#8566 - Trademarks Notes - Foundations of Intellectual Property

TradeMarks 1

Trademark notes 2

Overview 2

A Registration 2

1 Formalities 2

2. Reg possible if distinctive enough to meet one of the three categories in s 41(3), (5) or (6): structure discussed in Blount Inc v Registrar 4

Particular examples of signs to consider for capability to distinguish: 8

3. No Absolute grounds for refusal? Must refuse if the proposed trademark is not capable of distinguishing (s 41(2)); prohibited (s 39(1)); scandalous or contrary to law (s 42); likely to deceive or cause confusion (s 43) 16

4. No relative grounds for refusal: Registration must be refused if the proposed trademark conflicts with an existing trademark or application: s 44 20

Table of statute and then the outline for the following sections 20

Long summary of s 44 issues 21

Element 1#: Comparing Marks 22

Element 2#: Comparing Goods/Services 23

Note defence 1# Prior continuous use: s 44(4) 24

Note defence 2#: Honest concurrent use: s 44(3) 24

A. Grounds for opposition: ss 57, s 58, 58A, 59, 60, 61, 62A 25

B. Grounds for Revocation: s 92(4) – ((a) no intent to use + non-use; (b) non-use for 3 years) 26

C. Infringement: s 120 (use as a TM, in Australia, when substantially identical/deceptively similar marks, in relation to g/s of same description or closely related (s 120(1)-(2)) OR if it’s a well-known mark, is there dilution: s 120(3)) 28

D. Defences: ss 122 – 4 (good faith use; comparative advertising; can obtain reg in own name if got it; use by owner; use with consent; prior continuous use). 32

Note: Passing off’s Relationship with trade mark law: s 230 TMA 34

Cybersquatting: s 18, passing off and trademark issues 34

Trade Marks

-Introduction

-The Registration Process (incl. Authorship)

-Distinctiveness & other ' absolute' grounds for refusal of registration (looking at the TM applied for)

- 'Relative' Grounds of Refusal of registration (compared to other TMs)

-Opposition Proceedings

-Exploitation (rights of the TM holder) & Infringement

-Defences

Text Ch 17 – 17 pages

Text Ch 18 – 40 pages

Text Ch 19 – 28 pages

	Registration Formalities Registration is possible if the proposed trademark falls into categories in s 41(3), (5) or (6) – ie distinctive. No absolute grounds for refusal No relative grounds for refusal Grounds for opposition Grounds for Revocation Infringement Defences

	(i) Is it a sign: ss 6 and 17? (ii) Is it in the approved form? Reg 4.1- 4.2 (iii) Ownership? Ss 27(1)(a), 28 (iv) Is there use or an intent to use/assign the mark: s 27(1)(b) (v) Is there an adequate graphical representation of the sign? S 27(3)(a), 40 (vi) Are the goods/services nominated in classes: s 27(3)(b), reg 4.4
(i)	Under current legislation, almost anything can be ‘a sign’: sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent: s 10 (see further below under particular categories of signs distinguishing capabilities section) Examples of signs from s 10: Letter WORD/Name (in caps) (could include a slogan) Signature Numeral Device (ie logo) brand Heading Label Ticket Aspect of packaging shape Colour Sound Scent Could also include from TME: Hologram Gesture? Taste? Texture?
(ii) in approved form	3 options: (1) Hard copy (2) Online (3) ‘head start’ ON the form: Need: Applicant details (the owner of the trade mark) Address for service (eg owner of the TM, solicitor, TM attorney) Graphical representation – the box! List of goods/services – by class and description Sometimes Convention priority details Translation (language)… Transliteration (characters)
(iii) ownership	The owner: Ie for a mark that has been used prior to registration – is person who is using it – who would be bale to claim rights under passing off for a mark that hasn’t been used – it is the author of copyright in the work – ie the person who’s created it who is able to use it. If the person who owns the logo and who wants to use it is different: The person who can use it first – will be the owner of it If you register it when you aren’t the owner that’s a ground to be struck off.
(iv) intent to use	(iv) Is there use or an intent to use/assign the mark: s 27(1)(b)
(v) graphical rep	(v) Is there an adequate graphical representation of the sign? S 27(3)(a), 40 Particular difficulties with this for unusual marks: TME requirements – on part 21 – non-traditioanl signs: Req of the legislation that a trade mark be represented graphically (section 40). The representations must clearly demonstrate the nature of the mark, and show each feature clearly enough to permit proper examination (subregulation 4.3(8)). In particular, where the trade mark contains or consists of a sign that is a colour, scent, shape, sound or an aspect of packaging, or any combination of those features, the application for registration must include a concise and accurate description of the trade mark (subregulation 4.3(7)) TME 5.1 Representing sounds and scents Section 40 of the Act of the Act specifies that "an application for the registration of a trade mark must be rejected if the trade mark cannot be represented graphically". This requirement has the most impact in regard to sensory trade marks such as sound and scent trade marks because other kinds of signs are, by their very nature, graphical. As the words "represented graphically" have not been judicially defined in Australia, it is appropriate to take as their meaning the common, ordinary meaning they would be given by an ordinary person reading them - the so-called "golden rule" of statutory interpretation. The Macquarie Dictionary gives graphical as the equivalent of graphic, and defines “graphic” as follows: 2. pertaining to the use of diagrams, graphs, mathematical curves, or the like; diagrammatic. 3. pertaining to writing: graphic symbols. "Represent" is defined as: to serve to express, designate, stand for, or denote, as a word, symbol, or the like; symbolise. 2. to express or designate by some term, character, symbol or the like: to represent musical sounds by notes. Taken together these definitions make it fairly clear that to be expressed or represented graphically a trade mark can be represented by symbols in the form of diagrams and/or writing. However, as with shape and colour trade marks these representations must make it clear to the general public exposed to the trade mark application/registration, what the scope of the trade mark is. Specific issues for representing sounds and scents will be dealt with during the discussion of the particular kind of sign.
(vi)classes.	(vi) Are the goods/services nominated in classes: s 27(3)(b), reg 4.4

Intro overview	Issue: An application must be rejected if the TM is not capable of distinguishing the applicant’s g/s in respect of which the TM is sought to be registered (‘designated g/s’) from the g/s of other persons: s 41(2) Ground for rejection: registration may be opposed on this ground: s 57. Note: Definition of trade mark requires that it distinguishes the G/S in relation to which it is used from other G/s: s 17¹ Three grounds by which Registrar may decide that trade mark is capable of distinguish goods or services from other goods or services: Inherently adapted to distinguish (inherently distinctive): s 41(3): see Clark equipment – q is whether traders are likely in the course of their business without improper motive to desire to use the same mark or some mark nearly resembling it upon or in connection with their own goods. Inherent capacity to distinguish? If the trade mark is to some extent inherently adapted to distinguish, but the Registrar can’t decide on that basis alone that it is so capable of distinguishing, consider whether the evidence or circumstances establish that it does or will distinguish the g/s?: s 41(5) Actually distinctive due to use? If not inherently adapted to distinguish at all, has it acquired distinctiveness, such that it is capable of distinguishing? S 41(6) But if it is not capable of distinguishing the goods or services, then the application must be rejected: s 41(2).
(1) Inherently adapted to distinguish the g/s from other g/s of traders?	1. Is it inherently adapted to distinguish (ie inherently distinctive)? S 41(3) (it is unlikely to be so if other traders are going to want to use it for the same purposes):Blount v Registrar of Trade Marks; Clark Equipment v Registrar of TM Issue dependent on 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: Clark (consider whether the mark, apart from the effects of registration, is such that by its use the applicant is likely to attain its object of thereby distinguishing its goods from others: Clark) Rationale: disinclination to allow any person to obtain a monopoly in what others may legitimately desire to use. Structure of s 41: Under s 41(3) – the Registrar must first consider whether the TM is inherently adapted to distinguish the designated goods or services from the goods or services of other persons. If the TM is inherently adapted to distinguish, then:...

Intro overview

Issue: An application must be rejected if the TM is not capable of distinguishing the applicant’s g/s in respect of which the TM is sought to be registered (‘designated g/s’) from the g/s of other persons: s 41(2)

Ground for rejection: registration may be opposed on this ground: s 57.
Note: Definition of trade mark requires that it distinguishes the G/S in relation to which it is used from other G/s: s 17¹

Three grounds by which Registrar may decide that trade mark is capable of distinguish goods or services from other goods or services:

Inherently adapted to distinguish (inherently distinctive): s 41(3):
1. see Clark equipment – q is whether traders are likely in the course of their business without improper motive to desire to use the same mark or some mark nearly resembling it upon or in connection with their own goods.
Inherent capacity to distinguish? If the trade mark is to some extent inherently adapted to distinguish, but the Registrar can’t decide on that basis alone that it is so capable of distinguishing, consider whether the evidence or circumstances establish that it does or will distinguish the g/s?: s 41(5)
Actually distinctive due to use? If not inherently adapted to distinguish at all, has it acquired distinctiveness, such that it is capable of distinguishing? S 41(6)

But if it is not capable of distinguishing the goods or services, then the application must be rejected: s 41(2).

(1) Inherently adapted to distinguish the g/s from other g/s of traders?

1. Is it inherently adapted to distinguish (ie inherently distinctive)? S 41(3) (it is unlikely to be so if other traders are going to want to use it for the same purposes):Blount v Registrar of Trade Marks; Clark Equipment v Registrar of TM

Issue dependent on 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: Clark (consider whether the mark, apart from the effects of registration, is such that by its use the applicant is likely to attain its object of thereby distinguishing its goods from others: Clark)
Rationale: disinclination to allow any person to obtain a monopoly in what others may legitimately desire to use.

Structure of s 41:

Under s 41(3) – the Registrar must first consider whether the TM is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
If the TM is inherently adapted to distinguish, then:...

#8566 - Trademarks Notes - Foundations of Intellectual Property

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