Intellectual Property
Winter 2016
•
European Trade Guilds
•
1266 Bakers Marking Law
•
Protect consumers – know where bad bread
comes from (origin of goods)
•
Develop reputation in quality bread
•
Silversmiths
•
Porcelain
(1)
File application in IP Australia
 Designated classes of goods and services
 Nice Classification – 45 classes of goods and
services
(2)
IP Australia conducts examination
•
(3)
(4)
Application accepted or rejected
Opposition proceedings
•
Identify grounds of opposition
•
Hearing
Registration or refusal
Classes
of goods and services
Class
1
Chemicals used in industry, science and photography, as well as in
agriculture, horticulture and forestry; unprocessed artificial resins,
unprocessed plastics; manures; fire extinguishing compositions;
tempering and soldering preparations; chemical substances for
preserving foodstuffs; tanning substances; adhesives used in industry.
Class 2
Paints, varnishes, lacquers; preservatives against rust and against
deterioration of wood; colorants; mordants; raw natural resins; metals in
foil and powder form for painters, decorators, printers and artists.
Class 3
Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery,
essential oils, cosmetics, hair lotions; dentifrices.
Classes
of goods and services
Class
32
Beers; mineral and aerated waters and other non-alcoholic
beverages; fruit beverages and fruit juices; syrups and other
preparations for making beverages.
Class 33
Alcoholic beverages (except beers).
Class 34
Tobacco; smokers' articles; matches.
Class 35
Advertising; business management; business administration; office functions.
Class 36
Insurance; financial affairs; monetary affairs; real estate affairs.
Class 37
Building construction; repair; installation services.
Class 38
Telecommunications.
Class 44
Medical services; veterinary services; hygienic and beauty care for human
beings or animals; agriculture, horticulture and forestry services.
Class 45
Legal services; security services for the protection of property and
individuals; personal and social services rendered by others to meet the
needs of individuals.
Trade Marks Classification Search“Computer Printer”
Class 9
Computer printers
Controlling software for computer printers
Fonts for computer printers
Paper feed apparatus for use with computer printers
Paper feeding apparatus for use with computer printers
Paper guiding apparatus (parts of computer printers)
Paper handling devices (parts of computer printers)
Print trimmers (parts of computer printers) (8 hits)
Class 16
Inking ribbons for computer printers
Paper for use with computer printers (2 hits)
Class: 7 Looms for linking rubber bands
Class: 14 Charms; jewelry making kits, namely,
kits comprised of flexible rubber bands, a loom
and a hook; jewelry making kits comprised of a
loom and a hook; Rubber bands for jewelry
construction and craft construction
Class: 16 Instruction manuals for jewelry
making and craft
Class: 26 Hooks for linking rubber bands
Class: 28 Hobby craft kits, namely, kits
comprised of flexible rubber bands, a loom and
a hook; hobby craft kits comprised of a loom
and a hook
Class: 41 Providing instructional videos
Submit
Class 1
Planters of compostable
material for use in horticulture
(cylinders, trays, punnets,
pots)
Class 6
Metal planters being plant
containers
Planters of metal
Class 19
Planters made of concrete
Planters made of marble
Planters made of stone
Planters, not of metal
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.
Nokia ringtone
Intel Jingle
•
•
Philips owned trade mark for electric rotary shaver with three
shaving heads arranged in configuration of an equilateral triangle
Remington began selling a shaver with a similar configuration and
Philips unsuccessfully sued for trade mark infringement:
•
•
Remington had not used the configuration as a trade mark
because the message of Remington's triple headed
configuration was not one indicating commercial origin but
rather one indicating the kind or attributes of the shave
Decision limits the ability to register the shape of goods or
part of the goods as a trade mark for those goods
•
•
shape of a container as a trade mark for beverages,
perfumes and other fluids – probably ok
shapes that perform functional purpose – probably not ok
•
•
•
•
Coca-Cola has a registered trade mark for its classic Coke
bottle
All-Fect sells a cola-flavoured jelly-like confectionary in the
shape of a bottle having similar features. Unlike Coke, the
product is labelled “Efruti” and sold in tubs. Coca-Cola sues
for trade mark infringement
Full Federal Court determines that the use of three
distinctive features – the silhouette of the bottle, the fluting
on the bottle and the label band – were used as a trade
mark because they distinguished the goods from others
Consumers may wonder about the source of the Efruti
•
•
•
Kenman sought trade mark registration for three-dimensional
shape of “millennium bug” confectionary
Registration rejected even though delegate found that the bug
shape was “distinguishable from other shapes”
Full Federal Court ordered the bug shape to be registered:
•
•
was bug shape inherently adapted to distinguish the goods,
i.e., were other confectionery manufacturers likely, in
ordinary course of their businesses and without any improper
motive, to desire to use the bug shape or some mark nearly
resembling it, upon or in connection with their own goods?
'Registration of the bug shape as a trade mark would not give
the appellant a monopoly over all bug or insect shapes – only
this particular shape and any substantially identical or
deceptively similar shape'.
•
•
•
Guylian sought trade mark registration for its chocolate
seahorse shape
Registration rejected on the basis that it was not capable of
distinguishing Guylian’s goods from other traders
Federal Court dismisses Guylian’s appeal:
•
•
Kenman distinguished - seahorse shape not unique or
imaginative (looked like an ordinary representation of a
seahorse)
Despite evidence that many survey respondents (40.6%)
associated the seahorse with Guylian chocolates, this was not
enough to show that it functioned as a badge of origin for
Guylian
“Use” is defined in s 7 of the TMA:
•
•
•
Note:
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))
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)
•
“bona fide” intention to
•
use the mark
Ducker’s Trade Mark (1928 UK
case)
•
Imperial Group Limited v Philip Morris
& Co Limited
•
“real resolve, intention
and purpose” to use the
mark
•
•
“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):
•
•
•
•
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))