Trade MarksLPAB Summer Session

Therese Catanzariti

European Trade Guilds 1266 Bakers Marking Law (pinpricks on bread)

◦ Protect consumers – know where bad bread comes from◦ Develop reputation in quality bread

Silversmiths Porcelein

1875 – UK trade mark register don’t need to bring passing off claim and prove reputation

badge of origin badge of control zeitgest / image of brand  

origin

designated classes of goods and services (Nice Classification – 45 classes)

Class 7 - Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.

Class 7 - Hand tools and implements (hand-operated); cutlery; side arms; razors.

trade mark application designated goods in designated class designated services in designated class

designated goods and services

IP Australia application IP Australia examination=>acceptance or rejection by IP registrar

opposition

IP Australia hearing

registration

Federal Court Appeal

always vulnerable – Any person can apply for rectification

registration process

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person

trade mark – s17

letter word name signature Numeral device brand

Sign – s6

• heading• label• ticket• aspect of

packaging• shape• colour• sound or scent.

Intel Jingle

Nokia ringtone

AG(NSW)vBrewery Employees Union workers mark - indicate goods were product of individual /

association of Australian workers

Not “trade mark” within Constitution 1 a property right 2 owner being a person engaged in trade 3 right corresponds with dealing with goods in course of trade 4 owner of right has independent dominion over goods as to

entitle him to affix mark on them 5 mark distinguishes the goods as having been dealt with by

some particular person or persons engaged in trade

workers mark not a right in property Workers mark not indicate that goods should be distinguished from

other goods dealt with by other persons Union did not constitute a person who had dominion over the goods

to which the mark was applied and who would be referenced by application of the mark

in course of trade

use of the trade mark upon, or in physical or other relation to, goods or services – s7

visual use and aural use (if trade mark is letter, word, number)

Owner’s use and authorised use◦ person uses the trade mark in relation to goods or

services under the control of the owner of the trade mark

◦ quality control over goods and services◦ financial control over trading activities

used or intended to be used

to distinguish goods or services dealt with / provided by a person from other person’s goods or services

indicator of origin whether it indicates the trade origin

using a sign to indicate a connection in the course of trade between the goods and the person who applies the mark

to distinguish goods provided by person

Shorter Oxford Dictionary1 To divide or separate; to class, classify 2 To mark as different or distinct; to separate

Roget’s Thesaurusdifference, discrimination, severalise,

separate

these are X goods, not Y goods or Z goods.

to distinguish

A brand owner does not want a sign to say these goods are big, these goods are

yellow, these goods are plastic A brand owner wants the sign to say these

goods are different from all other big goods, from all other yellow goods, from all other plastic goods

these goods are different from other goods even if the only reason the only reason they

are different is because these goods are MY goods

Capsule – half coloured, half colourless good themselves can’t be a trade mark trade mark must be capable of being described and

depicted as something apart from the goods to which it is to be applied or in relation to which it is to be used.

Can’t get monopoly in all types of goods

Contrast Smith Kline v Stirling Winthrop Coloured capsules could be registerable even though trademark covered whole visible

surface

Smith Kline v Registrar of TM

Koninklijke Philips Electronics NV v Remington Products Australia

Phillips registered triple-headed shaver

Remington copied the shaverRemington NOT using as a trade mark

functional shapes were incapable of acting as trade markscompetitors should be free to use shapes that were attractive and popular with the buying public.

“Millenium bug” stylised 6 legged creature confectionary

Shape that distinguishes the goods may be the entire shape of the goods themselves

NOT if shape serves a function, or shape that is part of the nature of the good

Kenman Kandy

Cola flavoured, cola bottle shaped confectionary silhouette, fluting and band are striking features of the

confectionary, and are apt to distinguish it from the goods of other traders

the non-descriptive features have been put there to make the goods more arresting of appearance and more attractive, and thus to distinguish them from the goods of other traders.

All-Fect was using cola bottle as a trade mark It indicates a connection in the course of trade between

goods and the person who applies the mark to the goods.

Coca Cola v All-Fect Manufacturers

Seahorse not used as a badge of origin

not used in any sense to identify Guylian but to illustrate some examples of the elegance of the chocolates and the contents of the box more generally

simply one of the chocolate shapes out of a number of sea shell/marine shapes that Guylian sells and markets

not enough that consumers associated with Guylian

not enough that used for many years

Chocolaterie Guylian v Registrar

contain certain signs – s39 (s18, r4.15)◦ “patent”, coat of arms, official flag, official seal etc

can’t be graphically represented – s40 not distinguish goods/services – s41 scandalous or contrary to law – s42

◦ a red cross, ANZAC, Olympic logo, etc likely to deceive or cause confusion – s43 substantially identical or deceptively similar -

s44◦ Services – similar services / closely related goods◦ Goods - similar goods/closely related services

reject application

to some extent but not sufficiently inherently adapted to distinguish

and does not distinguish through combination of◦ extent inherently adapted◦ use and intended use◦ any other circumstances

not to any extent inherently adapted to distinguish

and extent of use before filing date does not in fact distinguish

not distinguish goods/services-s41

Inherently adapted in context ◦ designated goods and services◦ people in the relevant market

ordinary signification of word (the ordinary meaning of the word) to target audience (anyone ordinarily purchasing, consuming or trading in the relevant goods) – Cantarella v Modena

“the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess”

Registrar of Trade Marks v W & G Du Cros Ltd Clark Equipment Co v Registrar of Trade Marks

inherently adapted

kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services

time of production of goods or of the rendering of services

geographical indicationCOLORADO - Blount Inc v Registrar of Trade MarksNOKIA – which came first, river town or company3M – Minnesota Minerals and Mining

qualities CRANBERRY CLASSIC - Ocean Spray Cranberries v Registrar TM

Intended purposeTENNIS WAREHOUSE - Sports Warehouse v Fry Consulting

not inherently adapted if descriptive–n 1

does not need to absolutely unsuggestive of qualities of the goods provided not a normal description

Need not be wholly meaningless and may contain a covert and skilful allusion to the character or quality of the good–Howard Auto v Webb

may be indirect or allusiveMark Foy v Davies Coop – TUBHAPPY

NOT if misspelling or phonetic equivalent of descriptive NOT if contraction of two or more descriptive wordsHoward Auto Cultivators v Webb Industries - ROHOE

inherently adapted

Invented words◦ GOOGLE

Unrelated words ◦ APPLE for computers◦ CATERPILLAR for shoes◦ AMAZON for bookstore

word/device mark rather than word itselfprovided that device is more than stylised

letter

inherently adapted

Crazy Ron’s Communications v Mobileworld Communications

relatively large fantasy cartoon character holding a mobile telephone astride a stylised globe

Words not especially prominent and subsidiary to fantasy character which occupied dominant position in overall image

Crazy Ron not infringe Crazy John because mark is device

Image overwhelm words

Blount Inc v Registrar of Trade Marks use of upper-case letters, and the oval

device surrounding the word "Oregon” not sufficient to make descriptive words “Oregon” distinctive

Bayer Pharma v Farbenfabriken Bayer Bayer = Bavaria (German state) the name is feature which makes the device

what it is - the feature which stands out as operative thing in it, and to which everything else is merely assistant - the feature which ... `would strike the eye and fix in the recollection

merely provides a fancy method of presenting the name `Bayer’

May be traced to a foreign source – Howard Auto Cult v Webb

Cantarella v Modena [2014] HCA 48 ORO (gold) CINQUE STELLE (five stars)

Trial – not generally be understood in Australia as having those meanings

FC- whether it is likely that other traders trading in the designated goods and services, in the ordinary course of their business and without improper motive, would wish to use the same trade mark

HC - ordinary signification of word (the ordinary meaning of the word) to target audience (anyone ordinarily purchasing, consuming or trading in the relevant goods)

meaning conveyed by a foreign word to those who will be concerned with the relevant goods.

foreign words

because of some connotation ◦ that trade mark has◦ that sign contained in trade mark has

Big Country Developments v TGI Friday's Incconfusion did not depend upon some connotation in

the registered mark, but because TGI Friday using a similar name – not covered by s43

likely deceive or cause confusion – s43

DIANA’S LEGACY IN ROSES together with a device comprising doves, a wreath of flowers and a stylised letter "D”

real tangible danger that, by virtue of the connotation of the late Princess in the impugned mark, consumers in Australia would be deceived or confused by incorrectly believing that the mark was indicative of some endorsement or approval by the Fund or the Estate of the late Princess

McCorquodale v Masterton

RAWC coconut water

Claimed coconut water not “raw” Because coconut water is pasteurized “raw” signifies uncooked

Other significations of the word “raw” Not diluted, no preservatives Need to look in context – commercial

product sold in tetrapaks in supermarket

C Coconut Water Pty Ltd v Natural Raw C Pty Ltd [2014] ATMO 119

substantially identical OR deceptively similar registered mark for services

◦ similar services◦ closely related goods

registered mark for goods ◦ similar goods◦ closely related services

◦ unless honest concurrent use – s44(3)◦ unless prior use – s 44(4)

s44

Shell Co Australia v Esso Standard Oil 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 the comparison

Solahart v Solar Shop SOLAHART not substantially identical

SOLARHUT

substantially identical - s44

Deceptively similar if so nearly resembles that other trade mark that it is likely to deceive or cause confusion’ – s10

Crazy Ron’s v Mobileworld impression based on recollection of the applicant’s

mark that persons of ordinary intelligence would have compared to impression such persons would get from respondent’s mark

human frailty so imperfect nature of recollection aural similarity may be important tangible risk of deception – enough if ordinary person

entertains a reasonable doubt

deceptively similar – s44

Effem registered trade marks SCHMACKOS and DOGS GO WACKO FOR SCHMACKOS

Wandella apply for WHACKOS in same class

WHACKO not deceptively similar SCHMACKOS because SCHMACKOS more complex sound and more visually complex

but WHACKO deceptively similar to DOGS GO WACKO FOR SCHMACKOS because total phrase derives whole of its force from the word WACKO. WACKO was powerful component of Effem's mark which would be retained in consumer’s memory and recalled when Wandella's mark seen

Effem Foods v Wandella Pet Foods

consider all legitimate uses which may reasonably make of the mark within ambit of the applicant’s registration Southern Cross Refrigerating v Toowoomba Foundry

=>whether any of the registered designated services are closely related services to any of designated goods

similar goods / closely related services

Southern Cross v Toowoomba Foundry gas absorption refrigerators and electric

refrigerators and parts thereof well-drilling and boring machinery hand or

power, milking machines, engines, windmills

similar goods involves consideration of ◦ nature of goods◦ uses to which they are put◦ whether they are commonly sold together to the

same class or classes of customers

similar goods

Registrar of Trade Marks v Woolworths Ltd a practical judgment whether the closeness of the

relationship and the resemblance of the mark together cause deception or cause confusion

range of relationships between goods and services which may be "closely related” - In most cases relationships defined by function of service with respect to goods. Services which provide for installation, operation, maintenance or repair of goods are likely to be treated as closely related to the goods

Caterpillar Loader Hire v Caterpillar Tractor Co Confusion is more likely to arise where services protected

by service marks necessarily involve the use or sale of goods or where services (eg consultancy services) involve goods

closely related services

(1) the honesty of the concurrent use; (2) the extent of the use in terms of time,

geographic area and volume of sales; (3) the degree of confusion likely to ensue

between the marks in question; (4) whether any instances of confusion have

been proved; and (5) the relevant inconvenience that would

ensue to the parties if registration were to be permitted.

exception – honest concurrent use – s44(3)

Mary McCormick registered MCCORMICK for instant batter associated with distinctive fish and chips sold by Mr and Mrs McCormick from roadside caravan

aware at time name chosen that certain mixed herbs, paprika, pepper and basil products were sold under MCCORMICK brand

May be honest even though aware

Was entitled to be registered in Queensland but opposed because of section 60 Mary McCormick later changed to “Mary Macks”

McCormick v McCormick

mark is substantially identical or deceptively similar to previously registered mark

BUT applicant used before the previously registered mark was registered

exception- prior use – s44(4)

Applicant’s use Other Owner’s registration

Applicant’s application

same grounds as rejection – s57 applicant not owner of mark – s58 opponent’s earlier use of similar trade mark –

58A applicant not intending to use mark – s59 trade mark similar to mark that has acquired a

reputation – s60 mark consists of a false geographical indication

- ss61 application is defective - s62 application made in bad faith – s62A

oppose registration

common law owner of mark person who first publicly used the mark in

Australia as a trade mark to indicate a connection in the course of trade between goods/services and person

not any goods /services designated goods/services and

goods/services that are that are the “same kind of thing”

applicant not owner – s58

if mark not used by any person

“an application to register a trade mark so far unused must be founded on proprietorship

proprieter of the mark is combined effect ◦ authorship of the mark◦ intention to use it upon or in connection with the

goods◦ applying for registration”

Shell Co (Aust) Ltd v Rohm & Haas Co (1949) 78 CLR 601

applicant not owner – s58

Mark may be registered where mark is substantially identical or deceptively similar to previously registered mark if the applicant used before the previously registered mark was registered – section 44(4)

BUT can reject if the owner of the previously registered mark used before the applicant

opponent’s earlier use – s58A

Other Owner’s use

Applicant’s use Other Owner’s registration

Applicant’s application

use it upon or in connection with goods

intention at date of application but evidence use/non-use after date may be

relevant Food Channel Network Pty Ltd v Television

Food Network GP

not just non-use – need to prove no intention

not intending to use – s59

TASTEE FREEZ iced milk intention looked at in context of proprietorship

does not need to be actual use, or an immediate intention or an intention within a limited time of using a registered mark

“A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. If he in fact does not use any of them for the period specified in s. 72, the unused mark or marks may be expunged under that section. On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars”

Aston v Harlee Manufacturing Co

prevent trade mark dilution◦ register in related classes that don’t intend to use◦ register related words / logos that don’t intend to

use cybersquatter / trade mark pirates

may be opposed – s59 may be removed for non-use – Part 9 owner can use other mechanisms

◦ closely related goods and services – s120(1)/(2)◦ well-known marks – s120(3)

ghost marks

IG couldn’t register MERIT – descriptive

IG registered NERIT as defensive mark to prevent others using MERIT

no genuine intention to use NERIT

Imperial Group Limited v Phillip Morris

another trade mark has reputation AND because of reputation likely to deceive or cause

confusion

reputation does not have to be registered reputation demonstrated by evidence of sales,

marketing, advertising and licensing

reputation can be in any goods or services doesn’t have to relate to designated goods / service BUT if reputation relates to very different goods or

services it will be difficult to show that the reputation will deceive or cause confusion

similar to mark with reputation – s60

McCormick & Company Inc v McCormick reputation means the recognition of the marks by the public generally.

McDonalds v Bowditch GOLDEN BOOMERANGS

McDonalds v Macri Fruit Distributors MCSALAD, MCFRUIT

Greenpeace v Taylor GREENPIECE

Qantas v NV Sumatra JETSTAR for coffee, tea, cereal, biscuits, cocoa

Intel v Third Party Corporation BELLINTEL – stock-broking services

NOT Coca Cola v The Big Australian SOLA COLA

Fry Consulting v Sports Warehouse unscrupulous, underhand or unconscientious

deliberate misspellings registered trademark register foreign trade mark with no Australian

market penetration with purpose of selling to foreign owner

cyber-squatting

not include mere negligence, incompetence or a lack of prudence

application made in bad faith – s62A

No intention to use when apply AND not in fact used as trade mark in good faith in Australia since

registration

registered for 3 years and not used as trade mark in good faith in Australia for 3 years

Woolly Bull Enterprises Pty Ltd v Reynolds Not necessary that there be an actual trade in the sense of the

offering for sale and the sale of goods bearing the mark BUT must go beyond investigating whether to use the mark and

beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, ie, to carrying its intention to use the mark into effect.

Good faith – real not token, colourable

remove OR impose limitations or conditions

non-use – s92

person claims to be the owner of the trade mark

AND  intends to use the mark authorised / intends to authorise another to

use intends to assign to body corporate about to

be incorporated   

who can apply for mark – s27

registered owner exclusive right – s20◦ Use / authorise the trade mark in relation to

designated goods/services◦ obtain relief if trade mark infringed

registered trade mark personal property– s21

registered owner may deal with trade mark and give discharges in good faith – s22

equities may be enforced against registered owner except PPSA security interests

rights

 authorised user – uses trade mark in relation to goods/services under registered owner’s control – s8

Authorised owner rights – s26◦ use trade mark on designated goods/services ◦ Sue for infringement with owner’s consent◦ Sue for infringement after end prescribed period if owner doesn’t sue within

prescribed period◦ Give notice to customs to prevent importation◦ Permission to alter / deface mark on goods

E & J Gallo Winery v Lion Nathan Issue whether Gallo used mark BAREFOOT RADLER in AustraliaHoulihan trade mark owner (later Gallo) owned Barefoot CellarsBarefood Cellars applied mark to wine Barefoot Cellars sold wine to Einig-Zenzen, Germany who sold to

Beach Avenue, Australia who sold wine in AustraliaHoulihan exercised quality control over Barefoot Cellars

licensing

registered owner right to obtain relief if trade mark infringed – s20(2)

consider the consequences infringement proceedings may be the

catalyst for cross-claim to rectify register

vulnerable trade mark + small-scale infringer

=> don’t commence proceedings

infringement

if the person uses as a trade mark a sign that is substantially identical with, or

deceptively similar to, the trade mark

in relation to s120(1) registered goods or services

s120(2) goods/services of same description or closely related goods or services

s120(3): well-known trade marks any goods / services

Infringement – s120

Substantially identical Shell Co Australia v Esso Standard Oil 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 the comparison

Deceptively similar if it so nearly resembles that other trade mark that it is likely to

deceive or cause confusion’ – s10 Crazy Ron’s v Mobileworld impression based on recollection of the applicant’s mark that

persons of ordinary intelligence would have compared to impression such persons would get from respondent’s mark

substantially identical or deceptively similar (see s44)

Coca Cola Distributors v All Fect Distributors Pty Ltd All-Fect was using cola bottle to indicate a connection in the

course of trade between goods and the person who applies the mark to the goods

certain striking non-descriptive features of the goods were put there to make the goods more arresting and to distinguish them from other similar goods, that is, to use those features as a mark

Johnson & Johnson (Tylenol) v Sterling Pharmaceuticals (Panadol)– CAPLET

a registered mark serves to indicate the origin of the quality in a particular business, whether known or unknown by name

Caplet was used to indicate or describe form or method of dosage of product found inside packages, and not a connection in the course of trade

Use as a trade mark

Top Heavy v Killin whether the sign is used to distinguish one person’s

goods and services from the goods or services of others Killin put words CHILL OUT on t-shirts as an exhortation

to relax, not to indicate a connection in trade

Pepsico Australia Pty Limited (t/a Frito-Lay) v Kettle Chip Co Pty Limited

Frito-Lay's use of the words "KETTLE", or "KETTLE COOKED", was not use as a trade mark

Frito Lay used words KETTLE or KETTLE COOKE for purpose and effect of describing qualities of the chips produced by Frito-Lay. The words have the effect of distinguishing between the qualities of those chips and those produced by means other than "kettle cooking”, but not to distinguish Frito-Lay's chips from Kettle’s chips

Southern Cross v Toowoomba Foundry similar goods involves consideration of

◦ nature of goods◦ uses to which they are put◦ whether they are commonly sold together to the

same class or classes of customers

Registrar of TM v Woolworths whether the closeness of the relationship and the

resemblance of the mark together cause deception or cause confusion

range of relationships between goods and services which may be "closely related”

similar / closely related

well-known marks

Person uses person’s name/ place of business (predecessor’s name) in good faithAngove’s Pty Ltd v Johnsonentitled to use words “St Agnes Liquor Store” in the name of its business in the Adelaide suburb of St Agnes, notwithstanding that plaintiff registered trade mark ST AGNES

Person uses sign in good faith to indicate kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services

Person uses trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services

Person uses trade mark in comparative advertising

Person would obtain registration if applied (eg honest concurrent use) 

defences – s122

Use in good faith imports an absence of intention to make use of the goodwill which has been acquired by another trader

resemblance between the registered trade mark, of which the first respondent was aware and the name of the first respondent does not prevent the use being bona fide provided that there was an honest belief that no confusion would arise and if there were no intention of wrongfully diverting business

Wellness Pty Limited v Pro Bio Living Waters Pty Limited no evidence as to reason for choice of name and reason for

incorporation

in good faith

If person/ predecessor continuously used in the course of trade unregistered trade

mark in relation to similar/closely goods or

services from a time before registered owner’s use or

registration

may be limited to area of Australia

prior and continuous use – s124

Injunction Damages Account of profits (tho no damages/account of profits if mark

not used and mark removed – s127)

Groundless threat of legal proceedings – s129

Remedies – s126

Owner can give notice to Customs objecting to importation of goods infringing mark – s132

Customs may seize imported goods with a sign that is substantially identical or deceptively similar to a notified trade mark – s133

customs