Trade Mark Registration

Video overview by Dan Hunter on registration of trade marks.

Video overview by Dan Hunter on the benefits and requirements of registration.

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 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.

Video overview by Dan Hunter on the use requirements of trade mark registration.

  • 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 s 41)
  • The trade mark is scandalous or contrary to law (TMA s 42)
  • The trade mark is likely to deceive or cause confusion (TMA s 43)
  • The trade mark is substantially identical or deceptively similar to a registered trade mark (TMA s 44)

Note that there is a presumption of registrability provided by TMA s 33.

Contains a Prescribed Sign (TMA s 39)

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

Cannot be Graphically Represented (TMA s 40)

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.

Chris Ormandy on Graphic Representation

Jacob Briggs on s 40.

Not Capable of Distinguishing (TMA s 41)

Video overview by Nic Suzor on the requirement of distinctiveness .

An application for registration must be rejected if the trade mark is not capable of distinguishing the applicant’s goods orservices from the goods or services of other persons (TMA s 41(1)).

Categories of Distinctiveness

A trade mark must be rejected if it meets the negative criteria set out inTMA 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 [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 word WHOPPER: [Burger King Corp v Registrar of Trade Marks [1973] HCA 15] (
  • The words CRANBERRY CLASSIC: Ocean Spray Cranberries v Registrar of Trade Marks [2000] FCA 177
  • The word OREGON with device: Blount Inc v Registrar of Trade Marks [1998] FCA 440

Trade Marks that in fact Distinguish (TMA s 41(3))

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.

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.

Patrick Johnson on Distinctiveness

Trade Marks Adapted to Distinguish to Some Extent (TMA s 41(4))

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.

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.

Jessica Bell - Distinctiveness

Bethany Allen - acquiring distinctiveness through use

Distinctiveness of Non-Traditional Trade Marks

Shape trade marks

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. 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.

In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, the 3D shape of an imaginary six-legged spider-like creature (the 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.

Colour Trade Marks

In Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551, a terracotta shade on plastic pipes and pipe fittings could be registered as a trade mark as the colour had no functional purpose. In contrast, in Smith Kline and French Laboratories (Australia) Ltd v Registrar of Trade Marks [ 1967] HCA 42, the colour scheme of a pharmaceutical capsule which was half transparent and revealed multi-coloured pellets of medicine was refused registration as the trade mark could not be described apart from the capsule.

In 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.

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).

Scott Thompson on scandalous marks

Contrary to Law (TMA s 42(b))

A trade mark will be contrary to law if its use would violate another law (e.g. defamation, copyright, section 18 of the ACL) or 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 [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.

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.

Roohi Gill on likelihood of deception or confusion

Trent Stephens on s43 deceptive and confusing marks

Substantially Identical/Deceptively Similar (TMA s 44)

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

Similar and Closely Related Goods and Services

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 [1999] FCA, 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, men's, women'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.

Substantially Identical

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.’

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).

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.'

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.

Test of Substantial Identity - Matt Gamble.

Test of Substantial Identity - Laura O'Brien

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 [2003] FCA 901, Torpedoes Sportwear 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 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.

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:

‘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.

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.

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 Campomar Sociedad Limited v 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.

Crazy Ron's v Mobileworld [2004] FCA 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.

In Wingate Marketing v Levi Strauss [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.

Nicholas Cassidy on Wingate Marketing v Levi Strauss.

Yanery Ventura-Rodriguez on Wingate Marketing v Levi Strauss.

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).

Julia Bolam on CA Henschke & Co v Rosemount Estates Pty Ltd.

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).

Opposing a Trade Mark Application - Lucy Jorgensen.

Louis Jennings explains opposition on grounds of a false geographical indication

Reily B explains opposition on grounds that applicant has no intention to use (s 59).

Video overview by Dan Hunter on the trade mark registration process.

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