VIEWS: 37 PAGES: 15 POSTED ON: 1/21/2011
Trademarks Function of a Trademarks – Page 498 1. The high court recognises the broader cultural significance in the modern era such that they can „play a significant role in ordinary public and commercial discourse, supply vivid metaphors and compelling imagery disconnected with the traditional function of marks to indicate source or origin of goods‟. a. Campomar Sociedad, Limitada v Nike International Ltd Step 1 – Is the Trademark Registrable ? 1. S17 – 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. a. A „sign‟ includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or any combination of these things. Elements of the s17 definition A sign 1. A sign is defined to include several product attributes (shape, colour, sound and scent etc) that has not previously been recognised as the basis for a mark. Distinctiveness 2. The mark must be distinctive of the applicants product. a. S41(2) – An application be rejected if the trademark is not capable of distinguish the applicants goods or services in respect of which the mark is sought to be registered. b. Distinctiveness - The concept of distinctiveness is familiar to the one of passing off. The whole question of whether a trader can succeed in passing off revolves around providing protectable goodwill in mark or in some other indicium of reputation. Distinctiveness has two aspects, acquired and inherent ability to distinguish. i. Acquired – Acquired capability to disntugish comes from use of the trademark in the marketplace, in the same way that a reputation is generated for the purpose of an action in passing off. Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. ii. Inherent – Inherent ability to distinguish requires something about the mark itself which makes it unique in the content of its application to the applicants goods or services. c. MID Sydney Ptd Ltd v Australian Tourism Co Ltd i. In deciding the question of whether or not a trademark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must fire take in to account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons. Are names and signatures distinctive ? - PAGE 521 1. Names a. The representation has to be „sufficiently out of the common to strike the eye as being peculiar, and by peculiar I mean not likely to occur to somebody who merely wishes to represent the word‟. i. Standard Camera Ltds Application b. A person whose name is used in a mark might be a company or other business entity as well as an individual and their full name must appear. 2. Signatures a. A signature could be registered so long as it was genuinely that of the application and was legible and the one normally used by the applicant or the applicants predecessor in business. i. Re Application by Belle Jardiniere ii. Barry Artist Trademark Are invented words distinctive ? - PAGE 522 1. An invented word must be „clearly and substantially different from any word in common use‟ a. Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd 2. This infers that a word which was new in the sense of not appearing in any dictionary would not be „invented‟ if it had a meaning apparent to the section of the community concerned to buy the goods or use the services for which the word was to be used as a trademark. Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. Are descriptive words distinctive ? - PAGE 523 1. If a mark does no more than describe the type or quality of product on offer, it cannot fulfil the function of indicating the origin of that product. This includes descriptive pictures and devices including sets of initials. a. Pictures – Eclipse Sleep Products Inc v Registrar of Trademark b. Devices – Re Brandella Pty Ltd 2. Mark Foys Ltd v Davies Coop & Co LTd a. Tub Happy trademark b. High court found it to be valid suggesting: i. „They have an emotive tendency, but they do not appear to convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the goods.‟ 3. Acquired descriptiveness through use – a. S41(6) – Marks may be registered if they have acquired distinctiveness through use. i. Blount v Registrar of Trademarks 1. Evidence was presented that the applicant had used the mark in one form or another since before 1960 and that its products had been strongly promoted under that name and the general public had a solid understanding that power tools were associated with that name. Are geographical words distinctive ? - PAGE 526 1. A geographic name is one where the primary and obvious meaning of a word supplies a reference to locality. a. Magnolia Metals Co Trade mark i. „a word does not become a geographical name simply because some place upon the earths surface has been called by it‟ 2. There is no express restriction upon the registration of geographic names in the 1995 Act however such names are obvious examples of non-distinctive marks and in most cases will be rejected under s41(2). 3. A trader who appropriates a place name as a trade mark may deny it to others who are quite legitimately wishing to use the name to indicate the source of their goods. Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. Are surnames distinctive ? - PAGE 527 1. S24(1)(d) – According to their ordinary meaning, surnames are not registrable. 2. As a general practice, the Registrar will raise no objective to a surname that shows up less than 750 times in the SFAS (Search for Australian Surnames) a. Trademarks Manual of Practice and Procedure Are shapes distinctive ? - PAGE 528 1. S6 – The inclusion of terms such as „shape‟ and „aspect of packaging‟ in the definition of „sign‟ in s6 suggest that shapes are now registrable. a. Coca-Colas Trade Marks – i. Accepted the application for the shape of the bottle 2. Kenman Kandy Australia Pty Ltd v Registrar of Trademarks a. Millennium Bug Candy i. Lindgren J is not convinced that a shape mark can ever be inherently distinctive because consumers would not tend to think of the shape of goods as signifying their origin. Are colours distinctive ? - PAGE 529 1. Registration of colours as trademarks does not overcome the difficulty in establishing distinctiveness, especially for a single colour as opposed to a combination. a. Philmac Pty Ltd v Registrar of Trademarks i. An application as made for the colour terracotta in relation to fittings for irrigation pipes and was accepted. ii. It chose this colour to deliberately distinguish its goods from those of others. iii. Mansfield J: 1. A colour would not be inherently distinctive if it served a utilitarian function or conveyed a recognised meaning 2. Inherent distinctiveness would be lacking where there was a proven competitive need for the colour in the sense that other traders might legitimately want to use it. Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. Used or intended to be used – Page 505 1. S7(4) – States that a reference to the use of a mark in relation to goods means to use the mark upon those goods or in physical or other relation to them. a. S7(5) – Similarly for services. b. Mark Foy‟s Ltd v Davies Coop & Co Ltd where it was determined that „trademarks used in a comparative sense, are not considered to be have been used as trademarks‟, or more succinctly, if use of a trade mark is not intended to „indicate the origin of goods or services‟ then there is no infringement. 2. The property in a mark arises from use or proposed use. In order to apply for registration of a mark, an applicant must satisfy one of three criteria set out in s27(1)(b): i. That the applicant is using or intends to use the mark in relation to the relevant goods or services; ii. That the applicant has authorised or intends to authorise another‟s use of the mark in relation to those goods or services; or iii. That the applicant intends to assign the mark to a body corporate that is about to be form, with a view to the use by that company of the trade mark in relation to the goods or services. Distinguish goods or services – Page 507 1. Trademarks have no life of their own and it is only when used to „distinguish‟ goods or services that they fall within the definition of s17. 2. In order to distinguish goods and services, it is required that they are „distinctive‟ as referenced above. Dealt with or provided in the course of trade – Page 507 1. The connection in the course of trade which a trade mark indicates is a connection between the relevant goods or services and the person who has the right to use the mark, either as a proprietor or authorised user. 2. Aristoc Ltd v Rysta Ltd a. The essential nature of a trademark is that it gives an indication of the origin and not that someone has dealt with a product in some other way. If the mark does no more than indicate by whom or where the product was originally made, then the necessary connection will not be established. Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. Step 2 – Process of Registration ? General 1. S19(1) – A trademark may be registered in respect of goods, services or both goods and services. 2. s20(1) – “when a trade mark is registered, the registered owner of the trade mark obtains the exclusive right to use the trade mark and to authorise other persons to use the trade mark”. Decision to Accept or Reject – Page 513 1. S33(1) – Application must be accepted unless the registrar is satisfied that the application has not been made in accordance with the Act, or that there is suitable grounds for revocation. 2. The grounds for rejection include: a. S10 – Is already on the registrar ? b. S39 – Consists of certain prescribed signs c. S40 – Cannot be presented graphically d. S41 – Lacks distinctiveness e. S42 – Is scandalous or contrary to law f. S43 – Is likely to deceive or cause confusion because of some connotation in the mark or because its similarity to another registered mark (s44). S44 – Similarity to other Registered Marks **IMPORTANT** PAGE 531 1. To invoke s44: a. There must be another mark which has already been registered or for which registration has been sought, and which has an earlier priority date. b. The mark must be „substantially identical‟ or „deceptively similar‟ to the applicants mark; c. If the applicants mark is to be registered in respect of goods, the registration or application for registration for the other mark must be in respect of „similar goods or closely related services‟ (s44(1)); d. If a service mark is involved, apply the above logic to services s44(2). Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. Substantial identity or deceptive similarity - PAGE 532 1. S10 – deems this to exist when one mark so nearly resembles the other that it is likely to receive or cause confusion. Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Propositions set out by Kitto J include: i. To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient. ii. A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary entertains a reasonable doubt. iii. In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquires of the goods and services. iv. The question of deceptive similarity must be considered in respect of all goods or services coming within the specification of the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the marks. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained. Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd  2 NZLR 50 “Deceived” implies the creation of an incorrect belief or mental impression and “causing confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicants mark come from some other source and confused to being caused to wonder whether that might not be the case” S44(3) – Honest concurrent use 1. S44(3)(a) permits the Registrar to accept the registration by different proprietors of substantially identical or deceptively similar marks where there has been honest concurrent use of those marks, subject to any conditions or limitations the Registrar might choose to impose. Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. Step 3 – Infringement, Deception and Confusion ? S120 – PAGE 554 1. The integral difference between s44 and s120 is that under s44, a trademark is rejected on the basis that it is substantially or deceptively similar to an existing mark and therefore rejected – under s120 there has been actual infringement. S120 provides that a mark may be infringed in any one of three ways: a. 120(1) – By use of a sign which is substantially identical or deceptively similar to the plaintiffs mark in relation to the goods or services in respect of which the trademark is registered. b. In determining whether the defendant has “used” the plaintiffs registered trade mark in a „substantially identical‟ or „deceptively similar‟ manner which would constitute infringement, it would be prudent to analyse both the statutory and common law definitions of these terms. „Substantial Identity‟ is not defined in the Trade Mark Act 1995, and is measured subjectively through a „side by side test‟ which „assesses the similarities and the differences of the marks essential features‟. Conversely, „deceptively similarly‟ is defined by s 10 and is solely based on terms of impression. Propositions set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd seek to refine and extend these definitions further. c. As in Australian Wine Importers Trade Mark 1989, the „surrounding circumstances‟ relating to the goods, as defined by Parker J in Pianotists Co‟s Appri, are entirely different. This is further extended by Gault J findings in Mainland Products Ltd V Bonlac Foods where it was implied that a direct trade mark infringement can only occur for the use of a trade mark in the same class, and through an examination of „all (the) surrounding circumstances. The intention of any defendant to use a trade mark for description purposes only is irrelevant if its „normal meaning gives no particular description of the product‟. d. Furthermore, the description illustrated in the evidence suggests that the likelihood of connection between the plaintiff and defendants markings would not be sufficient to indicate goods of a „substantially identical or deceptively similar‟ nature. In this regard alone, s 120 (1) cannot be substantiated on any „substantially identical or deceptively similar‟ basis in the respect of a „side by Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. side‟ or „impression‟ tests as in Shell Co Aust Ltd v Esso Standard Oil Aust Ltd. Furthermore, the description illustrated in the evidence suggests that the likelihood of connection between the plaintiff and defendants markings would not be sufficient to indicate goods of a „substantially identical or deceptively similar‟ nature. S120(2) – By use of a substantially identical or deceptively similar sign on goods or services not covered by the registration but which are nonetheless ‘of the same description’ or ‘closely related’, unless it can be establish by the defendant that such use if not likely to deceive or cause confusion. a. s 120 (2) specifically implies that if there is no intention to deceive or cause confusion, then there is no infringement. In applying the tests from John Crowther & Sons (Milnsbridge) Ltd Appn which determined whether two products serve the same purpose.......................... - since the two products do not serve the same purpose as each other and nor are they usually produced by one and the same manufacturer. b. Thus, as highlighted in Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, the degree to which a “person of ordinary intelligence and memory” is likely to be confused in this instance, is decisively non-existent. It is in this regard, that the plaintiff cannot rely on the pretences set in s 120 (2) as reasonable grounds for infringement. Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. S120(3) – By use of a substantially identical or deceptively similar sign on unrelated goods or services, but only where the plaintiffs mark is so well known in Australia that the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark, such that the owners interests are likely to be adversely affected. a. Finally, the first plaintiff has also brought action under s 120 (3) regarding a plausible “trade connection” between the product and its “well known trademark on unrelated goods or services”. b. Is there a distinctive trading presence ? If so, to what degree would the product cause confusion in the market place ? a. This was illustrated in the McIllhenny Company v Blue Yonder Holdings Ltd where there was an “absence of representation of connection between (the plantiff) and the defendant”. The degree to which the plaintiff is known by a “person of ordinary intelligence and memory” for Class 33 goods is distinctly non-apparent, and it is in this sense that s 120 (3) also holds no reasonable grounds for infringement. Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. Tort of Passing Off – Page 424 The broad actions taken under the Tort of Passing Off are designed to prevent a trader from damaging another traders reputation or goodwill in the sense of causing potential customers to associate one traders product or business with another‟s where no such connection exists and this is extended, but not limited to, the „get-up‟ of the product as well as its general appearance. Passing off has been comprehensively defined by Lord Oliver in Reckitt & Colman Products Ltd v Borden Inc, and extended by Pearl J in Moorgate Tobacco Co Ltd v Philip Morris Ltd. It‟s relevance in this case is derived from the plaintiffs belief there has been a misappropriation made during the course of trade that is sufficient enough to mislead or confuse a consumer, and as a consequence, would damage the plaintiffs goodwill or reputation in the marketplace. In Hogan v Koala Dundee Pty Ltd, Pincos J suggested that there are 3 main tests the must be satisfy to prove passing off. Typically, there is casual connection between the 2nd and 3rd tests such that if the second test occurs, then the third is going to as well: The plaintiff‟s goods/business have an established reputation; The defendant‟s actions will cause purchasers to believe the defendant‟s goods/business is that of the plaintiff; and The plaintiff has suffered, or is likely to suffer, damage. First Element – Reputation – PAGE 425 The first element of passing off requires that the plaintiff must have a sufficient reputation in the market place for misrepresentation or damage to actually occur. ConAgra Inc v McCain Foods (Aust) Pty Ltd highlighted that it is not necessary to prove specific reputation within an industry exists, if a broad reputation is already evident. As in Emrik Sporting Goods Pty Ltd v Stellar International Sporting Goods Pty Ltd, passing off must establish that that (if) members of the public had purchased a product, or were likely to do so, in the belief that it emanated from a particular (other) source. Definition Reckitt & Colman Products Ltd v Borden Inc  RPC 341 at 406. Lord Oliver: 1. The trader‟s get-up, including the brand name or business name, is recognised by the public as distinctive (ie the trader has established a reputation); 2. There has been a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by the defendant are the plaintiff‟s goods or services;4 and Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. 3. The plaintiff suffered, or is likely to suffer, damage by reason of the erroneous belief engendered by the defendant‟s misrepresentation that the source of the defendant‟s goods or services is the same as the source of those offered by the plaintiff. If reputation exists: 1. The Targetts Pty Ltd v Target decision can be reflected appropriately in this case since the defendant already has a well established reputation in the Australian wine industry. 2. Any further contention presented by the plaintiff in respect of damage to their reputation by the defendants use of the word „Virgin‟, can be argued by means of „descriptive material‟ as highlighted in BM Auto Sales Pty v Budget Rent A Car Systems Pty Ltd Second Element – Intention to Deceive - PAGE 427 1. Passing off can still occur where, as suggested in A G Spading & Bros v A W Gamage LTD, the “defendants conduct has misled, deceived or confused a significant number of persons in the market place”. 2. The description provided of the defendants product, is substantially different from the established insignia of the plaintiffs products and reputation. The ability for a “person of ordinary intelligence and memory” to be “misled, deceived or confused” in the market place is both non-apparent and unfounded. The defendant has produced a clearly distinguishable item, and as decided in Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd, there is no possibility of “relevant misrepresentation in the sense that customer, or potential customers, (would be) led by similarities in the get-up and advertising of the two products into believing that the (plaintiffs) products were the (defendants) products”. In direct contrast to the Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd case, the defendant is in no way attempting to „deceive or mislead‟ the public by using the plaintiffs existing reputation or „get-up‟. Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. S52 of the TPA – Page 447 S52 - 1. A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. 2. Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of sub-section 1. ‘a corporation’ – Page 447 1. As defined by s6 of the Act to mean a natural person or business entity, where the conduct is carried on interstate, or with overseas trade or involving a terrority or through the use of postal, telegraphic or telephonic services. ‘in trade or commerce’ – Page 448 1. Re-Ku-ring-gai Co-operative Building Society Ltd a. The terms „trade‟ and „commerce‟ are not terms of art. They are expressions of fact and terms of knowledge .... The terms are clearly of the widest import...as being at arms length in the sense that they are within open markets or between strangers or have a dominant objective of profitability‟ ‘engage in conduct that is misleading or deceiving’ – Page 448 1. S4(2) – The phrase „engage in conduct‟ is defined very broadly so that for instance even inadvertent omissions are included. 2. No definition of „misleading or deceiving‟ is provided but the basic notion is clear: a. Weitmann v Katies Ltd i. Conduct is misleading or deceptive if it „leads to error‟ or is likely to do so. 3. As described in Hutchence v South Sea Bubble Company a. Who is the person being engaged by the corporation ? i. Is the message to this person likely to cause confusion or lead to error ? ii. If it is, then it is misleading and deceptive conduct Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. Step 4 – Are there any defences for Trademarks ? Good Faith – PAGE 564 1. S122(1)(a) - Use in good faith of the defendants own name or place of business or a predecessors name or place of business. a. Good Faith – As defined in Baume & Co Ltd v A H Moore Ltd i. „ If the defendant honestly believes no confusion will arise and are not intending to wrongfully divert business‟ 2. S122(1)(b) – Use in good faith of a description of the character or quality, intended purpose, geographical origin or some other characteristic of the defendants goods or services. a. Britt Allcroft LLC v Miller – i. Some objective description of the goods or services or of a feature of the goods or services by reference to commonly used and understood qualities. 3. S122(1)(c) – Use in good faith to indicate the intended purpose of goods or services in particular use of goods as accessories or spare parts. Reputation 1. S122(1)(f) - Use of a mark, or of a substantially identical or deceptively similar mark, by a person who the court believes would obtain registration of that mark in their own name if they applied. Descriptive Use 1. Generic use of a registered trade mark in such a way as to avoid infringement occurs when a word or phrase „is capable of being read as descriptive of a characteristic quality or function of the goods in question‟. a. Top Heavy Pty Ltd v Killin 2. Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd a. The use of „Kettle Cooked‟ in relation to potato chips did not infringe the mark Kettle. For similarity in Product Shape – See page 559 Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs. Step 5 – Remedies and/or Damages ? Remedies for Trademarks – PAGE 565 General 1. S126(b) – Where infringement is establish, a court may grant an injunction and either damages or an account of profits at the plaintiffs option. Action for Threats 1. S129 – As with copyrights and patents, it is unlawful to threaten that infringement will be instituted. a. Note: If infringement proceedings are commenced after much due diligence then it is acceptable to institute that infringement will be instituted. i. Dial-An-Angel Pty Ltd v Sagitaar Services Systems Pty Ltd Criminal Liabilities 1. s145- Falsifying a mark or unlawfully removing a mark and applying a mark to goods or services without authorisation to do so (s146). 2. S148 – Prohibition of commercially dealing with goods knowing that, reckless or not, a falsified mark has been applied or a mark has been removed or a mark has been falsely applied. Remedies for Passing Off – PAGE 435 1. Principle remedies for passing off are that the defendant is restrained from engaging or continuing to engage in the conduct which has triggered the suit. 2. Besides the injunction the relief, ancillary orders may sometimes be granted such as for the transfer to the plaintiff of the right to use a particular name. a. As in the instance that domain names have been improperly used b. Australian Home Loans Ltd v Phillips Remedies for S52 TPA - 450 1. S52 does not attract criminal liabilities but a range of civil remedies are available. a. S82 – A person who has suffered loss or damage as a result of contravention may recover damages in respect of that loss from the contravener or from any person involved in the contravention. b. S87 – Injunctions or damages or at the discretion of the court, including potential losses that could result from the future activities because of infringement. Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes and Questions to Law Clerkships and Jobs.
Pages to are hidden for
"Trademarks Function of a Trademarks – Page 498 The high court "Please download to view full document