Trade Marks

1. Trade Marks LPAB Winter Session Therese Catanzariti

2. origin • 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 • badge of origin • badge of control • zeitgest / image of brand

3. registration process • IP Australia application • Designated classes of goods and services • (Nice Classification – 45 classes) • designated goods in designated class • designated services in designated class • IP Australia examination =>acceptance or rejection • opposition • IP Australia hearing • registration • rectification

4. trade mark – s17 • 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

5. AG(NSW)vBrewery Employees Union • workers' trade 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

6. Sign – s6 • letter • word • name • signature • Numeral • device • brand • heading • label • ticket • aspect of packaging • shape • colour • sound or scent.

7. Nokia ringtone Intel Jingle

8. used or intended to be used • 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

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

10. to distinguish • Shorter Oxford Dictionary 1 To divide or separate; to class, classify 2 To mark as different or distinct; to separate Roget’s Thesaurus difference, discrimination, severalise, separate these are X goods, not Y goods or Z goods.

11. dealt with or provided by a person • 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

12. 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 • A brand owner wants sign to yell, unequivocally • These goods are different from other goods • These goods are MY goods

13. Smith Kline v Registrar of TM • 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 vStirling Winthrop • Coloured capsules could be registerable • even though trademark covered whole visible surface

14. Koninklijke Philips Electronics NV v Remington Products Australia Phillips registered triple-headed shaver Remington copied the shaver Remington NOT using as a trade mark functional shapes were incapable of acting as trade marks competitors should be free to use shapes that were attractive and popular with the buying public.

15. Kenman Kandy • “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

16. Coca Cola v All-Fect Manufacturers • 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.

17. ChocolaterieGuylianv Registrar • 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

18. reject application • 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

19. not distinguish goods/services-s41 • Inherently adapted to distinguish • to some extentinherently adapted combination of • use and intended use • extent inherently adapted • other circumstances • not inherently adapted to distinguish but use before filing date does in fact distinguish

20. Section 41 (note – 2013 reforms) • must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services from other person’s goods and services • not capable of distinguishing the designated goods • not to any extent inherently adapted to distinguish AND not used to such an extent that in fact distinguishes • to some extent, but not sufficiently, inherently adapted to distinguish AND will not distinguish having regard to • Extent to which inherently adapted • Use or intended use • any other circumstances

21. inherently adapted • Inherently adapted in context • designated goods and services • people in the relevant market • 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 • “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

22. not inherently adapted if descriptive–n 1 • 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 indication COLORADO - Blount Inc v Registrar of Trade Marks NOKIA – which came first, river town or company 3M – Minnesota Minerals and Mining • qualities CRANBERRY CLASSIC - Ocean Spray Cranberries v Registrar TM • Intended purpose TENNIS WAREHOUSE - Sports Warehouse v Fry Consulting

23. inherently adapted • does not need to absolutely unsuggestiveof qualities of the goods provided not a normal description • may be inherently adapted if indirect or allusive Mark Foy v Davies Coop – TUBHAPPY • NOT if misspelling or phonetic equivalent of descriptive • NOT if contraction of two or more descriptive words Howard Auto Cultivators v Webb Industries - ROHOE

24. inherently adapted • Invented words • Unrelated words • APPLE for computers • CATERPILLAR for shoes • part of a mark or word/device mark rather than word itself provided that device is more than stylised letter

25. Crazy Ron’s Communications vMobileworld 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

26. contrastBlount 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

27. contrastBayer PharmavFarbenfabriken Bayer • 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’

28. likely deceive or cause confusion – s43 • because of some connotation • that trade mark has • that sign contained in trade mark has • Big Country Developments v TGI Friday's Inc confusion did not depend upon some connotation in the registered mark, but because TGI Friday using a similar name – not covered by s43

29. McCorquodalevMasterton • 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

30. s44 • 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)

31. substantially identical - s44 • Shell Co Australia vEsso 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 • Solahartv Solar Shop • SOLAHART not substantially identical SOLARHUT

32. deceptively similar – s44 • Deceptively similar if so nearly resembles that other trade mark that it is likely to deceive or cause confusion’ – s10 • Crazy Ron’s vMobileworld • 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

33. Effem Foods vWandella Pet Foods • 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

34. similar goods / closely related services • 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

35. similar goods • 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

36. closely related services • 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

37. exception – honest concurrent use – s44(3) • (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.

38. McCormick v McCormick • 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”

39. exception- prior use – s44(4) • mark is substantially identical or deceptively similar to previously registered mark • BUT applicant used before the previously registered mark was registered Applicant’s use Other Owner’s registration Applicant’s application

40. oppose registration • 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

41. applicant not owner – s58 • 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”

42. 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

43. opponent’s earlier use – s58A • 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 Other Owner’s use Applicant’s use Other Owner’s registration Applicant’s application

44. not intending to use – s59 • 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 NetworkGP • not just non-use – need to prove no intention

45. Aston vHarlee Manufacturing Co • 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”

46. ghost marks • 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)

47. Imperial Group Limited v Phillip Morris • IG couldn’t register MERIT – descriptive • IG registered NERIT as defensive mark to prevent others using MERIT • no genuine intention to use NERIT

48. similar to mark with reputation – s60 • 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

49. McCormick & Company Inc v McCormick • reputationmeansthe recognition of the marks by the public generally. • McDonalds v Bowditch • GOLDEN BOOMERANGS • McDonalds vMacri 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

50. application made in bad faith – s62A • 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