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Trademarks Notes

Law Notes > Foundations of Intellectual Property Notes

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TradeMarks Table of Contents

Trade Marks Text Ch 17 - 17 pages
Introduction
The Registration Process (incl. Authorship)
Distinctiveness & other ' absolute' grounds for refusal of registration Text Ch 18 - 40 pages (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 19 - 28 pages

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Trademark notes Overview

A. Registration a. Formalities b. Registration is possible if the proposed trademark falls into categories in s 41(3), (5) or (6) - ie distinctive.

B. C. D. E.

c. No absolute grounds for refusal d. No relative grounds for refusal Grounds for opposition Grounds for Revocation Infringement Defences

A Registration 1 Formalities (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

(ii) in

2 Could also include from TME:

* Hologram

* Gesture?

* Taste?

* Texture?
3 options: (1) Hard copy (2) Online (3) 'head start'

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3 approved form

(iii) ownership

(iv) intent to use (v) graphical rep

6 Trademarks 3 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 o Convention priority details o Translation (language)...
o Transliteration (characters) 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) 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 Particular difficulties with this for unusual marks: TME requirements - on part 21 - nontraditioanl 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 socalled "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

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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

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 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 17 1 Three grounds by which Registrar may decide that trade mark is capable of distinguish goods or services from other goods or services:

1. Inherently adapted to distinguish (inherently distinctive): s 41(3): a. 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.

2. 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)

3. 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)

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

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

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: the Registrar can conclude that it is capable of distinguish the designated goods or services: and therefor the application does not have to be rejected under s 41(2) - ad so the Registrar will be required by the terms of s 33(1) of the Act to accept the application (if compliance

1 A TM is a sign used, or intended to be used, to distinguish g/s 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: s17 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 6.

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with other formalities + other requirements. Note 1 in s 41(6): 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

Examples of what is inherently adapted to distinguish:

* Unusual/personal Names o Names that are not commonplace (Common surnames - very difficult to register). o Personal and company names that are not commonplace

* Names represented in a 'special or particular manner'.

* Geographical names unlikely to have a present connection with the goods or services o Eg: Superseded geographical names that have no connection with the goods o World or city marks which contain a reference to an attribute of the goods or services o (but not signs that are used to indicate the geographical origin of the g/s).

* Phonetic equivalents of English or foreign words which have some reference to the goods or services

* Invented words / coined words (eg LOCAJ, Exxon).

* Expressions not in local common use in respect of the g and/or services

* Expressions using suggestive or emotive words - eg 'fortuitous cat'

* Unlikely grammatical constructions slogans with only indirect reference.

* 'Special representations' (from textbook) o 'Fanfold' in ordinary block type in the form of a slight arch (which was a common method at the time) and having a faint scroll underneath - not distinguish the applicant's stationery goods: Fanfold o Mark consisting of word 'bayer' printed in roman capital letters horizontally and vertically intersecting at the letter y and enclosed within the circl - no greater aptitude than has the name itself for distinguishing the proprietor's goods from those of other people who happen to be known as bayer: Bayer Pharma o Similarly 'OREGON' in an oval surround, not sufficient to take trade mark out of ambit of bayer: Blount Inc o If the special character of the representation is the sole basis of establishing capability to distinguish, it is that aspect and that alone which is accorded protection. - eg individuals called john smith can obtain protection for their signature but not for the name of john smith: Application of R J Lea Example from class: 'Exxon' - yes inherently adapted to distinguish.

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2. If to some extent it is to some extent inherently adapted to distinguish - but unclear whether it is so capable of distinguishing
- either (a) WILL it distinguish or (b) does it in FACT distinguish?

2. 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) a. S 41(5) applies to trade marks that are to some extent inherently adapted to distinguish the designated g/s from others. b. Two options: either (a) the TM DOES in fact distinguish the g/s (it has acquired distinctiveness) OR (b) it WILL distinguish the g/s (capacity to acquire distinctiveness). Factors to consider in determining whether or not the trade mark is capable of distinguishing the designated goods under s 41(5)(a):

* The extent of inherent adaptability:

* The use or intended use of the trade mark by the applicant

* Any other circumstances Example:

* 'Harry Potter' - registrable: Fact that there is only a small chance of the mark being used by a person named Harry Potter, the volume of sales of Harry Potter women's clothing before the priority date, and the closeness of the relevant product fields, I am satisfied that s 41(5) is satisfied: Time Warner. The statute: (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: (a) the Registrar is to consider whether, because of the combined effect of the following: (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services; (ii) the use, or intended use, of the trade mark by the applicant; (iii) any other circumstances; the trade mark does or will distinguish the designated goods or services as being those of the applicant; and (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services---the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services---the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons. Examples from the TB: [18.14]

* example - 'Fine form' for lingerie (Gazal), 'CleannSoak' for contact lens preparation (Re an Application by Allergan ) and 'the Sound' with a musical

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6 Trademarks 7 notation incorporated into the S (Re Application by Eltham woodwind) registered by reference to a combination of partial inherent capability to distinguish and actual use.

3. If not inherently adapted to distinguish at all, has it in FACT acquired distinctive
ness?

3. 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)

* Test: Applicant must establish that because of the extent to which the applicant has used the TM before the filing date it does distinguish the designated g/s as being those of the applicant: s 41(6)(a). If not - then it is not capable of distinguishing: s 41(6)(b).

* This is a question of fact: Blount Inc

* Does not involve consideration of whether the TM is one which other traders are likely to use: eg irrelevant in Blount whether 'Oregon' is a word which other traders are likely in the ordinary course of their business and without any improper motive to desire to use upon or in connection with their goods. Such a question is whether the word is adapted to distinguish one's goods from the goods of others - not whether the TM does in fact distinguish: Blount

* 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 Notes:

* Some words are so descriptive that no amount of acquired distinctiveness will make them capable of distinguishing: eg the names of large industrial towns or districts: AG notes Examples from textbook:

* 'Whopper' and 'Oxford' trade marks are registered under s 41(6).

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