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INTELLECTUAL PROPERTY > TRADEMARKS > Flashcards

TRADEMARKS Flashcards

1
Q

TRADEMARK REQUIREMENTS

A
  • Must be registered
  • Principal function as “Badge of origin”
  • Function of distinguishing between items.
  • Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 at 65; JT International SA v Cth (2012) 97 IPR 321 at [68]; E & J Gallo
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2
Q

WHY PROTECT TRADEMARKS

A
  • Balances the interests of consumers and traders
     Reduces search costs for consumers;
     Provides incentives to maintain consistent quality; and
     Provides incentives to invest in branding.
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3
Q

WHAT MUST A TM APPLICATION INCLUDE

A
  • the name and contact details of the applicant
  • a representation of the trade mark - see our images requirements for eServices
  • nomination of the relevant classes - know what you are offering as goods or services
  • a description of the goods and/or services to which it will apply
  • a translation of any part of your mark that is another language
  • the required fee
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4
Q

TRADEMARKS V BUSINESS NAMES

A
  • Distinguish trade marks from:
  • Business names
  • Company names
  • Domain names
  • Registration of business, company, domain names does not confer property rights or rights to use the name as a TM, or stop others from registering it as a TM
  • Illustrated by Nintendo v Care [2000] FCA 1538
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5
Q

WHO MAY APPLY FOR A TM?

A

S 27 (1) -
(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:
(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

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6
Q

what is a TM defined as

A
  • Trade Marks Act 1995, s 17
  • TM defined as:
     “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 another person”
  • Note presumption of registrability under s 33
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7
Q

Elements of TM registrability

A
  1. sign
  2. used or intended to be used
  3. distinguish in the course of trade
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8
Q

sign

A
  • “Sign” s 6 TMA - includes any of the following, alone or in combination:
     a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”
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9
Q

what is registrable

A
  • must be able to be represented graphically (s 40)
  • Shape, colour are now registrable
     Inclusion of “shape” not intended to produce a radical shift in the law: Kenman Kandy
     BUT the goods themselves cannot be the trade mark
  • The shape cannot serve a function in the good. It must be a distinctive feature of the goods design (like to make it recognizable not to make the good work).
  • Does it have a function or is it purely aesthetic.
     Is there separate distinctive identity?
  • Koninklijke Philips Electronics v Remington Products Australia (2000): three headed shape of rotary shaver - NO
  • Kenman Kandy v Registrar of Trade Marks (2002): six legged millennium bug candy - YES
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10
Q

sounds - registrability as a sign

A

 The sound itself can be registered but
* Note s 40 requires graphical representation
 E.g. 20th Century Fox introduction (891830)
 E.g. Intel’s ‘five tone audio progression of the notes D flat, D flat, G flat, D flat, and A flat…’ (1077876)

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11
Q

scents registrability as a sign

A

 Perfumes?
 Have to be described.
 Also cannot be a part of the function but it aesthetic which can make it difficult
 Not really taken up on aus register

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12
Q

used or intended to be used

A
  • s 27(1)(b) requires use / intention to use as a trade mark before registration
     Prevents squatting on valuable marks
     Satisfied by prospective licensed/assigned use
  • Bona fide use required: Imperial Group Ltd v Philip Morris [1982] FSR 72
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13
Q

distinctive

A
  • Must be capable of distinguishing goods or services
    1. Inherently adapted to distinguish
    2. Acquired distinctiveness
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14
Q

onus of distinctiveness

A
  • The onus – framed negatively.
     Raising the Bar Act - new s 41, less demanding standard
  • Effective 15 April 2013, to applications filed on or after that date
     Does not alter the key concepts, but establishes a presumption of registrability
  • i.e. applicant’s mark taken to be ‘capable of distinguishing’ unless the presumption is rebutted on the balance of probabilities
     Requirements framed negatively, onus on Registrar to find not capable of distinguishing
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15
Q

inherently adapted to distinguish

A

 classic explanation set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514–515:
* The question is “whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark or some mark nearly resembling it, upon or in connection with their own goods”
 In other words, are they descriptive?
* s 41, Note 1:
Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.

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16
Q

examples of TMs considered sufficiently inherently adapted to distinguish

A

 SURNAMES that are not commonplace
 PERSONAL AND COMPANY NAMES that are not commonplace
 SUPERSEDED GEOGRAPHIC NAMES that have no connection with the goods such as BYBLOS (class 25) which is the ancient name for the Lebanese town of Jubayl
 WORLD OR CITY MARKS which contain a reference to an attribute of the goods or services such as SPEED WORLD, COMFORT CITY
 MOST COINED WORDS such as SURELOCK (Class 12), CLICKFAST (Class 6), TRAKGRIP (Class 12)
 EXPRESSIONS not in common use in respect of the goods and/or services: OFF THE WALL (Class 25), CHOOKEY POOH (Class 1), THE COOL CONDITIONERS (Class 31), MUSCLE MACHINE (Class 28), PORKY BITS (Class 29)
 UNLIKELY GRAMMATICAL CONSTRUCTIONS particularly those that incorporate a misspelling such as SHOPRITE (Class 42), BESAFE (Class 9), BEEF GRO (Class 5), GROWOOL (Class 1), SAFEVUE (Class 12), BI-LO (Class 42)
 SLOGANS with only indirect reference such as COLOUR ME BEAUTIFUL (Class 3), PARDON OUR SCAFFOLDING (Class 6)

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17
Q

acquired distinctiveness

A

 Distinctiveness vs public recognition
* Unilever Plc’s TM Applications [2002] EWHC 2709 (Wall’s Vienetta)
o Cant just show general recognition.
o Have to show genuine recognition that the shape is being used to identify/distinguish the product.
 ‘Whopper’ TM 751333
 ‘App Store’ TM 1666274; 1693917
 Geographic names – primary and obvious meaning of the word supplies a reference to locality
* No express prohibition in 1995 Act – but could be non-distinctive
* Examples:
o Oxford University Press
o Oregon for power tool accessories
o Colorado
 Colours

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18
Q

collective TMs

A

(Pt 15)
- Registration by a group or association
- a sign used to distinguish the goods and/or services of its members from the goods or services of non-members.
- application must be made by the association to which the mark belongs: s 164
- collective marks cannot be assigned: s 166
- All members of association may use mark in accordance with rules of the association (if any): s 165

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19
Q

CERTIFICATION TMs

A

(Pt 16)
- used by the owner to certify that goods are of a certain quality, accuracy, origin, material or mode of manufacture : s 169
- Australian Competition and Consumer Commission (ACCC) responsible for reviewing and approving certification rules
- Trade Marks Office ensures the application meets the other requirements of registrability
- The remedy for infringement limited to an injunction; it does not include damages or an accounting for profits: s 126;
* note also s 53(c) of the Trade Practices Act - prohibits false representations about the “sponsorship, approval, performance, characteristics, accessories, uses or benefits” of goods or services.

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20
Q

scandalous marks

A
  • Scandalous marks: s 42(a)
  • ‘scandalous indicates the causing of a significant degree of disgrace, shock or outrage’ – crude / bad taste insufficient
     Cosmetic, Toiletry and Fragrance Assoc Foundation v Fanni Barns (2003) 57 IPR 594, per Hearing Officer Williams
  • Kuntstreetwear’s TM Application (2007) 73 IPR 438
     Cf FCUK – acronym, not phonetically like swear word
  • ‘Redskins’
     Blackhorse v Pro-Football, Inc. (2014)
  • ‘The Slants’
     Matal v. Tam, 582 U.S. ___ (2017)
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21
Q

use contrary to law

A
  • Use contrary to law: s 42(b)
  • Infringement of copyright
  • Breach of contract
  • Misleading or deceptive conduct in T/C: ACL s 18
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22
Q

exceptions

A
  • Honest concurrent users: s 44(3)
     If the Registrar in either case is satisfied:
    (a) that there has been honest concurrent use of the 2 trade marks; or
    (b) that, because of other circumstances, it is proper to do so;
    the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
     Criteria to be taken into account include:
  • the degree of confusion likely between the trade marks in question;
  • whether instances of confusion have in fact occurred;
  • the honesty or otherwise of the concurrent use;
  • the extent of use in duration, area and volume; and
  • the relative inconvenience that would be caused to the respective parties if the applicant’s trade mark should be registered or not registered.
    o Lord Tomlin in Pirie’s Application (1933) 50 RPC 147; John Fitton & Company Limited’s application for a trade mark (1949) 66 RPC 110
     Points not exhaustive – any relevant circumstance may be considered
  • Electrix Ltd.’s application [1957] RPC 369 Wynn-Parry J at 379
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23
Q

prior continuous use

A

s 44(4), 58A
 S 44(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.

24
Q

opposition to registration

A
  • Registration of TM may be opposed under s 52
  • Same grounds as for rejection: s 57
  • See Part V, Div 2 – other grounds:
    1. Applicant not owner of trade mark
  • 58A. Opponent’s earlier use of similar trade mark
    1. Applicant not intending to use trade mark
    1. Trade mark similar to trade mark that has acquired a reputation in Australia
    1. Trade mark containing or consisting of a false geographical indication
    1. Application etc. defective etc.
  • 62A. Application made in bad faith
25
Q

ELEMENTS OF TRADEMARK INFRINGEMENT

A

120 – Use, as a trade mark, a sign that is:
* Substantially identical; or
* Deceptively similar
- To a registered mark, in respect of:
* The same goods or services;
* closely-related goods or services; or
* Any goods or services, but the registered mark is ‘well known’.
 If its well known the last element may be made out.

26
Q

SUBSISTENCE

A
  • Section 44
     Substantially identical or deceptively similar to other marks: s 44(1)
  • Marks in respect of similar goods or closely related services: s 44(1)(a)(i)
     Same test (elements 2 and 3) as s 120 on infringement
27
Q

USE AS TM

A
  • Use as a ‘badge of origin’ – indicating a ‘connection in the course of trade’ between the Defendants (Df) and the product in question
    • Q not whether Df’s use of the mark indicates connection with registered owner: Edgetec International v Zippykerb (NSW) (2012) 98 IPR 1 at [22] per Reeves J
  • Cf Descriptive use
    • Pepsico Aus v Kettle Chip Co (1996) 33 IPR 161 – “kettle cooked” vs KETTLE mark
  • Descriptive use vs TM use not clear cut
    • Aldi Stores v Frito Law Trading Co (2001) 54 IPR 344 at [23]:
     Where the word has … a clear meaning in ordinary use, the question will be much more difficult as the word or combination of words may either have taken on a secondary meaning indicating the origin of goods or may simply convey an ordinary meaning…It is well established that there is not a true dichotomy between words capable of being used as a badge of origin and words that are descriptive.
28
Q

DESCRIPTIVE USE V TM USE NOT CLEAR CUT

A
  • Aldi Stores v Frito Law Trading Co (2001) 54 IPR 344 at [23]:
     Where the word has … a clear meaning in ordinary use, the question will be much more difficult as the word or combination of words may either have taken on a secondary meaning indicating the origin of goods or may simply convey an ordinary meaning…It is well established that there is not a true dichotomy between words capable of being used as a badge of origin and words that are descriptive.
29
Q

OBJECTIVE ASSESSMENT OF PURPOSE AND NATURE OF USE - RELEVANT FACTORS

A
  • Positioning of the sign
  • Font type / colour
  • Size or the words / letters
  • How to sign is applied to the advertising in question
     Edgetec International v Zippykerb (NSW) (2012) 98 IPR 1, [22]
30
Q

S 123 DEFENCE

A

Exhaustion of rights
* Relevant to:
 Second-hand (used) goods
* E & J Gallo Winery v Lion Nathan Aus (2010) 241 CLR 144 at [34]
 Parallel imports
* Transport Tyre Sales v Montana Tyres Rims & Tubes [1999] FCA 329
 Altered second-hand goods?
* E.g. Revise/Levi’s case
o Wingate Marketing Pty Limited v Levi Strauss [1994] FCA 1001 – see Sheppard J at [87]; Gummow J [68]-[76]
 Is Revise using Levis as a TM? Court said no. Revise was their TM, a characteristic of those which indicated the original source of the product, and they were adding additional parts.
* Note s 121
o Notice on the goods.
o Generally not going to be an issue.

31
Q

DOMAIN NAMES

A
  • Using a TM as a domain name, similar to using those words on the front of a shop to indicate the goods and services being sold.
     Badging function.
  • Edgetec International v Zippykerb (NSW) (2012) 98 IPR 1
  • Solarhut Industries v Solar Shop (2011) 92 IPR 165 (Solarhart case)
     Just because you register a domain name does not mean you actually using as a TM.
  • Mantra Group v Tailly (No 2) (2010) 86 IPR 19
  • Google AdWords keyword searches?
     Sponsored search results.
     Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255
  • Can google be liable for infringing TM through this practice?
    o Liability of google? They aren’t the ones buying?
  • Keyword isn’t obvious to consumer as TM use.
  • Difficult to find it is being used as a TM.
32
Q

substantially identical

A
  • Side-by-side comparison, differing only in non-essential aspects
  • Shell Co of Australia v Esso Standard Oil (Aust) (1963) 109 CLR 407
     To consider total impression in the relevant context – not a point in time: Kitto J, [3]-[4]
     Cant just point to a specific point in time or element that is identical.
  • Coca Cola v All-Fect Distributors (1999) 96 FCR 107; [1999] FCA 1721
     Comparing an actual coke bottle to the lolly.
     Not substantially identical.
  • Register of TM v Woolworths Ltd (1999) 45 IPR 411
33
Q

DECEPTIVELY SIMILAR

A
  • TM Act, s 10 - Definition of deceptively similar
  • “… so nearly resembles that other trademark that it is likely to deceive or cause confusion.”
  • tested by the overall impression of the marks based on recollections and impressions possessed by persons of ordinary intelligence and memory:
  • Shell Co v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
  • Mere possibility of confusion is not enough – there must be a real, tangible danger of it occurring
  • But sufficient if “a number of persons will be caused to wonder” whether the two products are from the same source
     Southern Cross Refrigerating v Toowoomba Foundry [1954] HCA 82; (1954) 91 CLR 592 at 595, 608
34
Q

SAME/SIMILAR/CLOSELY RELATED G/S

A

s 120 (2) A person infringes a registered trade mark 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:
(a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
(b) services that are closely related to registered goods; or
(c) services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
(d) goods that are closely related to registered services.
- Q not based on administrative classification in Regulations
* Phrase in 1955 Act “goods of the same description” described as “a term of art”

35
Q

THREE PRINCIPLE FACTORS OF SAME/SIM/CR

A
  1. Nature of the goods, including their origin and characteristics
  2. Uses of the goods, including their purpose; and
  3. Trade channels though which they are bought and sold
    * McCormick & Co Inc v McCormick [2000] FCA 1335; following HCA in Southern Cross (1954)
36
Q

SAME/SIM/CR Factors in Southern Cross case (1954)

A
  • the nature and characteristics of the goods,
  • their origin,
  • their purpose,
  • whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses,
  • whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and
  • whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.
37
Q

WELL KNOWN

A
  • Well-known marks:
  • Protection from “dilution” of TM?
  • Infringement by dilution does not require proof of a likelihood of confusion - what is protected is the selling power of the mark by prohibiting uses that would dilute its distinctiveness or tarnish the associations which it evokes:
     Campomar Sociedad Limitada v Nike International Ltd 202 CLR 45; [2000] HCA 12 at [42] (obiter)
38
Q

S 120(3)

A
  • s120 (3) A person infringes a registered trade mark if:
    (a) the trade mark is well known in Australia; and
    (b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
    (i) goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered registered services); or
    (ii) services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and
    (c) because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and
    (d) for that reason, the interests of the registered owner are likely to be adversely affected.
39
Q

ELEMENTS OF WELL KNOWN INFRINGEMENT

A
  • Elements:
    1. well-known in Australia
    2. uses as a TM substantially identical; or
    3. deceptively similar because TM is well known
    4. indicating a connection
    5. interests of registered owner likely to be adversely affected.
40
Q

WELL KNOWN IN AUSTRALIA

A

must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason’: s 120(4)

41
Q

INDICATING A CONNECTION

A
  • Interlocutory injunction in Nintendo Co Ltd v Care [2000] FCA 1538 (Nintendo well-known)
  • Default judgment in Virgin Enterprises Ltd v Klapsas [2001] FCA 1502 (Virgin (as in the airline) well-known).
42
Q

OWNERS INTEREST ADVERSELY AFFECTED

A
  • s 120(3)(d) for that reason, the interests of the registered owner are likely to be adversely affected.
  • Tarnishment?
  • Consider if being used “as a TM”
  • “Trademarks are often selected for their effervescent qualities, and then injected into the stream of communication with the pressure of a firehose by means of mass media campaigns. Where trademarks come to carry so much communicative freight, allowing the trademark holder to restrict their use implicates our collective interest in free and open communication.”
  • HCA in Campomar Sociedad v Nike [2001] HCA 12 at [46] quoting Judge Kozinski, “Trademarks Unplugged”, (1993) 68 New York University Law Review 960 at 973.
  • Culture jamming
  • Might be using their brand negatively but if that person is not using it as a TM then the companies TM is not being infringed.
  • AGL Energy Limited v Greenpeace Australia Pacific Ltd [2021] FCA 625
     Greenpeace used the AGL logo satirically about pollution.
     Not one seeing it would’ve believed it was actually produced by AGL.
43
Q

DEFENSIVE MARKS

A
  • Some goods might cause confusion/indicate a connection is used in another goods and services.
  • s 185 (1) may be registered “If, because of the extent to which a registered trade mark has been used in relation to all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark..”
  • Does not require use or intention to use the trade mark in relation to the goods or services for which it is registered (s 185(2)).
44
Q

Defences

A
  • Acts that do not infringe a regd TM (ss 122, 124) include:
  • the use in good faith of a person’s own name, the name of his or her place of business, or the name of the place of business of any of his or her predecessors in business (s 122(1)(a));
  • the use in good faith of a description of the character or quality of one’s goods or services (s 122(1)(b));
  • the use in good faith of a trade mark to indicate the intended purpose of goods (in particular as accessories or spare parts) or services (s 122(1)(c));
  • the use of the trade mark in good faith for the purposes of comparative advertising (s 122(1)(d);
  • the use of a trade mark in relation to goods which the person has continuously used as a trade mark from a date before the trade mark was registered by someone else (s 124(1)). [ i.e. prior continuous use]
45
Q

s 88

A

Rectification by amendment or cancellation on
(a) any of the grounds on which the registration of the trade mark could have been opposed under this Act;
(b) an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation; …

46
Q

s 92

A

removal for non-use

47
Q

s 87

A

loss of exclusive use of mark
* (i.e. mark has become generic)

48
Q

removal for non use

A
  • Registrar may remove a TM from the register if it can be shown that:
  • TM registered with no genuine intention that it be used or
  • TM has not in fact been used for a continuous period of 3 years: ss 92 – 105
  • Does not apply to defensive trade marks
49
Q

assignment

A
  • TM may be assigned
  • Cf certification marks (subject to ACCC); collective marks (not allowed)
50
Q

licencing

A
  • Licensing – authorised use must be under owner’s control
  • Rationale - Role as indicators of product quality, not just source
51
Q

control and licencing

A
  • includes quality control (s 8(3)) and financial control over trading activities (s 8(4))
     Parent company over subsidiary: Pioneer Kabushiki Kaisha v Reg of TM (1977) 137 CRL 670 at 683-4
     Revocable authority: Henschke (1999) 47 IPR 63; appeal (2000) 52 IPR 42
  • They could revoke it at any time.
  • This wasn’t sufficient.
  • Not just any licence will do must actually be exercising some element of control.
     Consultancy arrangement to monitor quality: E&J Gallo Winery (2010) 241 CLR 144
  • Substantive control, not notional control: Lodestar Anstalt v Campari America LLC [2016] FCAFC 92 (28 June 2016)
  • This is in relation to getting it cancelled if your not controlling it.
52
Q

marks becoming generic

A
  • S 24 - mark “has become generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service”
  • s 87 – mark is the only commonly known way to describe or is the name of formerly patented article, substance or process
  • Consequence
  • Exclusive rights taken to have ceased from period determined by court / if name for patented article or process, then 2 years after patent expired
  • Amendment or cancellation under s 87
53
Q

civil remedies

A
  • Civil (s 126)
  • Injunction
  • Damages or account for profits
  • Additional damages (introduced by Raising the Bar Act)
  • Disposal / delivery up of goods
54
Q

criminal provisions

A
    1. Falsifying or removing a registered trade mark
    1. Falsely applying a registered trade mark
    1. Making a die etc. for use in trade marks offence
  • 147A. Drawing etc. trade marks for use in offence
  • 147B. Possessing or disposing of things for use in trade marks offence
    1. Goods with false trade marks
    1. Aiding and abetting offences
    1. False representations regarding trade marks
55
Q

groundless threats

A
  • s 129
  • If a person threatens to bring an action for infringement, a person aggrieved by the threat may apply for:
     A declaration that the threat is groundless;
     An injunction restraining Df from continuing to make the threat;
     Damages sustained because of Df’s conduct
56
Q

GEOGRAPHIC INDICATORS TRIPS

A
  • TRIPS Arts 22
  • GIs defined as indications that identify a good as originating in the territory of a Member state, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.

INTELLECTUAL PROPERTY (5 decks)

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