Introduction & Trade Marks(Week 1)

Beth Oliak

Intellectual Property Winter Session 2015

• 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 

Origin

(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

• Application accepted or rejected

(3) Opposition proceedings

• Identify grounds of opposition

• Hearing

(4) Registration or refusal

Registration Process

Classes of goods and services

Registration ProcessClass 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

Registration ProcessClass 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.

Registration Process

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.

Registration ProcessTrade 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)

Registration ProcessClass: 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 

Registration ProcessClass 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

Trade Mark – s17

“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.

Trade Mark – s6

Intel Jingle

Nokia ringtone

• 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 

Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (shape trade marks)

• 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

Coca Cola v All-Fect Manufacturers (shape trade marks)

• 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'.

Kenman Kandy v Registrar of Trade Marks (shape trade marks)

• 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

Chocolaterie Guylian NV v Registrar of Trade Marks (shape trade marks)

“Use” is defined in s 7 of the TMA:

• 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))

Note: 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 .

(1) TM must be “used, or intended to be used”

Imperial Group Limited v Philip Morris & Co Limited

• “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

Intention to use

Early Cases:

Batt’s Case (1898 UK case)

• “bona fide” intention to use the mark

Ducker’s Trade Mark (1928 UK case)

• “real resolve, intention and purpose” to use the mark

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))

Defensive Marks