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Trade Marks. LPAB Winter Session Therese Catanzariti. origin. 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

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Trade marks

Trade Marks

LPAB Winter Session

Therese Catanzariti


Origin

origin

  • 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


Registration process

registration process

  • 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

  • opposition

  • IP Australia hearing

  • registration

  • rectification


Trade mark s17

trade mark – s17

  • 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


Ag nsw vbrewery employees union

AG(NSW)vBrewery Employees Union

  • workers' trade mark

  • indicate goods were product of individual / association of Australian workers

  • Not “trade mark” within Constitution

  • 1a property right

  • 2owner being a person engaged in trade

  • 3right corresponds with dealing with goods in course of trade

  • 4owner of right has independent dominion over goods as to entitle him to affix mark on them

  • 5mark 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


Sign s6

Sign – s6

  • letter

  • word

  • name

  • signature

  • Numeral

  • device

  • brand

  • heading

  • label

  • ticket

  • aspect of packaging

  • shape

  • colour

  • sound or scent.


Trade marks

Nokia ringtone

Intel Jingle


Used or intended to be used

used or intended to be used

  • 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


To distinguish goods provided by person

to distinguish goods provided by person

  • to distinguish goods or services

  • dealt with / provided by a person

  • from other person’s goods or services


To distinguish

to 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

    these are X goods, not Y goods or Z goods.


D ealt with or provided by a person

dealt with or provided by a person

  • 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


Trade marks

  • 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


Smith kline v registrar of tm

Smith Kline v Registrar of TM

  • 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 vStirling Winthrop

  • Coloured capsules could be registerable

  • even though trademark covered whole visible surface


Koninklijke philips electronics nv v remington products australia

Koninklijke Philips Electronics NV v Remington Products Australia

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.


Kenman kandy

Kenman Kandy

  • “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


Coca cola v all fect manufacturers

Coca Cola v All-Fect Manufacturers

  • 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.


Chocolaterie guylian v registrar

ChocolaterieGuylianv Registrar

  • 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


Reject application

reject application

  • contain certain signs – s39 (s18, r4.15)

    • “patent”, coat of arms, official flag, official seal etc

  • can’t be graphically represented – s40

  • not distinguish goods/services – s41

  • scandalous or contrary to law – s42

    • a red cross, ANZAC, Olympic logo, etc

  • 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


Not distinguish goods services s41

not distinguish goods/services-s41

  • Inherently adapted to distinguish

  • to some extentinherently 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 distinguish


Inherently adapted

inherently adapted

  • 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


Not inherently adapted if descriptive n 1

not inherently adapted if descriptive–n 1

  • 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

  • qualities

    CRANBERRY CLASSIC - Ocean Spray Cranberries v Registrar TM

  • Intended purpose

    TENNIS WAREHOUSE - Sports Warehouse v Fry Consulting


Inherently adapted1

inherently adapted

  • does not need to absolutely unsuggestiveof qualities of the goods provided not a normal description

  • may be inherently adapted if indirect or allusive

    Mark Foy v Davies Coop – TUBHAPPY

  • NOT if misspelling or phonetic equivalent of descriptive

  • NOT if contraction of two or more descriptive words

    Howard Auto Cultivators v Webb Industries - ROHOE


Inherently adapted2

inherently adapted

  • 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


Trade marks

Crazy Ron’s Communications vMobileworld Communications

  • 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


Trade marks

contrastBlount Inc v Registrar of Trade Marks

  • use of upper-case letters, and the oval device surrounding the word "Oregon” not sufficient to make descriptive words “Oregon” distinctive


Trade marks

contrastBayer Pharma v Farbenfabriken Bayer

  • 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’


Likely deceive or cause confusion s43

likely deceive or cause confusion – s43

  • because of some connotation

    • that trade mark has

    • that sign contained in trade mark has

  • 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


Mccorquodale v masterton

McCorquodalevMasterton

  • 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


Trade marks

s44

  • substantially identical

    OR deceptively similar

  • registered mark for services

    • similar services

    • closely related goods

  • registered mark for goods

    • similar goods

    • closely related services

    • unless honest concurrent use – s44(3)

    • unless prior use – s 44(4)


Substantially identical s44

substantially identical - s44

  • Shell Co Australia vEsso 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

  • Solahartv Solar Shop

  • SOLAHART not substantially identical SOLARHUT


Deceptively similar s44

deceptively similar – s44

  • Deceptively similar if so nearly resembles that other trade mark that it is likely to deceive or cause confusion’ – s10

  • Crazy Ron’s vMobileworld

  • 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


Effem foods v wandella pet foods

Effem Foods vWandella Pet Foods

  • 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


Similar goods closely related services

similar goods / closely related services

  • 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


Similar goods

similar goods

  • 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


Closely related services

closely related services

  • Registrar of Trade Marks v Woolworths Ltd

  • 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

  • Caterpillar Loader Hire v Caterpillar Tractor Co

  • 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


Exception honest concurrent use s44 3

exception – honest concurrent use – s44(3)

  • (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.


Mccormick v mccormick

McCormick v McCormick

  • 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”


Exception prior use s44 4

exception- prior use – s44(4)

  • 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


Oppose registration

oppose registration

  • 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


Applicant not owner s58

applicant not owner – s58

  • 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”


Applicant not owner s581

applicant not owner – s58

  • 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


Opponent s earlier use s58a

opponent’s earlier use – s58A

  • 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


Not intending to use s59

not intending to use – s59

  • use it upon or in connection with goods

  • intention at date of application

    but evidence use/non-use after date may be relevant

    Food Channel Network Pty Ltd v Television Food NetworkGP

  • not just non-use – need to prove no intention


Aston v harlee manufacturing co

Aston vHarlee Manufacturing Co

  • 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”


Ghost marks

ghost marks

  • prevent trade mark dilution

    • register in related classes that don’t intend to use

    • register related words / logos that don’t intend to use

  • cybersquatter / trade mark pirates

  • 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)


Imperial group limited v phillip morris

Imperial Group Limited v Phillip Morris

  • IG couldn’t register MERIT – descriptive

  • IG registered NERIT as defensive mark to prevent others using MERIT

  • no genuine intention to use NERIT


Similar to mark with reputation s60

similar to mark with reputation – s60

  • 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


Trade marks

  • McCormick & Company Inc v McCormick

  • reputationmeansthe recognition of the marks by the public generally.

  • McDonalds v Bowditch

  • GOLDEN BOOMERANGS

  • McDonalds vMacri Fruit Distributors

  • MCSALAD, MCFRUIT

  • Greenpeace v Taylor

  • GREENPIECE

  • Qantas v NV Sumatra

  • JETSTAR for coffee, tea, cereal, biscuits, cocoa

  • Intel v Third Party Corporation

  • BELLINTEL – stock-broking services

  • NOT Coca Cola v The Big Australian SOLA COLA


Application made in bad faith s62a

application made in bad faith – s62A

  • 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


Non use s92

non-use – s92

  • No intention to use when apply

  • AND not in fact used as trade mark in good faith in Australia since registration

  • registered for 3 years and not used as trade mark in good faith in Australia for 3 years

  • Woolly Bull Enterprises Pty Ltd v Reynolds

  • 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.

  • Good faith – real not token, colourable

  • remove OR impose limitations or conditions


Who can apply for mark s27

who can apply for mark – s27

  • 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   


Rights

rights

registered owner exclusive right – s20

  • Use / authorise the trade mark in relation to designated goods/services

  • obtain relief if trade mark infringed

  • 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


  • Licensing

    licensing

    •  authorised user – uses trade mark in relation to goods/services under registered owner’s control – s8

    • Authorised owner rights – s26

      • 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

    • E & J Gallo Winery v Lion Nathan

      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


    Infringement s120

    Infringement – s120

    • 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


    Substantially identical or deceptively similar see s44

    substantially identical or deceptively similar (see s44)

    • Substantially identical

    • Shell Co Australia vEsso 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 vMobileworld

    • 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


    Use as a trade mark

    Use as a trade mark

    Coca Cola Distributors v All Fect Distributors Pty Ltd

    • 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

    • Johnson & Johnson (Tylenol) v Sterling Pharmaceuticals (Panadol)– CAPLET

    • 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


    Trade marks

    • Top Heavy vKillin

    • 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) vKettle 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


    Similar closely related

    similar / closely related

    • Southern CrossvToowoomba 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

    • 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”


    Well known marks

    well-known marks


    Defences s122

    defences – s122

    • 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

    • Person uses sign in good faith to indicate kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services

    • Person uses trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services

    • Person uses trade mark in comparative advertising

    • Person would obtain registration if applied (eg honest concurrent use)


    In good faith

    in good faith

    • 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

    • Wellness Pty Limited v Pro Bio Living Waters Pty Limited

    • no evidence as to reason for choice of name and reason for incorporation


    Prior and continuous use s124

    prior and continuous use – s124

    • 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

    • may be limited to area of Australia


    Remedies s126

    Remedies – s126

    • 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


    Customs

    customs

    • 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


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