Law Notes > Intellectual Property 2 (Trade Marks) Notes
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LAWS3248: Intellectual Property 2 – Trademarks
Summary Notes
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Passing Off and Consumer Protection Legislation 8
Tests for passing off and contravention of consumer protection legislation 8
Class 2 – Passing Off and Consumer Protection Legislation (Part 2) 16
Misrepresentation or misleading or deceptive conduct 19
The relevant standard: Is mere confusion sufficient 20
Types of misrepresentation: Origin 21
Misrepresentations involving descriptive words 21
Misrepresentations involving copying descriptive get-up 21
Misrepresentations involving copying product appearance 22
Types of misrepresentation: Quality 23
Types of misrepresentation: Inverse Passing off 24
Types of misrepresentation: Sponsorship, endorsement or affiliation 25
Application for registration 33
Registration, renewal and loss of rights 35
Examination, opposition and cancellation grounds 35
Assessing inherent adaptation to distinguish: Particular examples 38
Conflict with geographical indication 61
Registered Trade Marks: Infringement, Defences, (Loss of Rights and Exploitation) 61
Class 6 – Defences to Infringement; Loss of Rights and Exploitation 71
Use of a person’s place of business 71
Consent of the registered owner 72
There are two main legal mechanisms by which the law provides legal protection to traders in respect of the marks and other indicia they use to distinguish their G&S from other traders
The first is the tort of passing off, as supplemented by provisions of consumer protection legislation – these prohibit parties from engaging in misrepresentations or misleading and deceptive conduct by adopting other traders signs/indicia
The second is the system of registered trade mark protection under the Trade Marks Act 1995
Origins of Passing off
The tort of passing off has its origins in the British common law action for deceit – courts providing a remedy for traders whose name or symbol was adopted by another with the intention of inducing customers to believe its goods were in fact those of the first
The rationale behind this being a ‘fraud on the public’
This came to be called the tort of passing off, underpinned by the fundamental element of fraudulent misrepresentation (Perry v Truefitt)
By the early 19th century the Courts of Chancery also heard similar actions and were able to grant injunctions, but only where a legal right existed. The basis of this action was fraudulent conduct until in Millington v Fox the LC granted an injunction without fraud. Over time the Chancery courts came to articulate the view that equity’ intervention in cases of this type were based on the plaintiff’s property rights in the mark itself
Modern form of the tort of passing off
The idea that a mark constituted a form of legal property was important historically. But in the context of passing off it had very little impact because the CL courts had a different idea of what was protected by the tort of passing off and it was only at that time did the modern action take its form.
Erven Warnink BV v J Townsend & Sons (Hull) Ltd [1979] AC 731 Lord Diplock noted the judgment of Reddaway v Banham which denied that an action for passing off protected a proprietary right in the mark and that this expanded the actions to misrepresentations as to thinks like trade names and other indicia – this case was a classic case of misrepresenting one’s own goods as the goods of someone else. It was only in AG Spalding & Bros v AW Gamage that Lord Parker identified the right which is protected by an action of passing off is the ‘property in the business or goodwill likely to be injured by the misrepresentation’. Goodwill being defined as ‘the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom’ The goodwill of a manufacturer’s business could be injured by someone else who sells goods who are correctly described as being made by that manufacturer but being of an inferior class of quality – in AG Spalding this was held to be actionable and the extension to the nature of the misrepresentation which gives rise to a right of action in passing off which this involves was regarded by Lord Parker as a natural corollary of recognizing that what the law protects by a passing off action is a trader’s property in their business/goodwill. The significance of this was that passing off lay in the recognition that misrepresenting someone’s goods as someone else’s was not a separate genus of wrong but a particular species of wrong included in a wider genus. |
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Fraud still has a continuing role to play in the action of passing off in Australian law
At the same time that Chancery courts viewed that the action of passing off protected a form of property in the mark itself, the UK parliament was taking steps to provide further protection for trade marks
The Merchandise Marks Act did so and defined ‘trade mark’ broadly
This was followed by pressure to adopt a system of registered trade marks as one had exist in France and eventually this occurred
Even though analogies were drawn to property rights, trade marks didn’t have all the characteristics of forms of property
The Act contained an express restriction on TMs being assigned separately from the goodwill of the business in which it was used (as did the CL)
Explicit recognition of rights in the mark itself as a form of property meant that the action for trade mark infringement differed from passing off since it didn’t require a plaintiff to demonstrate any trading goodwill or reputation – proprietorship in the TM was enough
Also a registered TM was infringed just by its use irt specified goods – one didn’t have to show that the defendant’s use conveyed a misrepresentation. However, rights were interpreted strictly (e.g. Hargreaves v Freeman – RTM for tobacco not enough to cover the mark on cigars)
The AU Act which followed was slightly broader, allowed more marks to be registered and made it clear that it was an infringement so long as the used mark was ‘substantially identical with the TM or so nearly resembling it as to be likely to decieve’
Following some new Acts in the UK and AU, the immediate predecessor of the current regime was in force and TM law in AU developed such that:
Both a mark and a trade mark were defined
The register was divided into different parts to categorize marks capable of becoming distinctive
Applicants could register their marks in respect of services as well as goods
Registration only lasted seven years, but could be renewed
Provisions were in place to allow a registered TM to be removed on the basis of non-use; and
The exploitation of registered TMs was more straightforward as marks could be assigned separately from the goodwill of the underlying business and could also be licensed
The CB writers note:
That though the TM system was not a statutory re-enactment of ‘passing off’ – they share a close relationship. Initially the registration system made it easier to enforce rights. The tort of passing off expanded to provide broader protection too and these fed into further expansion of TM law and continued to loop as such
Further, care has to be taken when considering claims that ‘preventing consumer confusion’ is what underpins the action of passing off – the true essence of it is that the defendant engaged in conduct misleading consumers
The HCA in Compomar v Nike recognized that AU RTM statutes have always tolerated a bit of consumer confusion and are best seen as involving a balance between conflicting interests in regulating the conduct of competing traders as well as safeguarding consumers of goods and services
These are different to things like patents which are justified as promoting creativity etc.
TMs and indicia as sources of information
The principal justification for legal protection of TMs and trade indicia is that they serve to communicate valuable information allowing consumers to make informed choices about purchases. They operate as an indication of origin.
They also fulfil other functions dependant on their origin function. One is a product differentiation function – consumers can purchase products of similar quality by reference to their trademarks, reducing consumer search costs and increasing economic efficiency of markets
In SA CNL-SUCAL NV v HAG GF AG the Advocate General said that TMs reward the manufacturer who consistently produces high quality goods and thus stimulates economic progress. Without them there would be no incentive for manufacturers to develop new products or maintain existing ones. Thus they serve as an indicia or guarantee of quality and if the manufacturer does not live up to it, they do so at their own risk
Preventing misrepresentation as a standalone justification
A different justification is based on the idea that misappropriation of a brand owner’s labour, investment and reputation should be prevented – this is like a natural right’s argument
This can also explain traditional contours of passing off/registered TM law – traders shouldn’t be allowed to take advantage of another trader’s goodwill by using their TM such that traders ought to be granted rights to prevent the use of their marks by rivals in relation to the same or similar goods
The justification may also be said to extend beyond this to encompass situations where the other trade can be said to be taking advantage of the TM’s reputation, even in the absence of consumer confusion
This argument is often made on the latter basis that the old justifications for TMs don’t represent market reality. Instead TMs now serve an advertising function in that consumers don’t care about quality but see symbols that are desirable commodities in their own right
This is related to the idea of ‘brand value’ and ‘brand image’
IT is argued that in light of this advertising function, owners should have legal protection against conduct that dilutes the value of their marks
Dilution
In jurisdictions like the US and UK some legal protection is available against the dilution of TMs but it tends to be limited to particularly famous marks or those with a lot of reputation
In Ty, Inc v Perryman Posner J identified three sources of dilution in the context of his example of the jewellery store ‘Tiffany’ and a restaurant adopting that same name
The concern that consumer search costs rise if TMs are associate with a variety of unrelated products. Where consumers see the same name they could think of both the restaurant and jewellery store and thus the efficacy of the name as an identifier will be diminished (increased imagination costs – blurring)
If the restaurant happens to be a striptease joint then even though consumers won’t think of it as being commonly owned, the tendency of the human mind to proceed by association will tarnish the image of the jewellery store
There is also a concern that someone could take a free ride on the investment of the TM owner – even if the restaurant happened to be in a foreign country and those who shopped there would never buy anything at the jewellery store, the efficacy of the trademark as an identifier will not be impaired.
But if the appropriation of Tiffany’s aura is nevertheless forbidden by an expansive concept of dilution, the benefits of the jewellery store’s investment in creating a famous name will be ‘internalised – Tiffany will realize the full benefits of the investment rather than sharing it with others and thus the amount of investing in creating a prestigious name will rise
The CB writers note that the problem with extending TM protection to this extent is that it isn’t clear why advertising expenditure in creation of brand-value should necessarily be rewarded with stronger legal rights given that brand value is more to do with social responses
This debate is important because in AU there are no specific anti-dilution laws in place
The primary justification is that the register acts as a valuable source of public information as to the signs that are protected in a given commercial sphere and matters such as initial ownership and subsequent assignment of marks
But the downside is that if registration isn’t required, the passing off regime operates side-by-side which means traders who consult the register won’t get an accurate picture of what has been registered
The tort of passing off is one such source but the most important statutory supplement is that in the Competition and Consumer Act s 18 which provides that a person shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. This was design to broadly catch conduct in the nature of passing off
Remedies for contravention are found in s18, including interim or final injunctions (ss 232, 234) and damages (s 236) or other orders as the court sees fit (s 238). Other provisions afford more specific protections [574]
A number of international agreements are important in this field including
The Paris Convention on the Protection of Industrial Property – which requires equal treatment for boeth foreign and domestic nationals
TRIPS which imposes obligations relating to the definition of trademarks, the scope of rights regisetered and the requirements to use
Most importantly there is what is now the Trade Marks Act 1995 which is distinguished form the current UK Trade Marks Act 1994 which was based of the EU TM Directive
Since the 1995 a number of intl. developments have occurred requiring changes to AU law, the most important of which was becoming a party to the Protocol Relating to the Madrid Agreement which streamlines procedures for obtaining registration – other such ones exist [575]
There have also been domestic reviews and inquiries into the operation of the Act which have led to legislative amendments
Other forms of regulation include
Under TRIPS, AU has additional obligations to protect ‘Geographical Indications’ – e.g. ‘Proscuitto di Parma’
There is special legislation relating to the use of specific insignia (Olympic Insignia Protection Act) etc.
The Uniform Domain Name DR Policy governs licensees of domain names’ conduct in some limited respects [576]
The CB distinguishes between business names and trademarks – the former not providing any forms of property or giving any legal rights
Passing off is designed to safeguard a trader’s goodwill or reputation while consumer protection legislation is ostensibly designed as a consumer protection measure
Either way both play nearly identical roles in the context of this chapter – providing traders with a certain degree of protection against other traders using TMs or similar indicia in a manner that would mislead consumers
Though the test is capable of precise definition, two tests are prominent
Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 Lord Diplock set out the five elements regarded as essential for a valid action of passing off:
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Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 Lord Oliver set out the test noting that passing off is essentially the idea that “no man may pass off his goods as those of another” but boiled this down to three components:
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The latter test is the more preferred but both draw on what is called the classical trinity of passing off (goodwill or reputation, misrepresentation and damage or likelihood thereof)
The CB writers note 4 important propositions here:
As Gummow J said in ConAgra, despite the utility of these tests the tort has sufficient nooks and crannies to make it difficult to formulate any short form definition – sometimes courts have been prepared to broaden the scope of these particular elements
The interrelationship between the sections is important. Reputation isn’t a concept that can be assessed in isolation from the other elements: assessing whether the plaintiff has a sufficient reputation isn’t an all or nothing question
Instead, the extent of the plaintiff’s reputation will significantly impact the question of whether certain conduct is misleading or deceptive or involves a misrepresentation that causes damages
Recognizing the interconnected nature of the elements of the passing off action explains why passing off and actions for contravening CPL are somewhat coterminous
S 18 of the ACL may seem to suggest that the plaintiff only needs to establish one element: misleading or deceptive conduct. But numerous cases have recognized that conducting involving the use of a TM will only constitute misleading or deceptive conduct if that trader has a protectable reputation attaching to the sign or indicia
Mars AU v Sweet Rewards it was held, in this vein, that it is necessary to identify the features of the said mark in which a reputation is said to inhere for it is the existence of the reputation which the action of passing off protects. This is the same under s 18
Furthermore even though damages or a likelihood of them isn’t a formal requirement of ACL s 18 when seeking to get an injunction or damages it is likely that one will need to show actual or likely damage to reputation
Despite the breadth of passing off and the CPL, neither extends so far as to catch all types of copying names and images which are said to be ‘unfair’. Furthermore AU courts have emphatically rejected the possibility of a doctrine of unfair competition as against what responsible Parliaments have determined to be the appropriate balance between competing claims and polices
The first element of the trinity is that of goodwill or reputation
There is no fixed minimum level of reputation the needs to be established – much depends on the relationship between all the other elements
That is, whether a plaintiff has sufficient reputation turns on factors like the nature of the sign or other indicia to which the reputation purportedly attaches, the geographical area in which the plaintiff is claiming to enjoy the reputation, the length of time the trader has been trading and the intensity of that trade
The tort of passing off is concerned with the reputation attached to the G&S which the trader supplies in the mind of the purchasing public by association with the identifying “get up” of those goods and services
This can take a variety of forms – most commonly it will be a ‘trade mark’ (rand name, logo etc.) but this area of the law isn’t about protecting TMs so much as the plaintiff’s reputation as manifested in the get-up
Passing off can also be used where a defendant has adopted indicia like images, characters etc.
Reddaway v Banham [1896] AC 199 Facts: R manufactured belting made from camel hair sold as ‘Camel Hair Belting’. Around 10 years later B started to market a similar product under the same name. At trial the jury found that B engaged in passing off and an injunction was granted restraining their use of the word ‘Camel Hair’ in such a way as to deceive purchasers into the belief they were r purchasing R’s belting. Lord Herschell:
Lord Halsbury reached the same conclusion noting that prima facie it would be difficult to acquiesce in the contention that a person was making their goods pass as the goods of somebody else just by describing the subject of sale. But the circumstances of this case made this prima facie impression wrong – clearly one man’s goods were being sold as those of another |
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Hornsby Building Information Centre v Sydney Building Information Centre (1978) 140 CLR 216 Facts: The SBIC had traded for 30 years. It obtained from the Industrial Court an injunction under s 80 of the TPA or restrain the HBIC from trading under this name for a contravention of s 52. Stephen J noted as a preliminary point that where, as in s 52, the focus is on misleading others rather than injury to a competitor, it becomes of particular importance to identify the respect in which there is said to be any misleading or deception. He assumed for the purposes of his honour’s judgment that persons had indeed been misled that the HBIC was a branch of the SBIC and noted further that the issue here concerned the use of 3 descriptive words prefixed by a locality. Here it was the case that the use of the words were so associated with the SBIC to the extent that signage merely said ‘Building Centre’ in the premises. His honour noted the tension which flowed from descriptive trading names – because it is descriptive it is equally applicable to all like businesses and isn’t distinctive of any particular business.
His honour noted that there was evidence that the activities of both were similar but said that this wasn’t conclusive of any wrongdoing. He analogized it to an art gallery – if a similar situation occurred where one attached a regional prefix for a significant amount of time and a new entrant appeared in the market would neither mislead or deceive |
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Although passing off wasn’t an issue in Hornsby the approach is entirely consistent with a passing off action – e.g. the use of the word ‘Kettle’ was distinctive of the brand of kettle-cooked chips (Apand v Kettle Chip Co)
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 Facts: R&C’s lemon shaped contained had the brand-name Jif embossed on the side and bore a green-paper label featuring the same word. B’s three types of container each bore a yellow paper label featuring the brand name ‘ReaLemon’ and marketed in the same style of container. The CA with the TJ in ordering B be restrained from selling its product – this was an appeal to the HOL Lord Oliver noted the fallacy in proceeding on the proposition that you ‘can’t claim a monopoly in the sale of a plastic lemon’ – here the deception wasn’t in this but in containers so fashioned as to suggest that the juice inside ir emanated from the source with which those configurations were associated in the public mind. Thus the only question is whether the respondents, having required a public reputation for Jif juice, by selling for many years in containers of a particular shape and design that has become associated where produce, can legitimately complain of the sale by the appellants of similar produce in containers of similar, though not identical, size, shape and colouring.
The disagreement arose from the argument that what the respondents are asking the court to protect is just the se of a descriptive term which is embodied in a plastic lemon instead of expressed verbally:
Lord Jauncey reached the same conclusion but also noted that it wasn’t legitimate to equate the use of a plastic lemon of natural shape to the word ‘lemon’ in its ordinary use and couldn’t see why a trader couldn’t get protection for such an ingenious idea. |
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Nutrientwater Pty Ltd v Baco Pty Ltd [2010] FCA 2 Facts: It was established that the NW product range copied elements of the get-up of vitaminwater flavoured water (at the time not available in AU). In Feb 2008 they entered the market and other parties also did so. In May 2009 the respondent entered the market and started selling flavoured water in similar bottles. Kenny J began by noting that NW had to show that it had the requisite reputation in the get-up that Baco appropriated. His honour noted that the difficulty of establishing reputation in a get-up alone:
(Natural Waters)
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[592] The CB writers note a number of other categories of cases
Cases involving shapre or appearance – e.g. a piece of furniture (Parkdale), the appearance of a show (Dr Martens v Riversi) or the shape of a rotary shaver (Koninklijke Phlips v Remington) make it more difficult to demonstrate a secondary meaning in such features and to show that one has engaged in misrepresentation/MODC by copying those features
Reputation can also attach to image of famous personalities – e.g. Kieren Perkins (Talmax v Telstra) or famous ballroom dancers (Henderson v Radio Corp). Passing off and CPL can also be used to prevent unauthorized marketing of good associated with film characters or TV show advertisements (Hogan v Koala Dundee)
It can also attach to something as broad as advertising concepts but this is difficult to show
An example is Cadbury Schweppes v Pub Squash – in the 70s Solo was marketed by Cadbury as a manly drink and associated with manly activities and a series of advertisements continued through to the mid-70s. In 1975 Pub Squash did similar ads based on same concepts
Held (Lord Scarman): That passing off is wide enough to encompass advertisement campaigns – the only test is whether the product has derived, from the advertising, a distinctive character which the market recognizes
Here Cadbury didn’t establish exclusive reputation in its advertising themes and thus failed
Bodum v DKSH Australia Pty Limited [2011] FCAFC 98 Facts: Bodum and its companies were the owners and licensor of a registered TMs of the name “Bodum”. The respondent AU company was a subsidiary of a Swiss company that imports home-ware including the coffee plunger which was the subject of this suit. Bodum manufactured and sold a coffee plunger that was extensively advertised through a number of channels and had a significant reputation. The packaging for this product prominently depicts a photograph of the good and gives prominence to the design features of the plunger within – rendering it transparent to consumers. Bodum contended that by reason of these matters it acquired a substantial and valuable reputation in the features and distinctive shape of the plunger with the result that sale of plungers which embody those features is likely to signify to AU consumers that they were Bodum coffee plungers. Greenwood J Reputation and advertising material
Was the conduct of GKSH MOD or likely to MOD consumers and does the impugned conduct pass off DKSH’s rival product in the way contended
Having regard to all the factors his honour found it difficult to accept that DKSH distinguished its product as found by the TJ
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In actions for passing off and contraventions of the CPL the plaintiff has to establish a reputation in the area in which the defendant is trading
For trade within Australia this doesn’t require the plaintiff have a trading presence in the same suburb, town or even state in which the defendant is trading – it is enough that consumers who are encountering the defendant’s operation are aware of their business
Generally where the defendant trades in a local area and the plaintiff enjoys significant trade in other parts of AU the existence of a reputation will be easy to establish – e.g. BM Auto Sales v Budget Rent A Car where Budget, a well-known car hire company, was able to demonstrate it had a reputation in the term Budget in the NT through the presence of travellers there who were aware of their business elsewhere in AU
A difficult Q is whether it is sufficient for a foreign trader to just have a reputation in AU or whether it is necessary for them to have an AU trading presence (that is, whether spillover reputation is sufficient to found a passing off action)
ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 Facts: ConAgra was incorporated in the US and sold frozen foods under a number of brand names, including Healthy Choice – it having a substantial reputation in this name in the US but having never traded in AU. McCain applied for the TMR for the same name, ConAgra sued in passing off for contravention of s 52 of the TPA. Lockhart J (342-346) noted that the hardline UK cases were out of line with the reality of international business, which is that contemporary consumers are not usually concerned about the location of the premises of a company or the site of its warehouse or manufacturing plant where the goods are produced, but they are concerned with the maintenance of a high level of quality represented by internationally known and famous goods.
On the question of extent
Gummow J (372) opined that where a plaintiff, by reason of business operations conducted outside the jurisdiction, has acquired a reputation with a substantial number of persons who would be potential consumers were it to commence business within the jurisdiction, the plaintiff has in a real sense a commercial position which it may turn to account. Defendants moving to annex such a reputation diminish this business advantage.
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The two issues that arise are whether a plaintiff can bring an action based on a reputation acquired by virtue of pre-trade advertisements and publicity alone and the second is what happens when they cease trading
Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196 Facts: It was announced on 22/10/80 in NZ that as a result of 3 companies amalgamating the plaintiff was to be incorporated in AU. This announcement was widely publicized in AU. On 23/10/80 the unrelated defendants reserved the corporate name Fletcher Challenge Pty Ltd in AU and successfully incorporated in 12/1980. In 1/1981 the plaintiff commenced proceedings in NZ and sought an interlocutory injunction requiring the defendants change their name as they were engaging in passing off Powell J (204-205) noted that the first question is whether a sufficient prima facie of reputation in NSW was established
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Ballarat Products Ltd v Farmers Smallgoods Co Pty Ltd [1957] VR 104 Facts: BP and its predecessor had title over the mark Farmers for small goods for many years. Seven years after ceasing to trade it sought to prevent the defendant from producing smallgoods under the name Farmers Smallgoods Company Hudson J (107-108) The defendant submitted that the action should fail since the name Farmers had no goodwill attached to it – the plaintiff didn’t use the name for 6 years and a mere intention to resume this branch of business with the name, even if established, wouldn’t be sufficient to entitle relief The plaintiff submitted that they had a valuable reputation attaching to the use of the name which represented a commercial advantage they enjoyed as part of a business they never abandoned and that this subsisted such that goods sold under this name will still be regarded by the public. They further submitted that the likelihood of an assignee or the plaintiff resuming the business under this name was sufficient to establish likelihood of damage
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[598] The requirement of an intent to recommence trading is problematic but tends to be explained on the basis that without this there is no damage – Peter Waterman v CBS
But this is problematic given that loss of the ability to expand into a new market is a recognized head of damage
In actions under the TPA it has been held that there is no such requirement to recommence trading (Mark Foy’s v TVSN) i.e. consider the CLAW passing off and distinguish with statute
In more recent cases it has been suggested that this approach should be the same as in an action of passing off at CL (WMC v Westgold Resources)
Generally, to make out a passing off action the plaintiff will need to show it has an exclusive reputation in the sign or other indicia in question
There are exceptions – courts have been prepared to accept that 2+ traders who honestly and concurrently use the same sign/indicia have a protectable reputation and may be able to obtain remedies against TPs but not each other (Colorado Group v Standbags Group)
Whether this applies under CPL is less certain – Peter Isaacson Publications v Nationwide News – cf. Colorado for the contrary view
Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 Facts: A key issue was whether a passing off action could be brought by one member of a class of traders all wuith a reputation in a sign describing a quality/characteristic of good produced by them (here advocaat) where a TP falsely represents by the adoption of that name that its goods have those qualities/characteristic Lord Diplock (739-745) noted that this was a case of extended passing off as in the Champagne Case (J Bollinger v Costa Brava Wine). His honour considered the factual assumptions in that case:
His honour noted two features which distinguished this case from other cases:
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The Advocaat Case has been followed in a number of UK cases and there is no reason to think it wouldn’t be followed in Australia – they have come to be called cases of ‘extended passing off’
This is the second element – the latter being the requirement under the ACL
Whether there is a misrepresentation or MOD is determined in all the circumstances of the case, looking not only in similarity in the signs/indicia but also:
The extent of the plaintiff’s reputation
The nature of the G&S in question in question
The context in which those G&S are sold or provided and
The nature of the consumers of such G&S and how they would respond in making purchasing decisions
A number of different types of misrepresentation have been identified by courts – as to origin (from a plaintiff) as to qualities, cases of inverse passing off (where goods of the plaintiffs are misrepresented as being those of the defendants)
One of the questions that arises is determining how definite a consumers view must be of the link between the plaintiff and defendant’s goods
Under AU law conduct causing consumers to be misled is often contrasted with “mere confusion” – that is “it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products have come from the same source” (Parkdale v Puxu)
The effect of Parkdale is that conduct merely causing a consumer to ‘wonder’ as to a particular state of affairs may have certain consequences under the Trade Marks Act but not be sufficient to constitute ‘misleading or deceptive conduct’
Even though these distinctions were drawn in Pre-TPA cases the difficulties involved are still significant:
Phones4u Ltd v Phone4u.co.uk Internet [2006] EWCA Civ 244 Jacob LJ opined that the distinction between mere confusion which is not enough and deception which as, as elusive. His honour was of the view that:
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The CB writers note that there would probably be very little difference in practice between these standards
Three issues are canvassed:
Who must be misled for a contravention?
For passing off: A substantial number of consumers of the defendant’s goods must be misled, with the consumers being taken as they are found (Saville Perfumery v June)
For s 18: Campomar Sociedad v Nike suggests that whether conduct is MOD is judged by reference to a representative ordinary/reasonable member of the class to which the representation is made. But more recent cases have asked whether a ‘not insignificant’ number of prospective consumers have been misled (National Exchange v ASIC; Hansen v Bickfords)
What kind of evidence can be relied on
You can use survey evidence – a practice note exists on this (CM 13) - if it isn’t followed the court could use its discretion under s 135 EA to not admit it
The requirement of common field of activity – This was controversial in the UK but it hasn’t been held to be a requirement here – rather it is a relevant factor in assessing whether a defendant has engaged in a misrepresentation (Henderson v Radio Corp; Compomar v Nike)
Reddaway v Banham [1896] AC 199 Lord Macnaghten: Here it was argued that using the expression ‘camel hair belting’ was merely conveying a ‘simple truth’
The importance of this point was reflected in the order – an injunction granted restraining he use of the words ‘camel hair’ in a manner that would deceive the public as to the origins of its belting. |
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Misrepresentations as to origins can occur even if the same brand name isn’t used
Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd [2001] FCA 1228 Facts: Red Bull brought an action in passing off and for contravention of the TPA irt Sydneywide’s sale + distribution of ‘LiveWire’ in a certain get up. The cans had similar colour and employed a very similar get-up Conti J noted the string resemblance of the two cans – in particular the steep line/thrust running diagonally from the top right all of which showed when placed together that one was “impressed with an instantaneous perception of the similarity of the get-up of the two packagings”. The colour combinations of the cans also tended to attract attention before even the brand names.
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It is noted that in determining misrepresentation the intention to deceive was treated as an important factor in determining passing off and a contravention of s 52 TPA
The mere copying of aspects of another trader’s get-up may not demonstrate an intention to deceive – especially if adequate steps to differentiate its goods from those of the plaintiff are taken.
Further if the plaintiff doesn’t have a protectable reputation in AU, the intention to deceive is irrelevant (ConAgra)
As above, it will be difficult for a plaintiff to ever establish that it has reputation in the appearance of the actual good that it sells
Thus even if it can be established that the defendant deliberately copied the plaintiff’s product, such copying alone is unlikely to constitute misrepresentation
Parkdale Custom Built Furniture v Puxu Pty Ltd (1982) 149 CLR 191 Facts: Since ’76 Puxu designed and sold a range of lounge suits of distinctive appearance under the name ‘Contour’. In ’78 Parkdale sold a range of ‘Rawhide’ furniture which was virtually identical to ‘Counter’. A small label was swen to each piece of Parkdale’s furniture indicating that it was Parkdale Custom Built Furniture of the Rawhide range (as was the custom for labelling such furniture). Puxu sought an injunction under s 80 of the TPA for contravention of s 52. Gibbs CJ noted two things:
Brennan J noted that the CL stopped short of giving manufacturers a monopoly over goods of a particular design unless they were validly registered as such under the designs Act
His honour noted that if s 52 authorized an injunction for copying designs it would run contrary to the careful balance struck by the statutory regime under the Patents/Designs Act
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AG Spalding & Bros v AW Gamage Ltd (1915) 32 RPC 273 Facts: In 1910-11 Spalding sold 3 varieties of Orb Footballs. In 1912 it advertised the Improved Sewn Orb Ball with its advertisements featuring a picture of it stamped with the words Orb; Specially Tested and referring to the patent under which the ball was made. It also withdrew its older balls which it considered to be defective. Gamage acquired a batch of the 1910-11 withdrawn footballs and advertised them as Improved Orb balls with the statement that they were a great improvement on the old one and using the Spalding advertisements for its 1912 line with a reference to the same patent number, offering them for half price. Lord Parker extended the classic passing off formulation by corollary to no-one who has in his hands goods of another of a particular class has the right to represent them to be goods of another quality or a different class. Thus:
Argument: The statements were only a repetition of what the appellants had themselves said in former catalogues about the ‘Improved 1910 Orb’
His Lordship also rejected a submission that the question of being ‘calculated to deceive’ wasn’t one a judge could consider looking at the advertisements but had to be done on evidence. Whether the matter complained of is calculated to deceive or amounts to a misrepresentation is a matter for the judge looking at the documents and evidence before him to come to a conclusion. But there will be cases that a judge cannot properly come to a conclusion without evidence directed to the point.
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This type of misrep has more recently been recognized in cases of extended passing off. Similar cases include:
Taittinger v Allbev – A French Champagne maker prevented the distribution of a non-alcoholic drink sold as Elderflower Champagne
Chocosuisse Union v Cadbury – two Swiss chocolate makers prevented Cadbury from marketing UK-made ‘Swiss Chalet’ chocolate
Diageo NA v ICB – Smirnoff prevented the sale in the UK of a white spirit called Vodkat marketed in get-up reminiscent of vodka bottles
This form of passing off is part of a regime which could be used to protect against use of GIs
This occurs where the defendant misrepresents that the plaintiff’s goods or services are in fact those of the defendant
Testro Bros v Tennant (1984) 2 IPR 469 Facts: Testro Bros (plaintiff – TB) produced tailored directories for hospitals. The defendants (former employee of TB) wished to produce the same in competition. In the course of pitching their idea to various hospitals that weren’t approached by TB, it was alleged they relied on samples of TB’s directories (that didn’t have any reference to TB) as their own work and represented that the hospitals referred to therein were the defendant’s clients. TB sought an injunction Holland J framed the question to be answered – “whether it is a passing off or otherwise unfair trading…to represent to a prospective customer that you have been successful in the market with goods the equivalent of which you are offering to supply when the success has not been yours but that of another unidentified supplier whose goods you are then displaying to the prospective customer as your own and as an example of your success?”
Order: The plaintiff was entitled to an interlocutory order restraining the defendants in appropriate terms from using the plaintiff’s publications for the purpose of obtaining business for themselves without at the same time clearly stating that such publications have not been produced printed or published by the defendants. |
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In Campomar v Nike the HC was prepared to maintain an injunction restraining a Spanish manufacturer marketing his Nike Sports Fragrances on the basis that this would misrepresent that such products were “in some way promoted or distributed by Nike International itself or with its consent and approval”
This is an example of a situation where the conduct of a defendant supplying different G&S from those of the plaintiff could be characterised as a misrepresentation as to:
Origin
The existence of a sponsorship arrangement or other form of commercial association
Much depends in these cases on:
The extent of the plaintiff’s reputation
Whether that reputation is in relation to a variety of G&S
The way consumers would respond in seeing the defendant’s use of the plaintiff’s indicia
In determining whether or not a misrepresentation has been established
CF McIlhenny v Blue Yongder – the maker of ‘Tabasco’ sauce was refused an injunction to restrain the defendant from using Tabasco as the name of its company and in advertisements for its design services
Held: Even though the plaintiff took advantage of the well-known characteristic that Tabasco is hot, there was no misrepresentation because consumers wouldn’t conclude there was any commercial connection between the parties
Misrepresentation as to sponsorship/commercial association can also be made out where the defendant adopts an aspect of secondary branding in advertising unrelated goods – even in the absence of adopting primary branding
As the below case demonstrates, much depends on what indicia has been adopted and how much is used by the defendant
Telstra Corporation Ltd v Royal & Sun Alliance Insurance Australia Ltd [2003] FCA 786 Facts: Telstra ran an advertisement in the 90s involving Tommy Dysart playing the Scottish-accented character ‘Mr Goggomobil’ who used the Yellow Pages to find a mechanic recognizing his rare car and finally succeeding. Shannons, a car insurance company ran a series of TV and radio advertisements for its insurance products featuring Tommy reprising his character. The first involved him ringing a number of insurers to try to find insurance for his green Goggomobil and finding success with Shannons. The others featured the same character and reference to the Goggomobil but didn’t involve the use of the phone to solve ht eproblem. Telstra successfully argued that the first advertisement infringed copyright in the script to their first advertisement and that Shannons engaged in passing off and contravened s 52. Merkel J began by defining secondary branding as what occurs when a word, character, symbol or image creates, on its own, instant recognition or association with a particular product or business. His honour referred to two cases
His honour observed that Dystar’s character had become a form of secondary branding for Yellow Pages when it was employed in the context of the first Goggomobil advertisement (This seems to be the first question to ask() “The real question…is whether the manner and context in which Dysart and the Goggomobil were used by Shannons... represented that YP had some association/connection with that advertisement or had endorsed or approved the services offered in it” The First Shannon’s Advertisement
Argument: The absence of any YP branding and the presence of Shannon’s branding would leave little doubt that this was an advertisement for Shannon’s Insurance. Rejected:
Subsequent Advertisements and the Radio Advertisements
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Further difficult issues can arise in cases where a defendant uses the image/likeness of a celebrity or fictitious character, divorced from any commercial context in which that image or character has been or is normally employed, to advertise or sell the defendant’s non-competing G&S
In such cases the character/personality merchandising, the only potential misrepresentation involved is that the defendant’s activities have been approved/endorsed by the plaintiffs. Australian courts have readily found this but the basis on which it has been done is elusive at best
Hogan v Koala Dundee
Facts: Paul Hogan brought an action against the operator of a store called ‘Dundee Country’ whose marketing and merchandise featured the drawing of a koala wearing features reminiscent of the Crocodile Dundee Character
Pincus J:
His honour was critical of the idea that the relevant misrepresentation was that there was a licensing/sponsorship agreement between Hogan and the store because consumers don’t generally think about these things
Instead his honour thought there was a ‘wrongful appropriation of a reputation or, more widely, wrongful association of goods with an image properly belonging to the applicant.
He thus found in favour of Hogan
Recent cases have instead focussed on consumer response
Pacific Dunlop v Hogan
Claim: Hogan successfully argued that Pacific Dunlop’s TV ad for its shoes featuring a parody of the famous that’s not a knife scene in Crocodile Dundee, using a character dressed similarly, constituted passing off and a breach of s 52.
All three judges thought that they key issue was whether consumers would think that Hogan consented to or authorised the advertisement. Two judges in the majority in the FC went further and considered whether consumers might change their behaviour as a result of the conduct
Beaumont J:
Disapproved of the distinction sought to be drawn by the ‘attention grabbing’ effect of the use of the character and the subsequent sales pitch. His honour instead held the thrust of the ad was identifying the image of Crocodile Dundee with the product to be sold – they aren’t portrayed as separate. Instead the image is put forward as endorsing the product
Burchett J:
Noted that character merchandising was completely difference from a logical argument for a product. Associations with desirable characters proceed subtly and foster a favourable inclination towards it, a good feeling about it and an emotional attachment to it.
No logic tells the consumer that boots are better because Crocodile Dundee wears them for a few seconds on the screen – but the boots are better in his eyes worn by his idol
Thus asking whether a consumer reasons that Hogan authorized the advertisement is to ask a question that is a mere side issue from the full impact of the advertisement
The consumer is moved by a desire to wear something belonging in some sense to Crocodile Dundee – while the arousal of that feeling by Hogan himself couldn’t be misleading (since the value he promises to the product will not be in its features but the association with himself)
But if the advertisement he didn’t authorize makes the same suggestion, it is misleading for the product sold by that advertisement if it really lacks the feature attributed to it
This approach doesn’t mean all celebrity images necessarily constitute passing off – much depends on the nature of the use and how consumers might be expected to resond
In Newton-John v Scholl Plough the court accepted that consumers would understand a magazine advertisement with an ONJ lookalike together with the words ‘Olivia? No, it’s Maybeline’ to bebe referencing ONJ’s appearance but not be understood to be in any way authorized by her and thus no misrepresentation occurred
The extract in page 621-623 from the NZ Case of Tot Toys somewhat criticizes the reasoning in Koala Dundee in essence suggesting its circularity and perhaps the need, rather than to prevent passing off, but the recognize property in names, reputations and artificial images. The extract questions the appropriateness of this but instead suggests:
“No case has presently been made for a strained…application of the conventional laws of passing off in order to protect artificial character-merchandising rights in NZ”. Thus his honour held that the onus still remained on the plaintiff to actually show deception by, for example, inducing the public to falsely believe that there is a commercial connection between the defendant and their goods and the plaintiff
This is the final element required in Lord Oliver’s trinity
There are a number of kinds of damages:
Loss of business through diversion of trade – this most commonly happens in misrepresentation as to origin
For e.g. Reckitt v Coleman – the damage was lost sales of the plaintiff’s Jif Lemon as a result to the defendant’s conduct
Loss of market share - even without a net loss of sales
Harm to reputation (consumers might think less of the product as a result of the misrepresentation – e.g. Spalding v Gamage; Testro Bros v Tennant)
Loss of the ability to exploit reputation
For example being denied the opportunity to expand their business by providing new G&S
Foreign plaintiffs being pre-empted from trading in AU under the name which it has an established remedy in (in such a case there is an issue of whether they’d have to establish an intention to trade to get a remedy – ConAgra)
Particular care is needed in the personality/merchandising context – e.g. in Henderson v Radio Corp
Facts: The defendant used a photo of the plaintiffs (famous ballroom dancers) on the cover of one of its dance music records
Held:
The court disagreed that equity couldn’t restraint he appellants unless it was proved that respondent’ professional reputation was injured somehow or their personal capacity to earn money is impaired
It is true that the coercive power of the court can’t be invoked without proof of damage – but wrongful appropriation of another’s professional or business reputation is an injury in itself. The professional recommendation of the respondents is always theirs to hold and bestow at will – the appellant wrongly deprived them of this right and the payment which they would have been minded to give for their approval to the particular use
Given that misrepresentation or MOD always has to be established – this could mean that once it is concluded that consumers are likely to change their behaviour as a consequence of the defendant’s conduct – the loss of a licensing opportunity follows axiomatically
One controversial question is the extent to which dilution is a recognized head of damage in AU law
Harrods Ltd v Harrodian School Ltd [1996] RPC 697 Facts: The owners of Harrods department store sought to restrain the defendants from operating a prep school under the above name. The TJ held there was no misrepresentation and continued to discuss the question of damages. Millet LJ noted the idea that demolishing the distinctiveness of a particular brand (in the Champagne Case, Champagne) leading to diminishing good will was a recognized head of damage. His honour cautioned that this could mark an unacceptable extension to the tort of passing off.
Sir Michael Kerr (in dissent) disagreed and accepted that dilution was a recognized head of damage and the danger that the name would proliferate as being a real one |
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[Passing off] To obtain an award more than nominal damages a plaintiff has to show that they have suffered actual damage by reason of the erroneous belief engendered by the misrepresentation.
If a plaintiff seeks injunctive relief they will need to show at least a likelihood of damage as a result of the defendants actual/proposed conduct
[s 18] A person seeking damages for contravention of this will only be entitled to an award of damages (under s 236 ACL) if that person has in fact suffered loss or damage by reason of the defendant’s conduct
A court may grant an injunction under s 232, 234 ACL to restrain contraventions of s 18 even where there is no imminent danger of substantial damages but it would be rare for a defendant who engaged in a misrepresentation which didn’t involve even a likelihood of any of the above forms of damages
Fraud in the sense of an intention to deceive is generally important in establishing a misrepresentation
IT appears to be that to get an award of damages or account of profits for passing off one also has to show fraud on the part of the defendant (but not for injunctive relief
ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 Gummow J established the idea that in cases of passing off
This means that under the ACL pecuniary remedies may be available even though they aren’t under passing off. Section 236 operates to give remedies for what could be innocent/non-negligent misrepresentations – statutory liability is unrelated to fault |
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Section 230(2) of the TMA provides that in a passing off action damages may not be awarded against a defendant who uses its own registered trade mark, who was unaware at the time of the action that the plaintiff’s mark was in use, and who, when it became aware of the plaintiff’s mark, immediately ceased using the mark
This defence isn’t available to actions for contravention of consumer protection legislation and is thus largely redundant
Bodum v DKSH Australia Pty Limited [2011] FCAFC 98 Continuing from above, Greenwood J reached the conclusion that the appellant’s conduct was not of the kind to which s 52 was directed.
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S 17 of the TMA provides – “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”
In E&J Gallo v Lion Nathan their honours said that a trade mark must indicate “a connexion in the course of trade between the goods and the owner, the requirement that a trademark ‘distinguish’ goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of ‘goods to which the mark Is applied”
Trademarks thus operate as a badge of origin
S 6(1) provides the definition of sign – “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”
Generally signs will be either words or devices
Devices include words represented in a stylized manner (e.g. Coca-cola), combinations of text and graphic elements (the BMW logo), logos without textual elements (Nike Swoosh).
But the definition encompasses other indicia which when used irt G&S can be recognized as indicating trade origin – e.g. the Coke ‘contour’ of the bottle, the purple colour of chocolate for Cadbury, the Intel jingle etc.
The definition of sign in s 6 is open-ended and could potentially include tastes, textures, moving images and gestures
Though it has been said that a sign is anything that can convey information (Philips v Remington) the concept does have limits – e.g. a mere concept or idea won’t cut it, in Dyson v Registrar of TMS [2007] ECR the ECJ held that an application for a TM registration of a ‘transparent in or collection chamber forming part of the external surface of the vacuum cleaner’ not limited to any shape or form couldn’t be registered since there was no ‘sign’
This acceptance of a larger field of indicia raises a number of other issues – e.g. the effect on competition of monopolizing a shape or colour
Another issue is whether a distinction has to be drawn b/w the mark and the goods to which it is applied to ensure the natural/inherent form/feature of the goods that performs a particular function can’t be a part of the TM registration
Kenman Kandy Australia Pty Ltd v Registrar of Trademarks [2002] FCAFC Stone J discusses whether there is a particular problem with the ‘shape’ TM included in s 6 and whether it is necessary that a TM must be able to be described as something distinct/separate from the goods irt which it is used and if so whether it is possible for a shape which is the whole shape of the good. Separation of trademark from goods In Smith Kline Windeyer J was considering a trademark registration application for the ‘total appearance of its capsules’ and to thus obtain a monopoly over ‘parti-coloured capsules containing pellets of different colours’. His honour held:
Later in the case of Philips v Remington (the three headed rotary shaver case) Burchett J treated the issue of separation of mark from goods as the same issue as the ‘capacity to distinguish issue’ Did the 1995 Act effect a radical change to trade mark law
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Other jurisdictions are more restrictive – e.g. in the EU, the ETMD excludes from registrability shapes which ‘result from the nature of the goods themselves’ which are ‘necessary to achieve a technical result’ or which ‘give substantial value to the goods’
Three are three types of TM that can potentially be registered
Collective Trade Marks – signs that are used or intended to be used irt G&S provided in the course of trade by members of an association to distinguish those G&S from G&S provided by persons who are not members of the association
Certification Trade Marks – signs that are used or intended to be used to distinguish G&S provided in the course of trade that have been certified by a person or organization irt such things as quality, accuracy or some other characteristic, including origin, material or mode of manufacture, from G&S that haven’t been certified (e.g. the AU made Kangaroo)
Defensive Trade Marks – where a mark is registered irt certain G&S and the owner can show that if that mark were to be used on other G&S that use would indicate a connection between those other G&S and the owner, then such a mark may be separately registered irt those other G&S as a defensive TM. There is no requirement that defensive TMs be used irt those other G&S.
The application process for registration of a standard TM is set out in ss 27-29 of the TMA and Pt 4 of the TMR
Appications are made out to the AU TM Office, a division of IP AU. The office has detailed guidelines about the process in the TM Office Manual of Practice and Procedure
S 27 provides that a person may apply for registration of a TM irt particular G&S if:
The person claims to be the owner of the TM; and
One of the following applies
The person is using or intends to use the TM irt goods and/or services
The person has authorized or intends to authorize another person to use the TM irt goods and/or services
The person intends to assign the TM to a body corporate that is about to be constituted with a view to the use by the body corporate of the TM in relation to the goods and/or services
S 27(3) provides that the application must contain a representation of the mark and must specify the G&S in respect of which the registration is sought, in accordance with the regulations (this is called the specification)
Regulation 4.3 sets out the requirements as to the form of the representation (and has special provisions for shape/colour/sound/scent)
Regulation 4.4 provides further detail about the specification, including these two requirements
The goods and/or services must be grouped according to the appropriate classes described in Sch 1
The applicant must nominate the class number that is appropriate to the goods or services in each group
The Office uses the International Classification of G&S that was agreed to at the Nice Diplomatic Conference under which goods are classified into one of 45 classes in Sch1 of the TMR, each class covering a different category of often related G&S
For standard applications, the filing date of the application becomes the priority date – ss 6(1); 12, 72 which is crucial for determining the marks as against which the application is assessed
Under s 31 a delegate of the Registrar (the examiner) will examine and report on the application as to whether:
It is made in accordance with the TMA and thus complies with the requirements in ss 27-28 and the associated regulations which involves determining whether the G&S have been correctly classified (s 32) but can also involve a consideration of whether the application is in fact for a TM as defined in s 17
There are any grounds for rejecting the application in ss 39-44 which are:
That it contains or consists of certain prescribed/prohibited signs (s 39)
Cannot be represented graphically (s 40)
Is not capable of distinguishing the owner’s goods and services from those of other traders (s 41)
Contains or consists of a scandalous matter (s 42(a))
If used, it would be contrary to law (s 42(b)0
Contains a connotation such that its use is likely to deceive or cause confusion (s 43)
Is substantially identical with or deceptively similar to an earlier registered TM or application irt similar or closely related goods and/or services (s.t. questions of honest current use of the two marks, or whether the applicant can show prior continuous use of its mark) (s 44, reg 4.15A)
Under s 33(1) the Registrar must accept the application unless satisfied that it has not been made in accordance with the act or there are grounds for rejecting it
IF the examiner indicates to the applicant that a ground for rejection exists, the applicant has a period of time (initially 15 months) to respond, otherwise the application lapses
The applicant can seek to argue its case informally with the examiner or put in evidence to overcome a ground of objection
The applicant can seek a hearing before the registrar (s 33(4)) an may appeal that decision to the FC (s 35)
If the application is accepted:
It will be advertised in the Official Journal of TMs (s 34); and
Under s 52(2) and reg 5.1 a TP has 3 months from the advertisement to lodge a notice of opposition. The grounds are:
Any of the grounds on which the application could have been rejected except s 40 (s 57; reg 5.18)
That the applicant isn’t the owner of the mark (s 58)
That wher ehte application was accepted on the basis of the applicant’s prior continuous use of the mark under s 44(4), the opponent can show earlier continuous use (s 58A)
That the applicant doesn’t intend to use/authorize the use of the mark in AU or to assign the mark to a body corporate for use in AU (s 59)
That an earlier mark had acquired a reputation in AU before the applicant’s priority date and for that reason the applicant’s use of its mark would be likely to deceive/cause confusion (s 60)
That the TM contains a false GI (s 61)
That the applicant was amended contrary to the Act (s 62(a))
That the applicant was accepted on the basis of false evidence (s 62(b)); or
That the application was made in bad faith
Both parties have periods of time in which they can lodge evidence to support their positions (reg 5.5-5.15) and both are afforded the opportunity to be heard on the opposition by a hearing officer (s 54)
At the end of opposition proceedings, the hearing officer decides whether to refuse to register the mark or register it (s 55) and the parties may appeal to the FC (s 56)
Further, s 38 allows the registrar to revoke acceptance if satisfied that the application shouldn’t have been accepted and it is reasonable to revoke acceptance
Once the opposition period expires or if opposition is unsuccessful the Registrar must register the mark (s 68) by entering certain particulars into the register (s 69) which can be searched through ATMOSS on the IP AU website
TM protection takes effect from the earliest priority date (s 72(1)-(2)) and lasts for 10 years from the filing date (s 72(3)). RTMs can be renewed under s 75 simply on the payment of renewal fees – thus making TM protection potentially perpetual
But registration can be amended or cancel, or the mark removed from the register in a range of circs set out in Pt 8, 9.
Three provisions are pertinent:
S 84A- the Registrar can revoke the registration of a mark within one year from registering that mark on much the same basis that acceptance of the mark can be revoked under s 38
This in effect allows the Registrar in limited circs to reconsider whether the application was made in accordance with the Act (s 31(a)), whether any of the grounds of rejection at the examination stage should have been raised (ss 39-44) as well as unsuccessful grounds of opposition (ss 58-62A)
S 88(2) – on the application of an aggrieved person a registration can be cancelled on grounds such as:
Any of the grounds on which the registration of the mark could have been opposed (s 88(2)(a))
The further ground that because of the circumstances applying at the time when the application for cancellation is filed, the use of the trade mark is likely to deceive or cause confusion (s 88(2)(c))
S 92(4) – a TM can be removed from the Register on the basis of non-use where the applicant either didn’t intend to use the mark when applying or has never in good faith used it, or where the owner hasn’t made good faith use of the mark in a particular 3 year period
The grounds on which an application for registration may be rejected (at examination or from successful opposition), or on which cancellation can happen can be considered as part of two broad categories:
Relative grounds – grounds involving potential conflict b/w the applicant’s mark an earlier registered or unregistered mark, or where another party has better title to the applicant’s mark.
The key relative grounds are in ss 44, 58, 58A, 60, 61 (as well as ss 42(b), 43, 62Awhich can operate as relative grounds)
Absolute Grounds – grounds that do not involve such conflicts but where there is some other inherent problem with the mark or application (ss 39, 40, 41, 42(a), 42(b), 43, 59, 62(a), 62(b), 62A)
S 41 of the Act sets up a ‘distinctiveness’ test to ensure that parties aren’t able to register marks that lack distinctiveness
Generally these will be the types of marks that will ‘describe’ the G&S in question or semiotic qualities that other traders will legitimately wish to use
These words generally exist on a continuum of descriptiveness with names like Lindt on the one end, Crunchie in the middle and Dairy Milk on the other – ones like the latter get registration because they may have been used in the market place to such an extent that consumers have come to recognize it as indicating a particular trader’s G&S
Section 41 operates cumulatively such that certain factors are considered at different stages of the analysis in determining whether or not something is distinct
Section 41 – Trade mark not distinguishing applicant’s goods or services
For the purposes of this section, the use of a TM by a predecessor in title of an applicant for the registration of the TM is taken to be a use of the TM by the applicant
An application for the registration of a TM must be rejected if the TM is not capable of distinguishing the applicant’s G&S in respect of which the mark is sought to be registered (‘designated G&S’) from the G&S of other persons
In deciding the question whether or not a TM is capable of distinguishing the designated G&S from the G&S of other persons, the Registrar must first take into account the extent to which the TM is inherently adapted to distinguish the designated G&S from the G&S of other persons
Then, if the Registrar is still unable to decide the question, the following provisions apply
If the Registrar finds that the TM is to some extent inherently adapted to distinguish the designated G&S from the G&S of other persons but is unable to decide, on that basis alone, that the TM is capable of so distinguishing the designated G&S
The Registrar is to consider whether, because of the combined effect of the following:
The extent to which the TM is inherently adapted to distinguish the designated G&S
The use, or intended use, of the TM by the applicant
Any other circumstances
The TM does or will distinguish the designated G&S as being those of the applicant; and
If the Registrar is then satisfied that the TM does or will so distinguish the designated G&S – the TM is taken to be capable of distinguishing the applicant’s G&S from G&S of other persons; and
If the Registrar is not satisfied that the TM does or will so distinguish the designated G&S – the TM is taken not to be capable of distinguishing the applicant’s G&S from the G&S of other persons
If the Registrar finds that the TM is not to any extent inherently adapted to distinguish the designated G&S from the G&S of other persons, the following provisions apply:
If the applicant establishes that, because of the extent to which the applicant has used the TM before the filing date in respect of the applicant, it does distinguish designated G&S as being those of the applicant – the TM is taken to be capable of distinguishing the designated G&S from the G&S of other persons
In any other case – the TM is taken not to be capable of distinguishing the designated G&S from the G&S of other persons
TMs that are not inherently adapted to distinguish G&S are mostly TMs that consist wholly of a sign that is ordinarily used to indicate:
The kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of G&S or
The time of production of goods or the rendering of services
Marks where the Registrar can straight away say the G&S are sufficiently high on the continuum of distinctiveness to satisfy s 41(3) the goods are best known as prima facie distinctive
If the marks fall to be determined by s 41(6) then it is factual distinctiveness that has to be established
Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 Kitto J’s judgment outlines the correct question to ask when considering distinctiveness
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Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 Stone J looks at a number of things which are not inherently adapted to distinguish as the authorities provide no clear test:
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None of these decisions clearly spell out when a mark is inherently adapted to distinguish to such an extent that they could be considered prima facie distinctive rather than fall under s 51(6) – no bright line can be drawn
But Clark Equipment suggests that only if it can be said that there is little likelihood or possibility that other traders would wish to use the sign in question for the sake of any ordinary signification it might possess that the mark will be prima facie distinctive – otherwise s 41(5), (6) fall to be considered
Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (The case involved an attempt to register Michigan for earth moving equipments) Kitto J:
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