LPAB Summer Session
Therese Catanzariti
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European Trade Guilds
1266 Bakers Marking Law (pinpricks on bread)
◦ Protect consumers – know where bad bread comes from
◦ Develop reputation in quality bread
Silversmiths
Porcelein
badge of origin
badge of control
zeitgest / image of brand
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IP Australia application
Designated classes of goods and services
(Nice Classification – 45 classes)
designated goods in designated class
designated services in designated class
IP Australia examination
=>acceptance or rejection
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opposition
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IP Australia hearing
registration
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rectification
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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
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workers' trade mark
indicate goods were product of individual / association of
Australian workers
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Not “trade mark” within Constitution
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1
a property right
2
owner being a person engaged in trade
3
right corresponds with dealing with goods in course of trade
4
owner of right has independent dominion over goods as to
entitle him to affix mark on them
5
mark distinguishes the goods as having been dealt with by
some particular person or persons engaged in trade
workers mark not a right in property
Workers mark not indicate that goods should be distinguished
from other goods dealt with by other persons
Union did not constitute a person who had dominion over the
goods to which the mark was applied and who would be
referenced by application of the mark
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letter
word
name
signature
Numeral
device
brand
heading
label
ticket
aspect of
packaging
• shape
• colour
• sound or scent.
•
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Nokia ringtone
Intel Jingle
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use of the trade mark upon, or in physical or
other relation to, goods or services – s7
visual use and aural use (if trade mark is
letter, word, number)
Owner’s use and authorised use
◦ person uses the trade mark in relation to goods or
services under the control of the owner of the trade
mark
◦ quality control over goods and services
◦ financial control over trading activities
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to distinguish goods or services
dealt with / provided by a person
from other person’s goods or services
Shorter Oxford Dictionary
1 To divide or separate; to class, classify
2 To mark as different or distinct; to separate
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Roget’s Thesaurus
difference, discrimination, severalise, separate
these are X goods, not Y goods or Z goods.
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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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A brand owner does not want a sign to say
these goods are big, these goods are yellow,
these goods are plastic
A brand owner wants the sign to say these
goods are different from all other big goods,
from all other yellow goods, from all other
plastic goods
A brand owner wants sign to yell,
unequivocally
These goods are different from other goods
These goods are MY goods
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Capsule – half coloured, half colourless
good themselves can’t be a trade mark
trade mark must be capable of being described
and depicted as something apart from the goods
to which it is to be applied or in relation to which
it is to be used.
Can’t get monopoly in all types of goods
Contrast Smith Kline v Stirling Winthrop
Coloured capsules could be registerable
even though trademark covered whole visible
surface
Phillips registered triple-headed
shaver
Remington copied the shaver
Remington NOT using as a trade mark
functional shapes were incapable of
acting as trade marks
competitors should be free to use
shapes that were attractive and
popular with the buying public.
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“Millenium bug” stylised 6 legged creature
confectionary
Shape that distinguishes the goods may be
the entire shape of the goods themselves
NOT if shape serves a function, or shape that
is part of the nature of the good
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Cola flavoured, cola bottle shaped confectionary
silhouette, fluting and band are striking features
of the confectionary, and are apt to distinguish it
from the goods of other traders
the non-descriptive features have been put there
to make the goods more arresting of appearance
and more attractive, and thus to distinguish them
from the goods of other traders.
All-Fect was using cola bottle as a trade mark
It indicates a connection in the course of trade
between goods and the person who applies the
mark to the goods.
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Seahorse not used as a badge of
origin
not used in any sense to identify
Guylian but to illustrate some
examples of the elegance of the
chocolates and the contents of the
box more generally
simply one of the chocolate shapes
out of a number of sea shell/marine
shapes that Guylian sells and markets
not enough that consumers associated
with Guylian
not enough that used for many years
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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
not distinguish goods/services – s41
scandalous or contrary to law – s42
◦ a red cross, ANZAC, Olympic logo, etc
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likely to deceive or cause confusion – s43
substantially identical or deceptively similar s44
◦ Services – similar services / closely related goods
◦ Goods - similar goods/closely related services
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Inherently adapted to distinguish
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to some extent inherently adapted
combination of
◦ use and intended use
◦ extent inherently adapted
◦ other circumstances
not inherently adapted to distinguish
but use before filing date does in fact
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distinguish
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Inherently adapted in context
◦ designated goods and services
◦ people in the relevant market
whether it is likely that other traders trading in
the designated goods and services, in the
ordinary course of their business and without
improper motive, would wish to use the same
trade mark
“the common right of the public to make honest
use of words forming part of the common
heritage, for the sake of the signification which
they ordinarily possess”
Registrar of Trade Marks v W & G Du Cros Ltd
Clark Equipment Co v Registrar of Trade Marks
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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
geographical indication
COLORADO - Blount Inc v Registrar of Trade Marks
NOKIA – which came first, river town or company
3M – Minnesota Minerals and Mining
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qualities
CRANBERRY CLASSIC - Ocean Spray Cranberries v Registrar TM
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Intended purpose
TENNIS WAREHOUSE - Sports Warehouse v Fry Consulting
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does not need to absolutely unsuggestive of
qualities of the goods provided not a normal
description
may be inherently adapted if indirect or allusive
Mark Foy v Davies Coop – TUBHAPPY
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NOT if misspelling or phonetic equivalent of
descriptive
 NOT if contraction of two or more descriptive
words
Howard Auto Cultivators v Webb Industries ROHOE
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Invented words
Unrelated words
◦ APPLE for computers
◦ CATERPILLAR for shoes
part of a mark or word/device mark rather
than word itself
provided that device is more than stylised
letter
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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
Crazy Ron not infringe Crazy
John because mark is device
Image overwhelm words
contrast Blount Inc v Registrar of Trade Marks
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use of upper-case letters, and the oval device
surrounding the word "Oregon” not sufficient
to make descriptive words “Oregon”
distinctive
contrast Bayer Pharma v Farbenfabriken Bayer
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the name is feature which makes the device
what it is - the feature which stands out as
operative thing in it, and to which everything
else is merely assistant - the feature which ...
`would strike the eye and fix in the
recollection
merely provides a fancy method of presenting
the name `Bayer’
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because of some connotation
◦ that trade mark has
◦ that sign contained in trade mark has
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Big Country Developments v TGI Friday's Inc
confusion did not depend upon some connotation in
the registered mark, but because TGI Friday using a
similar name – not covered by s43
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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
substantially identical
OR deceptively similar
 registered mark for services
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◦ 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)
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Shell Co Australia v Esso Standard Oil
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
Solahart v Solar Shop
SOLAHART not substantially identical
SOLARHUT
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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
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
human frailty so imperfect nature of recollection
aural similarity may be important
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
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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
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consider all legitimate uses which may
reasonably make of the mark within ambit of
the applicant’s registration
Southern Cross Refrigerating v Toowoomba
Foundry
=>whether any of the registered designated
services are closely related services to any of
designated goods
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Southern Cross v Toowoomba Foundry
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
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Registrar of Trade Marks v Woolworths Ltd
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a practical judgment whether the closeness of the
relationship and the resemblance of the mark together cause
deception or cause confusion
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
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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
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(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
Was 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
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same grounds as rejection – s57
applicant not owner of mark – s58
opponent’s earlier use of similar trade mark –
58A
applicant not intending to use mark – s59
trade mark similar to mark that has acquired a
reputation – s60
mark consists of a false geographical indication ss61
application is defective - s62
application made in bad faith – s62A
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common law owner of mark
person who first publicly used the mark in
Australia as a trade mark to indicate a
connection in the course of trade between
goods/services and person
not any goods /services
designated goods/services and
goods/services that are that are the “same
kind of thing”
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if mark not used by any person
“an application to register a trade mark so far
unused must be founded on proprietorship
proprieter of the mark is combined effect
◦ authorship of the mark
◦ intention to use it upon or in connection with the
goods
◦ applying for registration”
Shell Co (Aust) Ltd v Rohm & Haas Co (1949)
78 CLR 601
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Mark may be registered where mark is
substantially identical or deceptively similar
to previously registered mark if the applicant
used before the previously registered mark
was registered – section 44(4)
BUT can reject if the owner of the previously
registered mark used before the applicant
Other
Owner’s use
Applicant’s use
Other Owner’s
registration
Applicant’s
application
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use it upon or in connection with goods
intention at date of application
but evidence use/non-use after date may be
relevant
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Food Channel Network Pty Ltd v Television
Food Network GP
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not just non-use – need to prove no intention
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TASTEE FREEZ iced milk
intention looked at in context of proprietorship
does not need to be actual use, or an immediate intention or
an intention within a limited time of using a registered mark
“A manufacturer of (say) confectionery would, I should
suppose, be entitled to register three trade marks in relation
to confectionery, though he intended only to use two of them
and had not made up his mind as to which two he would use.
If he in fact does not use any of them for the period specified
in s. 72, the unused mark or marks may be expunged under
that section. On the other hand, a manufacturer of
confectionery, who had no intention of ever manufacturing
motor cars, might be held disentitled to register a mark in
relation to motor cars”
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prevent trade mark dilution
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cybersquatter / trade mark pirates
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◦ register in related classes that don’t intend to use
◦ register related words / logos that don’t intend to
use
may be opposed – s59
may be removed for non-use – Part 9
owner can use other mechanisms
◦ closely related goods and services – s120(1)/(2)
◦ well-known marks – s120(3)
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IG couldn’t register
MERIT – descriptive
IG registered NERIT as
defensive mark to
prevent others using
MERIT
no genuine intention
to use NERIT
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another trade mark has reputation
AND because of reputation likely to deceive or cause
confusion
reputation does not have to be registered
reputation demonstrated by evidence of sales,
marketing, advertising and licensing
reputation can be in any goods or services
doesn’t have to relate to designated goods / service
BUT if reputation relates to very different goods or
services it will be difficult to show that the reputation
will deceive or cause confusion
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McCormick & Company Inc v McCormick
reputation means the recognition of the marks by the public generally.
McDonalds v Bowditch
GOLDEN BOOMERANGS
McDonalds v Macri Fruit Distributors
MCSALAD, MCFRUIT
Greenpeace v Taylor
GREENPIECE
Qantas v NV Sumatra
JETSTAR for coffee, tea, cereal, biscuits, cocoa
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Intel v Third Party Corporation
BELLINTEL – stock-broking services
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NOT Coca Cola v The Big Australian SOLA COLA
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Fry Consulting v Sports Warehouse
unscrupulous, underhand or unconscientious
deliberate misspellings registered trademark
register foreign trade mark with no Australian
market penetration with purpose of selling to
foreign owner
cyber-squatting
not include mere negligence, incompetence
or a lack of prudence
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No intention to use when apply
AND not in fact used as trade mark in good faith in Australia
since registration
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registered for 3 years and not used as trade mark in good faith
in Australia for 3 years
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Woolly Bull Enterprises Pty Ltd v Reynolds
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Not necessary that there be an actual trade in the sense of the
offering for sale and the sale of goods bearing the mark
BUT must go beyond investigating whether to use the mark and
beyond planning to use the mark and has got to the stage where
it can be seen objectively to have committed itself to using the
mark, ie, to carrying its intention to use the mark into effect.
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Good faith – real not token, colourable
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remove OR impose limitations or conditions
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person claims to be the owner of the trade
mark
AND
 intends to use the mark
 authorised / intends to authorise another to
use
 intends to assign to body corporate about to
be incorporated
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registered owner exclusive right – s20
◦ Use / authorise the trade mark in relation to
designated goods/services
◦ obtain relief if trade mark infringed
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registered trade mark personal property– s21
registered owner may deal with trade mark
and give discharges in good faith – s22
equities may be enforced against registered
owner except PPSA security interests
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authorised user – uses trade mark in relation to goods/services
under registered owner’s control – s8
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Authorised owner rights – s26
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E & J Gallo Winery v Lion Nathan
◦ use trade mark on designated goods/services
◦ Sue for infringement with owner’s consent
◦ Sue for infringement after end prescribed period if owner doesn’t sue
within prescribed period
◦ Give notice to customs to prevent importation
◦ Permission to alter / deface mark on goods
Issue whether Gallo used mark BAREFOOT RADLER in Australia
Houlihan trade mark owner (later Gallo) owned Barefoot Cellars
Barefood Cellars applied mark to wine
Barefoot Cellars sold wine to Einig-Zenzen, Germany who sold to
Beach Avenue, Australia who sold wine in Australia
Houlihan exercised quality control over Barefoot Cellars
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if the person uses as a trade mark
a sign that is substantially identical with, or
deceptively similar to, the trade mark
in relation to
s120(1) registered goods or services
s120(2) goods/services of same description
or closely related goods or services
s120(3): well-known trade marks
any goods / services
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Substantially identical
Shell Co Australia v Esso Standard Oil
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 it so nearly resembles that other trade mark that it is likely to
deceive or cause confusion’ – s10
Crazy Ron’s v Mobileworld
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
Coca Cola Distributors v All Fect Distributors Pty Ltd
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All-Fect was using cola bottle to indicate a connection in
the course of trade between goods and the person who
applies the mark to the goods
certain striking non-descriptive features of the goods were
put there to make the goods more arresting and to
distinguish them from other similar goods, that is, to use
those features as a mark
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Johnson & Johnson (Tylenol) v Sterling Pharmaceuticals
(Panadol)– CAPLET
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a registered mark serves to indicate the origin of the
quality in a particular business, whether known or
unknown by name
Caplet was used to indicate or describe form or method of
dosage of product found inside packages, and not a
connection in the course of trade
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Top Heavy v Killin
whether the sign is used to distinguish one person’s
goods and services from the goods or services of
others
Killin put words CHILL OUT on t-shirts as an
exhortation to relax, not to indicate a connection in
trade
Pepsico Australia Pty Limited (t/a Frito-Lay) v Kettle
Chip Co Pty Limited
Frito-Lay's use of the words "KETTLE", or "KETTLE
COOKED", was not use as a trade mark
Frito Lay used words KETTLE or KETTLE COOKE for
purpose and effect of describing qualities of the
chips produced by Frito-Lay. The words have the
effect of distinguishing between the qualities of those
chips and those produced by means other than
"kettle cooking”, but not to distinguish Frito-Lay's
chips from Kettle’s chips
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Southern Cross v Toowoomba Foundry
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
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Registrar of TM v Woolworths
whether the closeness of the relationship and the
resemblance of the mark together cause deception or cause
confusion
range of relationships between goods and services which may
be "closely related”
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Person uses person’s name/ place of business (predecessor’s name) in
good faith
Angove’s Pty Ltd v Johnson
entitled to use words “St Agnes Liquor Store” in the name of its business
in the Adelaide suburb of St Agnes, notwithstanding that plaintiff
registered trade mark ST AGNES
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Person uses sign in good faith to indicate kind, quality, quantity,
intended purpose, value, geographical origin, or some other
characteristic, of goods or services
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Person uses trade mark in good faith to indicate the intended purpose of
goods (in particular as accessories or spare parts) or services
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Person uses trade mark in comparative advertising
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Person would obtain registration if applied (eg honest concurrent use)
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Use in good faith imports an absence of intention to make
use of the goodwill which has been acquired by another
trader
resemblance between the registered trade mark, of which
the first respondent was aware and the name of the first
respondent does not prevent the use being bona fide
provided that there was an honest belief that no confusion
would arise and if there were no intention of wrongfully
diverting business
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Wellness Pty Limited v Pro Bio Living Waters Pty Limited
no evidence as to reason for choice of name and reason
for incorporation
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If person/ predecessor continuously used
in the course of trade unregistered trade
mark
in relation to similar/closely goods or
services from a time
before registered owner’s use or registration
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may be limited to area of Australia
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Injunction
Damages
Account of profits
(tho no damages/account of profits if mark
not used and mark removed – s127)
Groundless threat of legal proceedings – s129
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Owner can give notice to Customs objecting
to importation of goods infringing mark –
s132
Customs may seize imported goods with a
sign that is substantially identical or
deceptively similar to a notified trade mark –
s133