Intellectual Property
Winter Session 2015
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
“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.
“Use” is defined in s 7 of the TMA:
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use of the trade mark upon, or in physical or other relation
to, goods (s 7(4)) or services (s 7(5)) – includes use in
invoices and advertisements (so long as goods or services
are available to be ordered or traded)
visual use and aural use (if trade mark is letter, word, name,
number) (s 7(2))
Owner’s use and authorised use (s 7(3))
Note: The filing of a TM application creates a presumption of
intention. The Registrar will not enquire as to whether a
proposed mark is used or intended to be used but lack of
intention may be a ground for opposition under s 59/s 62.
Early Cases:
Batt’s Case (1898 UK case)
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“bona fide” intention to
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use the mark
Ducker’s Trade Mark (1928 UK
case)
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Imperial Group Limited v Philip Morris
& Co Limited
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“real resolve, intention
and purpose” to use the
mark
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“Nerit” was a ghost mark registered
as a means of reserving “Merit”
(which was not registrable)
“Nerit” was only to be used to
prevent others from using “Merit”
(intention to use the mark but not
in good faith because intent was to
create a de facto monopoly)
Over 1 million cigarettes sold under
“Nerit” when use became necessary
(but court still found no genuine
intention to use the mark)
Now s 62A prevents registration of
marks not applied for in good faith
To obtain registration of a “defensive trade mark” (see s 185 of
the TMA):
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trade mark already registered (s 185(1));
trade mark used to such an extent, on some or all of the
goods for which it was registered, that the use of the trade
mark in relation to other goods or services would be likely
to be taken as indicating a connection between those other
goods or services and the registered owner (s 185(1))
registerable as to certain goods and services even if there is
no intention by the owner to use the mark in relation
thereto (s 185(2))
convertable to/from a distinctive mark (s 185(3), (4))
Definition of “distinguish”
Shorter Oxford Dictionary
1 To divide or separate; to class, classify
2 To mark as different or distinct; to separate
Roget’s Thesaurus
difference, discrimination, severalise, separate
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The role of a trade mark is to establish a connection between the
product and its source (i.e., be an indication of its origin). A
consumer should be able to distinguish the product from other
trader’s products.
These are X goods, not Y goods or Z goods
An example of a trade mark that would not be “capable of
distinguishing” is the name “MILK” for the sale of milk. However,
“JOHNSON FARM DAIRY MILK” may be capable of distinguishing
Typically distinctive trade marks are those which are:
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Invented words (such as KODAK) are usually distinctive
(except when they become generic, like XEROX)
Coined expressions (such as “This sick beat”)
Concocted shapes (such as the millenium bugs)
By necessary implication from s 41, the following trade
marks are or can be “capable of distinguishing”:
41(3): trade mark is inherently adapted to distinguish
41(5): trade mark is to some extent inherently adapted
to distinguish based on combination of:
• use and intended use
• extent inherently adapted
• other circumstances
41(6): trade mark is not inherently adapted to
distinguish but use before filing date does in
fact distinguish
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Inherent distinctiveness depends on the nature
of the trade mark itself so must be determined
in the appropriate context
“Raising the Bar” amendments clarify the
presumption of registrability (doubts resolved in
applicant’s favour)
Note 1 to s 41(6) states that trade marks
consisting of the following signs are generally
not inherently distinctive:
 kind, quality, quantity, intended purpose, value,
geographical origin, or some other characteristic, of goods
or services
 time of production of goods or of the rendering of services
"The applicant's chance of success in this respect (ie.
in distinguishing his goods by means of the mark,
apart from the effects of registration) must, I think,
largely depend upon 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. It is apparent from the history of
trade marks in this country that both the Legislature
and the Courts have always shown a natural
disinclination to allow any person to obtain by
registration under the Trade Marks Acts a monopoly in
what others may legitimately desire to use.”
Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd (1913)
“[T]he question whether a marks is adapted to
distinguish [is to] be tested by reference to the
likelihood that other persons, trading in goods of the
relevant kind and being actuated only by proper
motives . . .will think of the word and want to use it
in connexion with similar goods in any manner which
would infringe a registered trade mark granted in
respect of it”.
Clark Equipment Co v Registrar of Trade Marks
(1965)
Early Case – Mark Foys (“Tub Happy”)
Trade mark infringement case (1956) in which High Court stated the
following in finding the trade mark inherently distinctive:
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Defendant’s use of the words "Tub Happy Cotton Fresh" in
connection with advertising for "Exacto" brand cotton garments
infringed the trade mark "Tub Happy" (obtained in respect of
articles of clothing)
Defendants were advertising the phrase "Tub Happy" for the
purpose of indicating a connection between the goods which did
not exist
“Tub Happy” may have an “emotive tendency” but they did not
“convey any meaning or idea sufficiently tangible to amount to a
direct reference to the character or quality of the goods”.
Words provided a “cloudy suggestion” they would wash well in a
tub “but that is all”
Letters
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One letter: not capable of distinguishing
Two or more letters: capable if no descriptive
significance (e.g., GT for car)
Abbreviations: not capable of distinguishing if
recognised abbreviations (e.g., OJ or BYO)
Phonetic equivalents: if letters not capable then
phonetic equivalent unlikely to be either (e.g.,
OJAY)
Words
No – words need to be used by traders to describe
their goods:
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Generic words – “Car”
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Kind (includes size or type) – “Whopper”
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Quality (laudatory words) – “Superior”
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Intended Purpose – “Roach free”
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Value – “Two for one”
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Time of Production – “Vintage 1990”
Words (cont)
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Minor variations in spelling – “Kar”
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Adjective form of words – “Minties”
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Combination of two or more known words –
“Vapo-Rub”
Foreign words – if English word not capable,
then foreign equivalent not capable – “Talla”
Mr, Dr, My before word – no if following word
not capable and for common surnames – “Mr
Smith” or “Dr Nguyen”
Sports Warehouse v Fry Consulting
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Sports Warehouse trading in California in 1994 in tennis apparel. Products sold
in Australia since 1995 via website www.tennis-warehouse.com
On 18 August 2005, Sports Warehouse filed an application to register the word
mark TENNIS WAREHOUSE. Distinctiveness objection overcome after Sports
Warehouse filed evidence of its use of the mark showing that the mark had
acquired capacity to distinguish
Application successfully opposed by Fry Consulting, an Australian wholesaler
and retailer of tennis apparel and tennis gear through its website
www.tenniswarehouse.com.au
“In the context of online services, the public is likely to understand a domain
name consisting of a trade mark…as a sign for the online services identified by
the trade mark as available at the webpage to which it carries the Internet user”
(Kenny J)
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Use of the domain name www.tennis-warehouse.com constituted use of the
mark TENNIS WAREHOUSE with additions or alterations that did not substantially
affect the identity of the mark
Ocean Spray Cranberries v Registrar of TM
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“CRANBERRY CLASSIC” to no extent inherently
adapted to distinguish for fruit juices as it conveyed
“the notion of excellence” and meant “quality
cranberry”
Court agreed that the power of advertising may be
able to turn almost anything into a trade mark but
here the mark was not capable of distinguishing
(even though it may have acquired a distinctive
character)
Modena Trading v Cantarella Bros
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Italian words “Oro” (gold) and “Cinque Stelle” (five star)
used in relation to coffee products
Marks rejected for being merely descriptive. High Court
determines that marks are distinctive and overturns
decision below
New test for determining whether a trade mark is
inherently adapted to distinguish the claimed goods or
services:
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What is the 'ordinary signification' of the words
proposed as trade marks, to any person in Australia
concerned with the relevant goods claimed by the
trade mark? (here not commonly used
Will other traders legitimately need to use the word
in respect of their own goods?
Howard v Auto-Cultivators v Webb Industries
Inventive word “rohoe” as a contraction of
the English words “rotary” and “hoe” not
registrable given the ordinary signification
recognisable to other traders made it a
word that other traders would have
legitimate interests to use
Geographical names
No capability to distinguish where obvious or
potential connection with goods or services
Blount Inc v Registrar of Trade Marks
Use of upper-case letters, and the oval device
surrounding the word "Oregon” not sufficient to
make descriptive word “Oregon” distinctive for
chainsaws
Clark Equipment Co v Registrar of Trade Marks
Trade mark for “Michigan” for earth-moving
equipment "plainly not inherently, ie in its own
nature, adapted to distinguish“
Geographical names
“COLORADO” for backpacks?
(Colorado Group Limited v. Strandbags Group Pty Ltd)
“PHOENIX” for toiletries?
(Re Application by Unilever Plc)
Mastronardi Produce v Registrar of Trade Marks
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ZIMA an invented word but only used in relation to one
variety of golden grape tomatoes
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Registrar refuses application because describes goods
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Court posed test as:
(1) How would ZIMA be understood as at 25 July 2011by
ordinary Australians seeing it for the first time used in
respect of tomatoes; (no meaning as made up word)
(2) How likely is it that other persons, trading in tomatoes
and being actuated only by proper motives, will think of the
word ZIMA and want to use it in connexion with tomatoes in
any manner which would infringe a registered trade mark
granted in respect of it? (had other options because did not
need to use the word ZIMA to describe their products)
Composite Trade Marks
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Trade marks comprising any combination of
words, devices, shapes, sounds, scents and/or
colour elements
“It is established that a combination mark may
be capable of distinguishing by the overall
impression it creates, even if the individual
elements in isolation lack any such capacity,
because, for example, they are commonplace
in a trade, or, by parity of reasoning, merely or
highly descriptive.”
Fry Consulting Pty Ltd v Sports Warehouse Inc
Crazy Ron’s Communications v Mobileworld
Communications
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Relatively large fantasy cartoon
character holding a mobile
telephone astride a stylised globe
Words not especially prominent
and subsidiary to fantasy
character which occupied
dominant position in overall
image
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Crazy Ron did not infringe Crazy
John because mark is device
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Image overwhelms words
Colours
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“Most objects have to be some colour. So merely
applying a colour to a product will not act as an identifier
for that product. In deciding whether colour functions as
a trade mark it is necessary to determine whether the
trader has used the colour in a way that informs the
public that the product emanates from a particular
source.” (Woolworths v BP) (Colour green)
Must show that you have used the colour as a trade mark
and that the public have come to identify that colour with
your particular goods or services
Cadbury's were unable to register the general colour
purple but were successful in registering a specific shade
of purple as a trade mark, when used on the packaging
for block chocolate and boxed chocolate
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indicator of origin
whether it indicates the trade origin
using a sign to indicate a connection in the
course of trade between the goods and the
person who applies the mark
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Contain certain signs – s39 (s18, r4.15) (“Patent”,
coat of arms, official flag, official seal etc)
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Can’t be graphically represented – s40
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Not distinguish goods/services – s41 (see above)
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Scandalous or contrary to law – s42 (red cross,
ANZAC, Olympic logo, etc)
Trade Mark : 1025788
Word:
ASSHOLE
Image:
Lodgement Date:
19-OCT-2004
Registered From:
19-OCT-2004
Date of Acceptance:
07-FEB-2005
Acceptance Advertised:
24-FEB-2005
Registration Advertised:
08-SEP-2005
Entered on Register:
22-AUG-2005
Class/es:
16
Status:
Removed - Not Renewed
Kind:
n/a
Type of Mark:
Word
Goods & Services
Class: 16
Greeting cards, humorous cards, birthday cards,
stickers, prints, books, card paper, paper
Because of some connotation
◦ that the trade mark has
◦ that the sign contained in trade mark has
◦ in other words, this ground is available only where
the misleading connotation is inherent in the mark
(rather than based on the context of its use)
For example:
◦ “Polo Magazine” for publications not about polo
(deceiving)
◦ “Bali” bras not made in Bali (unlikely to deceive)
Confusion did not depend upon some connotation in
the registered mark, but because TGI Friday was using
a similar name – not covered by s 43
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DIANA’S LEGACY IN ROSES together with a
device comprising doves, a wreath of flowers
and a stylised letter “D”
Real tangible danger that, by virtue of the
connotation of the late Princess in the
impugned mark, consumers in Australia
would be deceived or confused by incorrectly
believing that the mark was indicative of
some endorsement or approval by the Fund
or the Estate of the late Princess
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registered mark for services
◦ similar services
◦ closely related goods
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registered mark for goods
◦ similar goods
◦ closely related services
◦ unless honest concurrent use – s44(3)
◦ unless prior use – s 44(4)
Test:
Compared side by side, their similarities and
differences noted and the importance of these
assessed having regard to the essential
features of the registered mark and the total
impression of resemblance or dissimilarity that
emerges from the comparison
Deceptively similar if so nearly resembles that other trade
mark that it is likely to deceive or cause confusion (s10)
Crazy Ron’s v Mobileworld
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impression based on recollection of the applicant’s mark
that persons of ordinary intelligence would have compared
to impression such persons would get from respondent’s
mark
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human frailty so imperfect nature of recollection
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aural similarity may be important
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tangible risk of deception – enough if ordinary person
entertains a reasonable doubt
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Effem registered trade marks SCHMACKOS and DOGS GO
WACKO FOR SCHMACKOS
Wandella apply for WHACKOS in same class
WHACKO not deceptively similar SCHMACKOS because
SCHMACKOS more complex sound and more visually complex
but WHACKO deceptively similar to DOGS GO WACKO FOR
SCHMACKOS because total phrase derives whole of its force
from the word WACKO. WACKO was powerful component of
Effem's mark which would be retained in consumer’s memory
and recalled when Wandella's mark seen
S 14:
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other
goods.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other
services.
Southern Cross Refrigerating v Toowoomba Foundry
Consider all legitimate uses which may reasonably make of the
mark within ambit of the applicant’s registration
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Gas absorption refrigerators and electric
refrigerators and parts thereof
Well-drilling and boring machinery hand or
power, milking machines, engines, windmills
Similar goods involves consideration of
◦ nature of goods
◦ uses to which they are put
◦ whether they are commonly sold together to the
same class or classes of customers
Registrar of Trade Marks v Woolworths Ltd
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Range of relationships between goods and services which
may be "closely related”
In most cases relationships defined by function of service
with respect to goods.
Services which provide for installation, operation,
maintenance or repair of goods are likely to be treated as
closely related to the goods
Caterpillar Loader Hire v Caterpillar Tractor Co
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Confusion is more likely to arise where services protected by
service marks necessarily involve the use or sale of goods or
where services (eg consultancy services) involve goods
(1)
the honesty of the concurrent use;
(2)
the extent of the use in terms of time,
geographic area and volume of sales;
(3)
the degree of confusion likely to ensue
between the marks in question;
(4)
whether any instances of confusion have been
proved; and
(5)
the relevant inconvenience that would ensue to
the parties if registration were to be permitted.
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Mary McCormick registered MCCORMICK for instant
batter associated with distinctive fish and chips
sold by Mr and Mrs McCormick from roadside
caravan
Aware at time name chosen that certain mixed
herbs, paprika, pepper and basil products were
sold under MCCORMICK brand
May be honest even though aware
Entitled to be registered in Queensland
but opposed because of section 60
Mary McCormick later changed to “Mary Macks”
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Mark is substantially identical or deceptively
similar to previously registered mark
BUT applicant used before the previously
registered mark was registered
Applicant’s use
Other Owner’s
registration
Applicant’s
application