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ausip:trade-mark-registration [2018/11/02 10:22]
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ausip:trade-mark-registration [2019/03/10 13:22] (current)
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 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. ​ 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 [registration ​of trade marks](https://​www.youtube.com/​watch?​v=NGTemMKgHaI&​index=3&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty).**+**Video overview by Dan Hunter on [Registration ​of Trade Marks](https://​www.youtube.com/​watch?​v=NGTemMKgHaI&​index=3&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty).**
  
 There are five stages in the application process. ​ 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. ((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 sits the purpose of the sign. Once the application is complete the applicant will pay the required fee and attend to filing. ​+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. ​
  
-The second stage of the process is the examination. The examiner reviews the application and determines ​where 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. ​+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. ​
  
 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 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 are effected. This may involve other trade mark holders opposing ​the grounds ​on the basis of a number of reasons including deceptive similarity. The opposition period is three months. If the trade mark is opposed there will be a hearing. If there is no opposition at the end of the three month period or if the opposition is dismissed the registration will be formalised. ​+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. ​
  
-The final stage is registration. The registrar must register the trade mark. ((s68)) 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 final stage is registration. The 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. ​   ​
  
  
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 ## Benefits of Registration ​ ## Benefits of Registration ​
  
-Federally 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 continuous use of the mark. ((s 72(3) ))+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// ​s 72(3) ))
  
-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.  ​+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 importantthey are not trade marks. Unlike names, trade marks denote the origins of a product or service.  ​
  
-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. ​ +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.
  
 +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.
  
-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 the 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 propertyThis 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
  
-Trade marks are also considered a form of personal propertyThis allows the own 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](https://​www.youtube.com/​watch?​v=HHX3ul97eXU&​index=4&​list=PLL6gyWv948RXOCr_kz-bb-fNBHGonz7Ty)**
  
-**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]].** 
  
 +## Entitlement to Apply for Registration
  
-##​Entitlement ​to Apply for 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.
  
-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. +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. ​
- +
-Pursuant to s 17 of the //Act//, 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.  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. 
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 These include: These include:
 +
   * The applicant is not the owner of the trade mark; ((//TMA// s 27(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 contains a prescribed sign; ((//TMA// s 39)) 
-  * The trade mark cannot be represented graphically;​ ((//TMA// s 40))  +  * 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 not capable of distinguishing;​ ((//TMA// s 41)) 
-  * The trade mark is scandalous or contrary to law; ((//TMA// s 42))  +  * The trade mark is scandalous or contrary to law; ((//TMA// s 42)) 
-  * The trade mark is likely to deceive or cause confusion; and ((//TMA// s 43))  +  * 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)) +  * The trade mark is substantially identical or deceptively similar to a registered trade mark. ((//TMA// s 44))
  
  
 There is a presumption of registrability.((//​TMA//​ s 33)) There is a presumption of registrability.((//​TMA//​ s 33))
 +
 +### 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. ((//TMA// s 33))
  
 ### Contains a Prescribed Sign  ### Contains a Prescribed Sign 
  
-A trade mark cannot be registered if it contains or consists of a prescribed sign – as set out in Schedule 2 of the Regulations. ((//TMA// s 39)) For example, a trade mark cannot contain ©, Patent, National Flags, Coat of Arms, names of cities, towns, public authorities etc.+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 ### Graphically Represented
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 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) )) 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)**+**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
  
- 
-#### Categories of Distinctiveness 
- 
-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: //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:
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-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:​+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 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__+#### 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 s 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 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.
  
 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. ​ 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. ​
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 **Video overview by Patrick Johnson on [Distinctiveness](https://​www.youtube.com/​watch?​v=xByiCLKTPAI)** **Video overview by Patrick Johnson on [Distinctiveness](https://​www.youtube.com/​watch?​v=xByiCLKTPAI)**
  
- +#### Trade Marks Adapted to Distinguish to Some Extent
-__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:
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 * (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 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. ​+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. ​
  
  
 **Video overview by Jessica Bell [Distinctiveness](https://​www.youtube.com/​watch?​v=hqiqW8_BbLM)** **Video overview by Jessica Bell [Distinctiveness](https://​www.youtube.com/​watch?​v=hqiqW8_BbLM)**
  
 +#### Distinctiveness of Non-Traditional Trade Marks
  
 +There are two types on non-traditional trade marks. These are: 
  
-### Distinctiveness of Non-Traditional Trade Marks+  ​Shape trade marks; and 
 +  - Colour trade marks. ​
  
-__Shape 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 (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.+__//Kenman Kandy Australia ​Pty Ltd v Registrar of Trade Marks//(([2002] ​FCAFC 273))__
  
-In *Woolworths Limited ​BP p.l.c.*, (([2013ATMO 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.+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 +**Colour ​Trade Marks**
  
-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* ​[2011ATMO 45))+__//Philmac Pty Limited v The Registrar of Trade Marks//(([2002FCA 1551))__
  
 +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.
  
-**Video overview by Scott Thompson on [Scandalous Marks](https:​//www.youtube.com/watch?​v=TBVNsQhdZeg)**+__//Woolworths Limited v BP p.l.c.// (([2013] ATMO 61))__
  
 +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.
  
  
 +### Contrary to Law and Scandalous Trade Marks
  
-### Contrary ​to Law+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.
  
-A trade mark will be contrary ​to law if its use would violate another law, ((//TMA// s 42(b) )) (such as defamation, copyright, section 18 of the Australian Consumer Law)  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*.  ​(([2001FCA 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.+A trade mark will be deemed scandalous if it is found to cause a significant degree of disgraceshame or outrage.((//TMA// s 42(a) )) ((See for example ​Nuckin Futs *Trade Mark Application No. 1408134* (24 February 2011) and Pommiebasher ​(*Peter Hanlon* ​[2011ATMO 45))
  
  
 +### Connotation Likely to Deceive or Cause Confusion ​
  
-### 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.
  
-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*.((//TMA// s 43)) 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.+__//Scotch Whisky Association v De Witt// (([2007] FCA 1649))__
  
-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.+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.
  
  
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-**Video overview by Trent Stephens on [s43 Deceptive and Confusing Marks](https://​www.youtube.com/​watch?​v=gkxyzAzEzKc)**+**Video overview by Trent Stephens on [Section 43 Deceptive and Confusing Marks](https://​www.youtube.com/​watch?​v=gkxyzAzEzKc)**
  
  
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 ### Substantially Identical/​Deceptively Similar ​ ### 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:+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:
  
  
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-**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.
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 //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] 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'​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
  
-Windeyer J in *Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd*, (([1963] HCA 66])) observed that:+ 
 +__//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:
  
 >‘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.’
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 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))
  
-In *Coca Cola Co v All-Fect Distributors Ltd*, ((1999) 96 FCR 107)) the Full Court observed:+__//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:
  
 >'​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.
  
  
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 **Video overview by Laura O'​Brien on the [Test of Substantial Identity](https://​www.youtube.com/​watch?​v=KTluc6T23oY)** **Video overview by Laura O'​Brien on the [Test of Substantial Identity](https://​www.youtube.com/​watch?​v=KTluc6T23oY)**
  
 +__//​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 *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](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.
- +
-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.+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**+#### 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: ​
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 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 CoInc//(([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 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.+__//​Campomar Sociedad Limited v Nike International Limited//​(([2000] HCA 12))__ 
 + 
 +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. 
 + 
 +__//Crazy Ron's v Mobileworld//​(([2004] FCAFC 196))__ 
 + 
 +*[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. 
 + 
 +__//Wingate Marketing v Levi Strauss//(([1994] FCA 1001))__ 
 + 
 +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.
  
  
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 +__//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))
-*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))+
  
  
 **Video overview by Julia Bolam on [CA Henschke & Co v Rosemount Estates Pty Ltd](https://​www.youtube.com/​watch?​v=F1KZjgXjozY)** **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)**
  
  
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