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Law Notes Foundations of Intellectual Property Notes

Trademarks Notes

Updated Trademarks Notes Notes

Foundations of Intellectual Property Notes

Foundations of Intellectual Property

Approximately 187 pages

These notes set out the relevant legal principles, and provide succinct fact summaries to demonstrate how those legal principles have been applied in various cases.

At the beginning of each document on each topic, there is a table of contents (hyperlinked so you can navigate easily through the document), and also an 'exam checklist', which you can use during revisions or exams to remind yourself of the key issues you have to address.

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TradeMarks

Table of Contents

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

Trademark notes

Overview

  1. Registration

    1. Formalities

    2. Registration is possible if the proposed trademark falls into categories in s 41(3), (5) or (6) – ie distinctive.

    3. No absolute grounds for refusal

    4. No relative grounds for refusal

  2. Grounds for opposition

  3. Grounds for Revocation

  4. Infringement

  5. 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

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;...

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