BTC3300 Study Guide - Final Guide: Polaroid Corporation, Aldi
13 Jun 2018
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Style of answer for Homework exercise.
Question 1 b) For five years your company has operated several vegetarian restaurants in Victoria is
now looking to move into other states. You have registered the trade mark EXPRESSIONS for
restaurat series. Yet in South Australia, since December 1998 DCM has run a car detailing
business called CREATIVE EXPRESSIONS in Adelaide. In March 2008 they set up a small coffee and
sandwich bar within his workshop, selling to customers only at first but later to passersby. DCM
applied to register their trade mark for automotive services and coffee bar services in June 2000 and
the application has been advertised as accepted.
(10 marks)
This question is can you oppose for the registration of a trade mark that has been advertised as being
accepted i DCMs ae reatie Epressios based on your use of a registered trade mark for five
years so 2011-2016 in name EXPRES“ION“ for restaurat series.
Opposition proceedings by s57 Trade Marks Act 1995 (Cth) arise if their mark is likely to cause
confusion or deceive the public when used. This thus is conflict of registered mark against an
unregistered as Creative expression has not been registered.
The mark Creative expressions is substantially identical (side by side test Polaroid Corporation v Sole
N Pty Ltd [1981] 1 NSWLR 491 – to assess the similarities and differences of the words and appearance)
or deceptively similar (by s10 TA so nearly resembles the registered mark so is an impression test
looking at the recollection of the consumer to the mark McDonalds in Re app by McDonalds Corp
(1986) 9 IPR 509). So is CREATIVE EXPRESSIONS substantially identical or deceptively similar to
Expressions registration? Side by side Creative expressions not identical as the word creative
differentiates it from the word expressions. On the issue of deceptive similarity the Aldi Stores Ltd
partnership –v– Frito-Lay Trading Company GmbH (2001) 190 ALR 185; 54 IPR 344 or can indicate that the
word Expression is the dominant part and so would be deceptively similar. The converse argument is
that the word creative is dominant in the minds of the consumers as an impression, and also
differentiates the word expression from the generalist word on its own.
Decide either way on the s57 argument.
s 60 TA oppositio ou that DCM uregistered ark is sustatiall or deeptiel siilar to a
unregistered mark that has been used and thus obtained a reputation in Australia prior to the
registration or proposed registration of your mark so it would deceive or cause confusion in the
marketplace. See Case on this is DC Comics Ltd v Chequout Pty Ltd [2013] FCA 478, aout “upera
orkout. DCM ill state that the hae otaied a reputation in the word creative expressions and
so in the word expressions from use of the name since 2000 in relation to a coffee shop in a car
detailing shop which can be extended to coffee shops as they are similar goods to restaurant services.
Counter argument is to prove they are not known outside Adelaide and the car detailing industry for
providing coffee and cakes. You would argue that it is not known outside this detailing shop in Adelaide
and thus it is not deceptively similar and not cause confusion as few customers in Victoria would be
misled.
This issue can be argued either way. Students to decide one way or other on issue of s60 argument.
Students to decide who wins overall.
find more resources at oneclass.com
find more resources at oneclass.com
Document Summary
Question 1 b) for five years your company has operated several vegetarian restaurants in victoria is now looking to move into other states. You have registered the trade mark expressions for (cid:862)restaura(cid:374)t ser(cid:448)i(cid:272)es(cid:863). Yet in south australia, since december 1998 dcm has run a car detailing business called creative expressions in adelaide. In march 2008 they set up a small coffee and sandwich bar within his workshop, selling to customers only at first but later to passersby. Dcm applied to register their trade mark for automotive services and coffee bar services in june 2000 and the application has been advertised as accepted. (10 marks) Opposition proceedings by s57 trade marks act 1995 (cth) arise if their mark is likely to cause confusion or deceive the public when used. This thus is conflict of registered mark against an unregistered as creative expression has not been registered. The mark creative expressions is substantially identical (side by side test polaroid corporation v sole.
