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2000/​177.html)*; (([2000] FCA 177)) 
  
-* The word OREGON ​with device: *Blount Inc v Registrar of Trade Marks* [1998] FCA 440 +* The word '​Oregon' ​with device: *[Blount Inc v Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1998/​440.html)*. (([1998] FCA 440)) 
  
  
-__Trade ​Marks that in fact Distinguish ​(TMA s 41(3))__+#### 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.+//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 have no inherent adaptation to distinguish should be dealt with exclusively under section ​41(3) and will require ​overwhelming ​pre-filing date use of the mark to show that it is factually distinctive at the time of filing.+Trade marks that have no inherent adaptation to distinguish should be dealt with exclusively under 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.
  
-In *Ocean Spray Cranberries v Registrar of Trade Marks* [2000] FCA 1772.5 years of pre-filing use was not enough to overcome the marks lack of distinctiveness. ​+In *Ocean Spray Cranberries v Registrar of Trade Marks*, (([2000] FCA 177)) 2.5 years of pre-filing use was not enough to overcome the marks lack of distinctiveness. ​
  
-<WRAP box round 280px> 
-**Patrick Johnson on Distinctiveness** 
- ​{{youtube>​xByiCLKTPAI?​small}} 
  
-</WRAP>+**Video overview by Patrick Johnson on [Distinctiveness](https:​//​www.youtube.com/​watch?​v=xByiCLKTPAI)**
  
-__Trade ​Marks Adapted to Distinguish to Some Extent ​(TMA s 41(4))__+#### 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:+//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:
  
  
Line 126: Line 150:
 * (iii) Any other circumstances. ​ * (iii) Any other circumstances. ​
  
 +__//Gazal Apparel Pty Ltd v Fine Lines Extraordinary Apparel Pty Ltd//​(([1999] ATMO 90))__
  
-In *Gazal Apparel Pty Ltd v Fine Lines Extraordinary Apparel Pty Ltd* [1999] ATMO 90it 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. However, when combined with the other relevant factors (evidence of sales, promotion, etc), the trade mark FINEFORM ​for lingerie could be registered. ​+In *Gazal Apparel Pty Ltd v Fine Lines Extraordinary Apparel Pty Ltd*, (([1999] ATMO 90)) 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. However, when combined with the other relevant factors (evidence of sales, promotion, etc), the trade mark '​Fineform' ​for lingerie could be registered. ​
  
-<WRAP box round 280px> 
-**Jessica Bell - Distinctiveness** 
- ​{{youtube>​hqiqW8_BbLM?​small}} 
  
-</WRAP>+**Video overview by Jessica Bell [Distinctiveness](https:​//​www.youtube.com/​watch?​v=hqiqW8_BbLM)**
  
-<WRAP box round 280px> +#### Distinctiveness of Non-Traditional Trade Marks
-**Bethany Allen acquiring distinctiveness through use** +
- ​{{youtube>​ q5uous__oHE?​small}} +
-</​WRAP>​+
  
-**Distinctiveness of Non-Traditional Trade Marks**+There are two types on non-traditional trade marks. These are: 
  
-__Shape ​trade marks__+  - Shape trade marks; and 
 +  - Colour trade marks.  
 + 
 +Each of these will be discussed below.  
 + 
 +**Shape Trade Marks**
  
 Whether a shape trade mark is distinctive often involves determining whether the shape has any functional significance. Whether a shape trade mark is distinctive often involves determining whether the shape has any functional significance.
  
-In *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. 
  
-In *Chocolaterie Guylian N.V. Registrar of Trade Marks* ​[2009] FCA 891, 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.+__//​Koninklijke Philips Electronics NV Remington Products Australia Pty Ltd//(([1999] FCA 816))__
  
-In *Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks* [2002FCAFC 273, the 3D shape of an imaginary six-legged spider-like creature (the millenium 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 *Koninklijke Philips Electronics NV v Remington Products ​Australia Pty Ltd*, (([1999FCA 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.
  
 +__Chocolaterie Guylian N.V. v Registrar of Trade Marks__
  
-__Colour ​Trade Marks__+In *[Chocolaterie Guylian N.V. v Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2009/​891.html)*,​ (([2009] FCA 891)) 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 *Philmac ​Pty Limited ​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 (AustraliaLtd 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.+__//Kenman Kandy Australia ​Pty Ltd v Registrar of Trade Marks//(([2002] ​FCAFC 273))__
  
-In *Woolworths Limited ​BP p.l.c.* [2013ATMO 61Woolworths 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.+In *[Kenman Kandy Australia Pty Ltd Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCAFC/​2002/​273.html)*, (([2002FCAFC 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.
  
-###​Scandalous Trade Marks (TMA s 42(a)) 
  
-A trade mark will be deemed scandalous if it is found to cause a significant degree of disgrace, shame or outrage. See for example NUCKIN FUTS (*Trade Mark Application No. 1408134(24 February 2011)) and POMMIEBASHER (*Peter Hanlon[2011] ATMO 45).+**Colour Trade Marks**
  
-<WRAP box round 450px> +__//Philmac Pty Limited v The Registrar of Trade Marks//​(([2002] FCA 1551))__
-Scott Thompson on scandalous marks +
-{{youtube>​TBVNsQhdZeg}} +
-</WRAP>+
  
 +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.
  
-###Contrary to Law (TMA s 42(b))+__//​Woolworths Limited v BP p.l.c.// ​(([2013] ATMO 61))__
  
-A trade mark will be contrary to law if its use would violate another law (e.gdefamationcopyright, section 18 of the ACL) or the trade mark is not allowed to be registered pursuant to law (e.g. Sydney OlympicsMelbourne Commonwealth Games, Australian Grand Prix). See for example *Advantage Re-A-Car v Advantage Car Rental P/L*  [2001] FCA 683 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.+In *Woolworths Limited v BP p.l.c.*(([2013] ATMO 61)) 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.
  
-###​Connotation Likely to Deceive or Cause Confusion (TMA s 43) 
-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 those goods/​services would be *likely to deceive or cause confusion*. That connotation may exist because the mark falsely suggests some quality or connection that the goods or services to which it  attaches do not have. 
  
-In  *Scotch Whisky Association v De Witt* [2007] FCA 1649,  an application for the trade mark GLENN 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.+### Contrary to Law and Scandalous Trade Marks
  
-<WRAP box round 450px> +A trade mark will be contrary to law if its use would violate another law, ((//TMA// s 42(b) )) (such as defamation, copyright, ​or Australian Consumer Law, [Competition and Consumer Act (Cth) 2010](https://​www.legislation.gov.au/​Details/​C2018C00437)) 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](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2001/​683.html)*. ​ (([2001] FCA 683)) 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.
-Roohi Gill on likelihood of deception ​or confusion +
-{{youtube>​qQXjYHnp6ng}}+
  
-</WRAP>+A trade mark will be deemed scandalous if it is found to cause a significant degree of disgrace, shame or outrage.((//TMA// s 42(a) )) ((See for example Nuckin Futs *Trade Mark Application No. 1408134* (24 February 2011) and Pommiebasher (*Peter Hanlon* [2011] ATMO 45))
  
-<WRAP box round 450px> 
-Trent Stephens on s43 deceptive and confusing marks 
-{{youtube>​gkxyzAzEzKc}} 
  
-</​WRAP>​+### Connotation Likely to Deceive or Cause Confusion ​
  
 +An application for registration must be rejected if, because of some *connotation* ​ the use of the trade mark (or a sign contained in the trade mark), in relation to those goods/​services,​ would be *likely to deceive or cause confusion*.((//​TMA//​ s 43)) The connotation may exist because the mark falsely suggests some quality or connection to the goods or services that it does not have.
  
 +__//Scotch Whisky Association v De Witt// (([2007] FCA 1649))__
  
-###​Substantially Identical/Deceptively Similar ​(TMA s 44)+In *[Scotch Whisky Association v De Witt](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2007/​1649.html)*,​ (([2007] FCA 1649)) 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.
  
-An application must be rejected if the trade mark is *substantially ​ identical* with or *deceptively similar* to an existing trade mark. This applies:+ 
 +**Video overview by Roohi Gill on the [Likelihood of Deception or Confusion](https://​www.youtube.com/​watch?​v=qQXjYHnp6ng)** 
 + 
 + 
 + 
 +**Video overview by Trent Stephens on [Section 43 Deceptive and Confusing Marks](https://​www.youtube.com/​watch?​v=gkxyzAzEzKc)** 
 + 
 + 
 + 
 +### 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.((//TMA// s 44)) This applies:
  
  
Line 202: Line 229:
  
  
-**Similar and Closely Related Goods and Services**+#### Similar and Closely Related Goods and Services
  
-TMA s 44 requires the goods/​services to be either similar or closely related.+//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.+//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* [1999] FCAretailing 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, ​ ​men'​swomen'​s ​and children'​s ​under and outer wear but not including footwear, games, toys and playthings but not including scooters, bicycles or exercise bikes, chairs, combs and hairbrushes.+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](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1999/​1020.html)*, (([1999] FCA 1020)) ​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, ​menswomens ​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 Identical**+#### Substantially Identical 
 + 
 + 
 +__//Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd//​(([1963] HCA 66]))__ 
 + 
 +Windeyer J in *[Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1963/​66.html)*, (([1963] HCA 66])) observed that:
  
-Windeyer J in *Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd* [1963] HCA 66] 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.’ >‘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. 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 (*Angoves Pty Ltd v Johnson* (1982) 43 ALR 349).+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'​.((*Angoves Pty Ltd v Johnson* (1982) 43 ALR 349)
 + 
 +__//Coca Cola Co v All-Fect Distributors Ltd//(( (1999) 96 FCR 107))__ 
 + 
 +In *Coca Cola Co v All-Fect Distributors Ltd*, (( (1999) 96 FCR 107)) the Full Court observed:
  
-In *Coca Cola Co v All-Fect Distributors Ltd* (1999) 96 FCR 107, 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.'​ >'​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.+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.
  
-<WRAP box round 280px right> 
-**Test of Substantial Identity - Matt Gamble.** 
- ​{{youtube>​adX01FWSENM?​small}} 
-</​WRAP>​ 
-<WRAP box round 280px right> 
-**Test of Substantial Identity - Laura O'​Brien** 
- ​{{youtube>​KTluc6T23oY?​small}} 
  
-</WRAP>+**Video overview by Matt Gamble on [Test of Substantial Identity](https:​//​www.youtube.com/​watch?​v=adX01FWSENM)** 
 + 
  
-In *Woolworths v Register of Trade Marks* [1999] FCAFC 1020, 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* [2003FCA 901, Torpedoes Sportwear owned two trade marks for PARADISE LEGENDS TORPEDOES word and TORPEDOES logoIt opposed the registration of THORPEDO for sportswearThe court said the respective wholes (essential componentsof 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 there 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.+**Video overview by Laura O'​Brien on the [Test of Substantial Identity](https://​www.youtube.com/​watch?​v=KTluc6T23oY)**
  
-**Deceptively Similar**+__//​Woolworths v Register of Trade Marks//​(([1999] FCAFC 1020))__ 
 + 
 +In *Woolworths v Register of Trade Marks*, (([1999] FCAFC 1020)) 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. 
 + 
 +__//​Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited//​(([2003] FCA 901))__ 
 + 
 +In *[Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2003/​901.html)*,​ (([2003] FCA 901)) 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*. ((//TMA// s 10)) Windeyer J in *Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd(([1963] HCA 66)) observed: ​
  
-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* (TMA s 10). Windeyer J in *Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd* [1963] HCA 66 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.'​ >‘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 in considered - both aural and visual. respective meaning of the marks (visual and aural). 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. The marks need not be compared side by side. Instead, the residual impression on consumers that the trade mark leaves in considered - both aural and visual. respective meaning of the marks (visual and aural). 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.
  
-In *Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd[1954] HCA 82, 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.+__//Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd//(([1954] HCA 82))__
  
-In *Berlei Hestia Industries v the Bali Co, Inc* [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.+In *[Southern Cross Refrigeration ​Co v Toowoomba Foundry Pty Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1954/​82.html)*, (([1954] HCA 82)) 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 marksParticularly relevant was that the '​Southern Cross' mark was used for many years over 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 ​Nike International Limited* ​[2000] HCA 12, 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.+__//Berlei Hestia Industries ​the Bali Co, Inc//(([1973] HCA 43))__
  
-*Crazy Ron'​s ​Mobileworld* [2004FCA 196 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 logoHowever, ​different conclusion might have been reached if the reputation of Crazy John's was greater.+In *[Berlei Hestia Industries ​the Bali Co, Inc](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1973/​43.html)*, (([1973HCA 43)) the aural similarities between '​Berlei' ​and 'Bali' ​made the mark deceptively similar by reason ​of phonetic confusionA consumer would be caused to wonder if there was relationship between ​the two brands.
  
-In *Wingate Marketing ​Levi Strauss*  ​[1994FCA 1001, 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.+__//​Campomar Sociedad Limited ​Nike International Limited//(([2000HCA 12))__
  
-<WRAP box round 280px> +In *[Campomar Sociedad Limited v Nike International Limited](http:​//www.austlii.edu.au/cgi-bin/viewdoc/​au/​cases/​cth/​HCA/​2000/​12.html)*, (([2000] HCA 12)) 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.
-**Nicholas Cassidy on //Wingate Marketing v Levi Strauss//.*+
- ​{{youtube>​SjeRsg0vyOs?​small}}+
  
-</WRAP>+__//Crazy Ron's v Mobileworld//​(([2004] FCAFC 196))__
  
-<WRAP box round 280px> +*[Crazy Ron's v Mobileworld](http://​www.austlii.edu.au/​cgi-bin/viewdoc/au/cases/cth/​FCAFC/​2004/​196.html)*, (([2004] FCAFC 196)) 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.
-**Yanery Ventura-Rodriguez on //Wingate Marketing v Levi Strauss//.*+
- ​{{youtube>​oWB_AErfJnc?​small}}+
  
-</WRAP>+__//Wingate Marketing v Levi Strauss//​(([1994] FCA 1001))__
  
-*CA Henschke & Co v Rosemount Estates Pty Ltd* [2000] FCA 1539 compared the applicants trade mark 'Hill of Grace' with the respondents'​ 'Hill of Gold' and concluded that there was no infringement. The judgement applied the common law test for deceptive similarity by considering the impression an ordinary person with ordinary recollection would derive from the marks. The case turned on the finding of a distinct character of the metaphorical connotations of the marks. Notably, the case established that evidence as to reputation of the initial mark was not relevant to proving infringement by deceptive similarity where the initial mark is not notoriously so ubiquitous that consumers must be familiar with it (distinguishing ​*Woolworths v Register of Trade Marks* [1999] FCAFC 1020 and *Coca Cola Co v All-Fect Distributors Ltd* (1999) 96 FCR 107).+In *[Wingate Marketing v Levi Strauss](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1994/​1001.html)*,​ (([1994] FCA 1001)) '​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. 
 + 
 + 
 +**Video overview by Nicholas Cassidy on [Wingate Marketing v Levi Strauss](https://​www.youtube.com/​watch?​v=SjeRsg0vyOs)** 
 + 
 + 
 + 
 + 
 +**Video overview by Yanery Ventura-Rodriguez on [Wingate Marketing v Levi Strauss](https://​www.youtube.com/​watch?​v=oWB_AErfJnc)** 
 + 
 + 
 +__//CA Henschke & Co v Rosemount Estates Pty Ltd//(([2000] FCA 1539))__ 
 + 
 +In *[CA Henschke & Co v Rosemount Estates Pty Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2000/​1539.html)*,​ (([2000] FCA 1539)) compared the applicants trade mark 'Hill of Grace' with the respondents'​ 'Hill of Gold' and concluded that there was no infringement. The judgement applied the common law test for deceptive similarity by considering the impression an ordinary person with ordinary recollection would derive from the marks. The case turned on the finding of a distinct character of the metaphorical connotations of the marks. Notably, the case established that evidence as to reputation of the initial mark was not relevant to proving infringement by deceptive similarity where the initial mark is not notoriously so ubiquitous that consumers must be familiar with it. ((Distinguishing ​*Woolworths v Register of Trade Marks* [1999] FCAFC 1020 and *Coca Cola Co v All-Fect Distributors Ltd* (1999) 96 FCR 107)
 + 
 + 
 +**Video overview by Julia Bolam on [CA Henschke & Co v Rosemount Estates Pty Ltd](https://​www.youtube.com/​watch?​v=F1KZjgXjozY)** 
 + 
 + 
 +**Video overview by Scott Thompson on [Scandalous Marks](https://​www.youtube.com/​watch?​v=TBVNsQhdZeg)**
  
-<WRAP box round 280px> 
-**Julia Bolam on //CA Henschke & Co v Rosemount Estates Pty Ltd//.** 
- ​{{youtube>​F1KZjgXjozY?​small}} 
  
-</​WRAP>​ 
  
 ## Grounds for Opposition ## 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 (TMA s 52)The grounds on which a trade mark can be rejected include:+A trade mark can be opposed by an interested third party within two months of the trade mark being advertised for opposition purposes. ((//TMA// s 52)The grounds on which a trade mark can be rejected include: 
 + 
 +  * All grounds on which an application may be rejected, except graphical representation;​ ((//TMA// s 57)) 
 +  * The applicant is not the owner of the trade mark; ((//TMA// s 58)) 
 +  * The applicant is not a prior continuous user of the trade mark; ((//TMA// ss 58A, 44(4) )) 
 +  * The applicant is not intending to use the trade mark; ((//TMA// s 59)) 
 +  * The trade mark has acquired reputation and the other trade mark would deceive or cause confusion; ((//TMA// s 60)) 
 +  * The trade mark contains or consists of false geographical indication; ((//TMA// s 61)) 
 +  * The application was defective; ((//TMA// s 62)) and 
 +  * The application was made in bad faith. ((//TMA// s 62A)) 
 + 
 + 
 +**Video overview by Lucy Jorgensen on [Opposing a Trade Mark Application](https://​www.youtube.com/​watch?​v=pIoK2kPldBE)** 
 + 
 + 
 + 
 +**Video overview by Louis Jennings on [Opposition on Grounds of a False Geographical Indication](https://​www.youtube.com/​watch?​v=UGSDPbr3Ju8**
  
-  * All grounds on which an application may be rejected, except graphical representation (TMA s 57); 
-  * The applicant is not the owner of the trade mark(TMA s 58); 
-  * The applicant is not a prior continuous user of the trade mark (TMA ss 58A, 44(4)); 
-  * The applicant is not intending to use the trade mark (TMA s 59); 
-  * The trade mark has acquired reputation and the other trade mark would deceive or cause confusion (TMA s 60); 
-  * The trade mark contains or consists of false geographical indication (TMA s 61); 
-  * The application was defective (TMA s 62); and 
-  * The application was made in bad faith (TMA s 62A). 
  
-<WRAP box round 460px> 
-**Opposing a Trade Mark Application - Lucy Jorgensen.** 
- ​{{youtube>​pIoK2kPldBE}} 
-</​WRAP>​ 
  
-<WRAP box round 460px> +**Video overview by Reily B on [Opposition on Grounds that Applicant Has no Intention to Use](https://​www.youtube.com/watch?​v=k0tdCHq9ZcQ)**
-**Louis Jennings explains opposition ​on grounds of a false geographical indication** +
- {{youtube>​UGSDPbr3Ju8}} +
-</WRAP>+
  
-<WRAP box round 460px> 
-**Reily B explains opposition on grounds that applicant has no intention to use (s 59).** 
- ​{{youtube>​k0tdCHq9ZcQ}} 
-</​WRAP>​ 
  
-## The Mechanics of trade mark registration+**Video overview by tcava3 on [Opposition on Grounds that Applicant Has no Intention to Use](https://​www.youtube.com/​watch?​v=a4FP1A47MKs)**
  
-<WRAP box round 460px> 
  
-**Video overview by Dan Hunter on [[https://​www.youtube.com/​watch?​v=RW0NjheL7bU&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty&​index=6|the trade mark registration process]].** 
  
- ​{{youtube>​RW0NjheL7bU}} 
  
-</​WRAP>​ 
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