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Weeks 7,8 - Trade marks

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TRADE MARKS (Weeks 7 & 8) INTRODUCTION Definition: Trade mark is a badge of origin. - Personal property: s21 - May be assigned: s106 (in whole or part; with or without goodwill) Traditional Role: signify the origin of goods and services (particular person/entity that is responsible for the particular goods and services): Campomar Sociedad v Nike International. Modern Role: now used to protect the interests of traders as they indicate the quality of a product, as well as advertising it - also provide consumers with a certain level of information and therefore protection May also play a cultural role “may play a significant role in ordinary public and commercial discourse, supplying vivid metaphors and compelling imagery disconnected from the traditional function of trade marks to indicate the source of origin”: Campomar Sociedad v Nike International. Justification: 1. Reduces search costs for consumers: Trademarks make it easier for consumers to identify brands (which facilitates consumer protection), and also makes brand the most significant part of the product. 2. Provides incentives to maintain consistent quality: Trademarks allow consumers to form expectations on quality (based on previous experience, marketing or word of mouth), and there is an incentive not to let this drop in order to maintain the value of the brand. 3. Provides incentives to invest in branding: If there was no protection of the brand mark then no underlying protection 4. Provides incentives for the development of culture and language: Brands can inform culture and language (e.g. Google something) Balance/Tensions: (Value of Marks v Freedom of Speech) 1. The appropriation of valuable generic marks may undermine competition (e.g. someone trade marks the image of baked beans – would restrict others from using that valuable generic image on their products) thus there is a balance between a monopoly of marks and the court’s acceptance of generic marks. 2. Also a balance is struck between challenges to speech and cultural participation (e.g. if someone trade marks a saying – need to question whether it will result in a restricted freedom of speech). Kozinski: trademarks are often selected for their effervescent qualities and then injected with a lot of force into the steam of communication via media campaigns. As such they can gain a lot of communication freight, whilst still allowing the owner to restrict their use. This affects our collective interest in free and open communication. (e.g. Google something?) N.B. Infringement – s120(3) well known marks – can you buy ownership? International Context: TRIPS Agreement: • National treatment: rights conferred by a national system must be available to nationals of other states • Any concessions granted to one nation must be available to all (can’t give concessions to certain areas) Madrid System: • Allows applicants to lodge one international application o Different in that it will cover you in multiple locations o Makes it easier/cheaper to register in multiple areas Advantages Over Common Law: 1. No need to prove reputation (as compared to a passing off action) 2. Registration makes it easier for competitors and others to determine which marks are protected (searchable registry) 3. Property scheme simplifies licensing and assignment N.B. Trade marks are ‘registered rights’ don’t exist on creation like copyright. REQUIREMENTS FOR REGISTRABILITY Elements: s17 Trade Marks Act 1995 (Cth) A) Sign B) Used or intended to be used C) To distinguish goods and services N.B. There is a presumption of registerability. A) SIGN Sign includes ‘any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent or a combination of any of those things’: s6. Here, _____________. IF not within definition: Section 6 is an inclusive definition, and thus the (whatever it is) will not be a sign. IF word: Includes an abbreviation of a word. IF shape: Shapes are now capable of protection, however they must be separate to the function of the product: Philips v Remington. Here, __________. E.g. Guylian (sea horse chocolate), Phillips (rotary razor) IF NECESSARY TO THE FUNCTION OF THE DEVICE: Here, the shape of the (item) is necessary to its function. This is similar to Philips v Remington, where the reproduction of a functional shape of a rotary shaver did not constitute use as a trademark, because it was simply the best design for a rotary shaver. A mark needs to add something extra to the product to distinguish it from other traders, thus here the shape of the (item) could not be trademarked. IF NOT necessary to the function of the device: Here, the shape of the (item) is not necessary to its function, and unlike in Philips v Remington, it will be use as a trademark: Kenman Kandy v Reg of TM IF smell: Similarly to shapes, the smell must add something extra to the product to distinguish it from other traders – it cannot be central to the purpose or function of the device: Philips v Remington. Here, __________. Also requires graphical representation, this is difficult, ______. IF colour: Colours need to be represented graphically – for example the use of a Pantone System (i.e. number colours) or attach specific example. E.g. Cadbury (purple) IF sounds: Sounds need to be represented graphically – for example attaching the score. N.B. There is an argument that representing a sound via a computer recording is essentially a graphical representation (1s and 0s). th E.g. IBM (4 notes), Mr Whippy (green sleeves), 20 Century Fox (theme) B) USED or INTENDED TO BE USED There must be use or intent to use as a trade mark before registration: s27(1)(b). This is an objective test: Johnson v Unilever. (N.B. Prevents mark squatters) IF USE is only descriptive: (e.g. caplets) Here (applicant) uses the mark as a descriptive term, to explain that __________. Similarly in Johnson v Unilever, the use of ‘Caplets’ was not as a trade mark but instead as a description of the contents. Therefore here, _____________. IF applicant has/intends to use the mark: Here, (applicant) [is using OR intends to use] the mark in relation to [goods/services], this would appear to be sufficient: s27(1)(b)(i). IF applicant has delivered SAMPLES or DISCUSSED with PROSPECTIVE licensee: Here, similarly to in Moorgate v Philip Morris, (applicant) has [delivered samples to OR discussed potential use with] a prospective licensee. There it was held that at no time was there any actual trade or offer to trade in the goods bearing the mark in Australia or an intention to offer/supply such goods in trade (434, Deane J). Here, ____________(N.B. need actual use OR a plan to use) _______. IF ONLY INTENTION is to GET MARK not USE IT: (i.e. not genuine use) (e.g. sold product to staff/registered similar name) Here, (applicant) has[done some acts to show use/intended use of the mark]. This is similar to Imperial Group v Philip Morris where the applicant:  Marketed and sold 1 million cigarettes in staff canteen ‘Ghost marketing’  Registered a similar name to preclude someone using theirs ‘Nerit’ instead of ‘Merit’ via ‘de facto protection’ Similarly to there, all (applicant) has tried to do is [gain the mark OR preclude others from using the mark], none of the use was genuine or bona fide commercial use and as such it will not count towards use or intended use. IF applicant has/intends to authorise use of the mark: Here, (applicant) has [authorised OR intends to authorise] another’s use of the mark in relation to (goods or services), this is sufficient: s27(1)(b)(ii). IF applicant intends to assign the mark to a body corporate: Here, (applicant) intends to assign the trade mark to a body corporate that is about to be formed with a view to use by that company, this is sufficient: s27(1)(b)(iii). C) TO DISTINGUISH GOODS & SERVICES In order to avoid rejection the mark must be: s41(2) Either: 1. Inherently adapted to distinguish: s41(3); OR 2. Somewhat inherently adapted and can/will distinguish: s41(5); OR 3. NOT inherently distinctive ; but distinguished because of extensive prior use by the applicant: s41(6) (Go Through Each!) Step 1. Inherently adapted to distinguish: s41(3) Test: “Whether other traders are likely in the ordinary course of their business 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”: Eclipse Sleep v Registrar of TM. Here, ____ (trader in this good/service would also want to use this name)_______(thus deny)_____. • Cannot be acquired (it depends on the trademark itself): Burger King v Reg of TM (Gibbs CJ) E.g. whopper cannot be trade marked as it only describes the size. • Can consider the nature of the range of goods within the class/es registration is sought for and the various ways in which the mark might be used in relation to those goods: Kenman Kandy (Lindgren J) E.g. chocolate in the form of a spider – distinguishes because not used in chocolates & won’t stop later spider shaped candy IF would grant a monopoly over COMMON TERM: The rest is with reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is say, of 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 – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it: Clark Equipment (Kitto J). Additionally there is a natural disinclination to allow any person to obtain by registration a monopoly in what others may legitimately desire to use: Reg of TM v W&G Du Cros (Lord Parker). Thus here, ___(deny)__. IF DESCRIPTIVE: The mark may have a certain meaning that confers up ideas but cannot be totally descriptive; test lies in the probability of ordinary persons understanding the words in the application of the goods, as describing or indicating their nature or an attribute they possess: Mark Foy v Davies (Dixon J @ [6]). Here, __________. Examples: • Nike: not descriptive of sportswear – Greek goddess of victory • Tub Happy: not descriptive of clothes being washed in machine: Mark Foys v Davies. • Burger King: whopper was descriptive of size (Gibbs J @ [8]). N.B. Following are NOT inherently distinguishable; SIGNS INDICATING: s41(6) o Kind o Value o Quality o Geographical origin o Quantity o Other characteristic of good/service o Intended purpose o Time of production/rendering of good/service IF PICTURE: A picture might be just as descriptive as words, and not be distinctive. Examples: • Diagram of a mattress spring not a distinctive mark for a mattress • A kangaroo device was not distinctive of any Australian product (unless perhaps drawn with a very stylised fashion) • Stethoscope twined around a lamp for a doctor’s after hours service not distinctive IF SHAPE: (e.g. chocolate spiders vs Guylian seahorse) Here, the shape of the trademark [is/isn’t] likely to be desired by other (product category) traders and the trade mark [would/woudn’t] leave it open for other (product category) traders to make similar (products). IF IS: Here, the case is arguably similar to Chocolaterie Guylian v Reg of TM. There it was held that there was a degree of likelihood that other traders acting with proper motive would want to use the same seahorse shape or one substantially similar to it: per Sundbeg J @ [62]. Here, ______. IF ISN’T: Here, the case is arguably similar to Kenman Kandy v Reg of TM. There is was held that the shape wasn’t functional for chocolate and wouldn’t cover all bug shapes; thus it would still be open to other traders to make bug shaped candies. Here, __________. IF COLOUR: Difficult to establish distinctiveness in relation to a colour. In Philmac v Reg of TM, held colour would not be inherently distinctive if it – • served a utilitarian function (e.g. through a physical effect such as heat absorption); • conveyed a recognised meaning (e.g. red for danger or green for environmentalism); or • was the naturally occurring colour for the product Even if it did not fall into these categories, inherent distinctiveness would be lacking where there was a proven competitive need for the colour, in the sense that other traders might legitimately wish to use it: Philmac v Reg of TM. Here, _________________. INHERENTLY DISTINGUISHABLE: According to TM Manual (Part 22, 4.1) the following are capable of being sufficiently adapted to distinguish: IF SURNAMES: Para 16 Surnames that are not commonplace; unless they have a meaning which refers to the goods/service in question; additionally the commonness of the name will be judged in relation to the specialisation of the goods/services (e.g. if railway carriages vs clothing less uncommonness required). The SFAS can be searched to show the commonness of surnames – and thus the likelihood that another trader will wish to use the name (SFAS value above 750 is common). IF rare in Australia: ‘Cassini” was registrable for clothing because, although an Italian surname, it was rare in Australia: Cassini v Golden Era Shirt Co. IF PERSONAL AND COMPANY NAMES: First and Last Name: Para 18 Personal and company names that are not commonplace; when both first and last name this reduces the likelihood of others wishing to use it in connection with the goods/service. First and last name is sufficient as long as it and the goods/services aren’t common. Signature: Para 18 A signature can be registered so long as it was genuinely that of the applicant, legible and the one normally used by the applicant or the applicant’s predecessor in business. IF famous person’s name: (e.g. Shane Warne for cricket gear) Cannot register someone else’s name, because it could be objected to on s43 (describes goods as having his approval). Need a justification. Corporate Name: Para 20 Whether they will qualify for registration will depend upon whether other traders, in the ordinary course of trade and without improper motive, are likely to want to use the same trade mark, or a trade mark closely resembling it, on or in connection with their own goods or services. Ordinary names (Best Bakery) will not have enough to distinguish. IF GEOGRAPHICAL NAMES: Para 15 In Colorado v Strandbags, the High Court set out questions to assist in determining whether geographical terms are distinctive or not. 1. Is the name of the place where the goods come from? If yes, it is merely descriptive of where the goods came from and is not distinctive. 2. Is the consumer likely to think that that is where the goods come from? If yes, not distinctive. 3. Is the place or region noted with the goods in question? If yes, not distinctive. Here, ____________(apply)________(add below IFs as applicable)_________. IF company town: (e.g. Bega) If an applicant can show by way of evidence that the town’s reputation originates from its business, registration is possible. IF large town: (e.g. Oxford) Geographic names will usually not be allowed as they are generally not adapted to distinguishing the good/service & because other traders will have a legitimate interest in using the geographical name. Examples: • Michigan: not inherently adapted to distinguish tractors: Clark Equipment v Reg of TM • Oxford: traders will have a legitimate interest in using the oxford name: Oxford Uni Press v Reg of TM (@ 530) • Colorado: word invokes adventure/rugged/trekking and other images of Colorado: Colorado Group v Strandbags (Kennedy J @ [29]). IF fanciful names: (e.g North Pole Bananas) Fanciful uses of geographic name can be distinctive where they are not common enough or obscure. Examples: • Farrah in Afghanistan (no significance with Irish people: Farah TM • Bali (no significance with bras): Berlei Hestia v The Bali Co IF SUPERSEDED GEOGRAPHIC NAMES: (e.g. Rome) Superseded geographical names that have no connection with the goods such as Byblos which is the ancient name for the Lebanese town of Jubayl have a level of inherent adaptation to distinguish that will allow prima facie acceptance. IF WORLD OR CITY MARKS: Para 13 (e.g. Fun World – Comfort City) World of city marks which contain a reference to an attribute of the goods or services such as Speed World, Comfort City. However WORLD or LAND marks which form an expression commonly used to define a particular field of interest or activity will usually possess insufficient capability to distinguish goods or services in that field. Such marks will usually need evidence of use to achieve acceptance. IF INVENTED WORD: An invented word must be clearly and substantially different from any word in common use: Howard Auto v Webb. Phonetic Equivalents: Para 10 (e.g. Chee-Eze OR EXXON & ROHOE) Words consisting of obvious phonetic equivalents, simple combinations, misspellings, minor changes or trifling variations of descriptive words are not, prima facie, capable of distinguishing. However if the word is made of a compound elements of which the source is manifest it may be denied. Novelty is looked for – meaning that the word is more than a combination of existing words which the reader or hearer could at once penetrate: Howard Auto v Webb (Dixon J @ 181) Here, __________. IF unlikely construction: However, unlikely grammatical constructions of words which would otherwise attract grounds for rejection, including inversions, plays on words and portmanteau words (two words telescoped together), may be acceptable. Examples: • “Rohoe”: NOT - farmers would know it was a mere contraction of “rotary hoe” • “Hairfusion” and “cedarapids”: NOT merely conjoining existing words • “Fudrukkers”: YES with respect to hamburgers and restaurant services IF EXPRESSIONS: Expressions not in local common use in respect of the goods and/or services: Off the Wall (Class 25), Chookey Pooh (Class 1), The Cool Conditioners (Class 31), Muscle Machine (Class 28), Porky Bits (Class 29). IF UNLIKELY GRAMMATICAL CONSTRUCTIONS: Unlikely grammatical constructions particularly those that incorporate a misspelling such as Shoprite (Class 42), Besafe (Class 9), Beef Gro (Class 5), Growool (Class 1), Safevue (Class 12), Bi-Lo (Class 42). IF SLOGANS: Slogans with only indirect reference such as Colour Me Beautiful (Class 3), Pardon our Scaffolding (Class 6). Step 2. Somewhat inherently adapted and can/will distinguish: s41(5) As mentioned the mark arguably has some distinctiveness, however now we can look at a mixture of inherent and acquired distinctiveness: s41(5). Consider whether mark: ‘does or will’ distinguish the applicant’s goods or services because of the combined effect of: • the extent to which the trade mark is inherently adapted to distinguish • the applicant’s use or intended use of the mark • any other circumstances Here, ______________________. IF USE with other marks: In Austereo v DMG Radio, the ‘sounds different’ mark acquired distinctiveness through its use with the other Nova marks. Similarly here, the (mark) has acquired distinctiveness through its use _____(explain use)_____. IF use AFTER application: Similarly to Austereo v DMG Radio, however this use occurred after the priority date, and the acquired distinctiveness is required to exist at the priority date. As such it will not have sufficient acquired disinctiveness: (Finn J @ [52]). OR IF use BEFORE application: Here, in contrast, to Austereo v DMG Radio, the use was before the priority date, and will have existed at the priority date, as necessary: (Finn J @ [52]). IF product/service NOT MARKETED SOLELY BY THE MARK: Here, similarly to in Woolworths v BP, the (mark e.g. colour green) has been used by (applicant) but not as a trademark. Consumers would not associate (mark) exclusively with the (applicant). Another example of this is Chocolaterie Guylian v Reg of TM, where Guylian had sold the chocolate seahorses for 30 years, however the seahorse chocolate was never sold by itself – it was always accompanied by ‘Guylian’ thus not used as a trademark. Again in Unilever, it is not enough to prove that the public recognises the mark (e.g. packet shape) as the product of a manufacturer – must show that consumers regard the mark (e.g. packet shape) alone as a badge of trade origin. IF product/service MARK HAS BECOME GENERIC: (E.g. Google) A mark that was not initially descriptive of the goods or services for which it is used may become an industry term and thereby acquire a meaning which now makes it descriptive. If the name is not already registered, it will not be registrable. If it is registered, the exclusive rights are lost with respect to that part of the mark that has become generic. E.g. Esky & Walkman 3. NOT inherently distinctive; but distinguished because of extensive prior use by the applicant: s41(6) A mark is registrable if it is not to any extent inherently adapted to distinguish but extensive prior use establishes that the mark does distinguish the good/service: s41(6) N.B. Section was introduced to deal with cases such as Oxford Uni Press and Burger King because at common law they would have an action for passing off. Here, the mark (mark) has been extensively used by (applicant) for (good/service) for (years). This is arguably similar to: IF good/service ASSOCIATED with MARK BY PERSONS: (e.g. Nike – Sportswear) Here, the (mark) has been used for (years), and persons concerned such as (industry members/general public) closely associate (mark) with (applicant)’s (good/service). This is similar to Blount v Reg of TM, where a company had been selling tools since 1960 and the name ‘Oregon’ was by persons concerned closely associated with a range of chainsaw chains, bars and accessories (Brandon J). (E.g. Whopper = Burger King burger) IF for MARK ASSOCIATED with OTHER GOOD/SERVICE: (e.g. Oxford Videos) Here, the (mark) has not been extensively used by (applicant) for (good/service claimed). This is similar to Oxford Uni Press v Reg of TM, where it was held that ‘Oxford’ was not available in respect of videos, tapes and discs. Here, _____________. For these reasons there has not been extensive prior use distinguishing the mark. IF good/service NOT ASSOCIATED with MARK BY PERSONS: Here, the (mark) has been used for (years), however [very few/no] persons were able to signify an association between (applicant) and the (good/service). This is similar to Ocean Spray v Reg of TM, where they tried to register Cranberry Classic the name of a drink under the Ocean Spray line. However there was no evidence from witnesses that could associate Cranberry Classic with the applicants because it had been used as merely a description of the drink: (Wilcox J @ [41]). Similarly here, ___________. For these reasons there has not been extensive prior use distinguishing the mark. IF MARK is a COLOUR: IF good/service ASSOCIATED with the colour: (e.g. Cadbury Purple) Here, the (mark) has been used for (years), and despite merely being a colour, (applicant) has a number of (industry experts) who are able to identify the colour with the (good/service). As such this case is similar to Re App by Veuve Clicquot, where the colour yellow was held to distinguish the mark because of extensive prior use. IF need to limit the MARK: (e.g. strong need for others to use colour) Here, however similarly to in Darrel Lea v Cadbury, it is unlikely that a mark governing the use of the colour in any good/service would be granted. Instead it is likely that the colour would be granted only in relation to (specific good/service e.g. block chocolate). IF good/service ASSOCIATED with ANOTHER ASPECT (e.g. Name) but NOT MARK: Here, the (mark) has been used for (years), however the use of the (colour) has not been as a mark, but instead as a (background colour). Additionally there is no evidence to show persons associated the (product/service) with the (colour) alone. Secondly others may wish to use the colour in the same manner. For these reasons there has not been extensive prior use distinguishing the mark. OTHER OBSTACLES TO REGISTRATION IF mark is SCANDALOUS: A mark can be denied registration if it is scandalous: s42(a). Here mark [is/isn’t] arguably scandalous because it [would/wouldn’t] be likely to be seen by most people as obscene and offensive and/or capable of occasi
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