this product is unavailable for purchase using a firm account, please log in with a personal account to make this purchase.

Make your mark register

Feature Articles

Cite as: (2004) 78(9) LIJ, p. 48

The value of a trade mark lies in its ability to attract customers and it is this value that is best protected by having it registered.

By Ian Horak

Trade marks allow consumers to distinguish the goods or services provided by one trader from those of another. Examples of well-known trade marks come easily to mind because they are successful in attracting us as consumers. It is this commercial magnetism which a trade mark registration seeks to protect.

The benefits of registration

The Trade Marks Act 1995 (Cth) (the Act) provides a scheme for the registration of trade marks and the enforcement of registered trade marks. Registration supplements, rather than replaces, the common law tort of passing off. A registration scheme was implemented because it was thought that passing off failed to provide sufficient protection.

The rights given by the Act are a result of registration rather than use. In contrast, passing off is based solely on use of the trade mark and the reputation or goodwill attached to it. Reputation of a common law, or unregistered, trade mark and misappropriation of that reputation by an alleged infringer is often difficult to prove. Even if a reputation can be proven then it may only extend to a limited geographical area.[1]

The Act provides a registered owner with broad rights to prevent others from using conflicting trade marks. These rights are exercisable without having to prove reputation. Consequently, the registered owner is placed in a better position than is the case at common law.

The Act also provides that an owner may obtain registration before use of the trade mark has commenced. This allows one to secure rights before committing resources to developing a reputation in the trade mark.

Legal advisers should assess their client’s business and consider the potential value of registered trade marks. The question to be asked of the client is whether they would be concerned if a competitor was using the same or a similar trade mark? If the answer is yes, serious thought should be given to getting registered.

Definition of a trade mark under the Act

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”: s17. A sign is “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”: s6. Any of these signs can be registered subject to the Act’s registrability criteria.

Trade mark searching

Once the client has chosen a trade mark, a search should be conducted to ensure that it is available for use and registration. The expense of conducting a search is often justified as it reduces the risk of infringement proceedings being brought against the client and/or the time and cost of a refused application.

Trade mark searches can be conducted using the database known as ATMOSS hosted on the IP Australia website.[2] All variations of the trade mark, such as phonetic variants, visual variants and common misspellings should be searched to ensure identification of every trade mark on the Australian Trade Marks Office Register (the Register) that could potentially restrict the client’s use and/or registration.

Filing an application

A trade mark application is filed at the Australian Trade Marks Office (IP Australia) by filing a paper copy of the application through the main office in Canberra or through one of the state sub-offices. Alternatively, applications may be filed electronically through the IP Australia website. The standard forms for filing and prosecuting a trade mark application can be downloaded from the IP Australia website.

Minimum filing requirements require that the application must:[3]

  • state the application is for a trade mark;
  • include representations of the trade mark;
  • specify the goods and/or services for which the application is made;
  • identify the applicant; and
  • include an address for service.

The appropriate fee should accompany the application.[4] If the application is for a series, certification or defensive trade mark then further information particular to those specific types of applications will also be required.

Special caution should be exercised when completing the statement of goods and services in the application. It is vital to obtain detailed instructions as to the client’s present and proposed use of the trade mark. If the statement of goods and services is too broad, unnecessary conflict with other registrations may result. If the statement is too narrow then it may fail to provide the client with complete protection.

The statement of goods and services must be completed according to the NICE classification system. This system categorises goods and services into 45 classes (34 classes of goods and 11 classes of services[5]). For example, the statement of goods and services for a trade mark to be used by a manufacturer of clothing and related items may read “Class 25: Clothing, footwear and headgear”. Where the client wishes to cover additional goods outside the specified class then it will be necessary to add further classes to the application. The application fee (and registration fee) will depend on the number of classes contained in the application.

Each application has a priority date from which the application will be assessed. This is the filing date of the application, except where the application is associated with an earlier filed application.

Examination

An IP Australia officer will examine the trade mark application to ensure that it complies with the substantive requirements in Part 4 Division 2 of the Act. A non-expedited standard application is examined about six months after filing. Examination can be expedited by filing a request together with a declaration outlining the reasons for expedition,[6] in which case the application can be examined as early as one month after filing an expedition request.

If no objections are raised during examination then the application will proceed to acceptance.

If an objection is raised then the examiner will issue a first report. This triggers the commencement of the 15-month prosecution period (which can be extended for a further six months,[7] if necessary). The application must be accepted within this period.

Objections relating to the statement of goods and services
One of the most commonly raised objections relates to the incorrect classification of goods and services. If this objection is raised then the examiner usually suggests an appropriate amendment to overcome the objection. The goods and/or services must be listed precisely together with the corresponding class number. The phrase “all goods/ services in this class” is not permitted.

Prohibited words
A trade mark will not be registered if it includes a prohibited or prescribed sign.[8] If it does, an objection will be raised. Examples of prohibited signs are the Coat of Arms of the Commonwealth of Australia, the word “Patented” and the word “Austrade”.

Graphical representation
The Act requires that the trade mark be capable of being represented graphically: s40. Difficulty arises where the trade mark is a sound or smell. If it is, the application should include an endorsement which describes the trade mark and if necessary, refers to a sample of the trade mark. For example, Australian Trade Mark Registration No 796747, registered to Effem Foods Pty Ltd for pasta sauces, has an endorsement which reads “The trade mark is a sound mark. It is a tune resembling a Sicilian waltz as indicated in the musical notation attached to the application. The sound is also recorded on the accompanying cassette tape”. This trade mark is also known as the “Dolmio jingle”.

Capacity to distinguish
A trade mark distinguishes the goods or services of one trader from those of another. Where the trade mark cannot fulfil this function then an objection will be raised under s43 of the Act.

Capability to distinguish relies on the concept of “inherent adaptability”. Inherent adaptability is assessed by asking whether other traders would, without improper motive, wish to use that trade mark on the goods or services in question.[9]

An example of a trade mark which is inherently adapted to distinguish is the word “Kodak”. This word has no meaning other than an association with the company of the same name. At the other end of the scale are trade marks having no inherent adaptability such the words “Cranberry Classic” when used in relation to fruit drinks.[10] Other traders may, without improper motive, wish to use those words in relation to fruit drinks.

The Act divides trade marks into the following three categories depending on the amount of inherent adaptability to distinguish, being (1) those which are inherently adapted to distinguish; (2) those which have some inherently adaptability to distinguish; and (3) those which have no inherent adaptability to distinguish. Generally speaking, the less inherent adaptability to distinguish, the more difficult it is to achieve registration, as more evidence is required that the trade mark will or does distinguish through use.

Scandalous or contrary to law
An application will be rejected if the trade mark is scandalous or contrary to law: s42. Whether a trade mark is scandalous or not depends on whether an ordinary person would find the trade mark offensive.

The trade mark is contrary to law where its use is prohibited by legislation or court order. This ground was used successfully to defeat a trade mark application in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd.[11] In that case, the court found that the trade mark should be rejected because its use would amount to copyright infringement.

Likely to deceive or cause confusion
A trade mark will be rejected where it has some connotation which is likely to deceive or cause confusion: s43. This may occur where the trade mark gives mistaken information as to the character, quality, geographical origin, intended use or purpose or endorsement of the goods and/or services.

Conflicting trade marks
The examiner will conduct a search of the Register to identify any citations, being registrations or pending applications which conflict with the application. A proper citation must have a priority date earlier than the application in question; be substantially identical or deceptively similar to the trade mark applied for; and be for similar goods or closely related services: s44(1).

(i)

Citation having an earlier priority date: The citation must have an earlier priority date than the application. If the citation is pending then the prosecution period can be deferred until the citation is either registered or rejected;

(ii)

Substantially identical or deceptively similar: The test as to whether a trade mark is “substantially identical” to another requires that the two trade marks in question be placed side by side, noting the similarities and differences. An assessment is then made of the essential features of both trade marks and of the total impression of resemblance or dissimilarity which emerges from the comparison.[12] For example, in Microcom Systems, Inc v Microcom Pty Ltd,[13] the trade marks “MICROCOM” and “MICROCOM NETWORKING PROTOCOL” (both for computer related goods) were found to be substantially identical.
The test for “deceptive similarity” is a broader test than that used to assess whether two trade marks are substantially identical. An assessment of deceptive similarity focuses on the impression left by the trade mark applied for on the one hand and the citation on the other. The focus is on the general impression and recollection of the trade mark through the eyes of the consumer. For example, in Hoover Co (Australia) Pty Ltd v Spackman (No 2),[14] the trade mark “HOOVEX” was found to be deceptively similar to “HOOVER”; and

(iii)

Comparison of goods and/or services: The question for comparison of goods and/or services is whether a conflict will arise between the goods (or services) of the application and those of the citation. This will require consideration of the similarities and dissimilarities in:[15]

  • the nature of the goods or services;
  • the respective purposes or uses of the goods or services; and
  • the trade channels through which the goods or services are bought and sold.

Overcoming citations
If a citation is correctly raised it may be possible to narrow the statement of goods and services to remove any conflict with the citation.

The owner of the citation may be willing to provide a letter to IP Australia stating that it does not object to the application proceeding to registration. This will only assist where there is no real likelihood of deception or confusion arising. Caution should be exercised in approaching the owner of a citation as it will place the owner on notice of the client’s application. This may invite an opposition or, if the client is using the trade mark, an action for infringement.

Additionally, it should be noted that provisions in ss44(3) or 44(4) of the Act provide for registration of the trade mark despite a citation. These provisions allow registration to an “honest concurrent user” or a “prior continuous user”.

The honest concurrent user provisions provide the examiner with the discretion to accept the application where it can be shown that the applicant has honestly adopted the trade mark and made substantial use of it without deception or confusion.

The prior continuous user provisions provide that the application should be accepted despite the citation if the applicant can show that it continuously used the trade mark, on the goods and services for which registration is sought, before the priority date of the citation.

If the examiner applies either of these provisions then he or she will notify the owner of the citation, potentially inviting an opposition.

The prosecution period gives the applicant an opportunity to respond to any issues raised by the examiner. Responses to the examiner are typically made in written form. The examiner will consider the response and will either direct that the application proceed to acceptance or issue another report. If the application is accepted it will then be advertised in the Official Journal of Trade Marks.

If the examiner does not accept the response then a further report detailing the outstanding objections will be issued. The applicant then has until the prosecution period expires or the examiner rules that an impasse has been reached to overcome all objections. If all of the objections cannot be overcome then the application will either lapse or be rejected.

Opposition

Opposition is a process conducted before IP Australia where third parties are given an opportunity to challenge an accepted trade mark application prior to registration.

Filing a notice of opposition
An application can be opposed by any person; there is no requirement of standing. An opposition is initiated filing a notice of opposition detailing the grounds for opposition. A notice of opposition must be filed within three months of the application being advertised as accepted.[16] It must also be served on the trade mark applicant.

Grounds for opposition
The grounds for opposition include those grounds for which an application can be rejected during examination. Additional grounds are also available in Part 5 Division 2 of the Act. Two frequently cited grounds for opposition are proprietorship[17] and prior reputation.[18]

The ground of proprietorship requires the opponent to show use of a substantially identical trade mark to the one being opposed. Such use must have commenced prior to use by the applicant.

The ground of prior reputation requires that there be a (registered or unregistered) trade mark which has acquired a reputation such that use of the opposed trade mark is likely to deceive or cause confusion.

Service of evidence
Each party has an opportunity to present evidence in the form of one or more statutory declarations.

The opponent should file and serve evidence in support within three months of filing the notice of opposition. The applicant has three months to file and serve its evidence in answer. The opponent may then serve any evidence in reply within three months. Additional time for the service of evidence may be granted where an extension application is filed before the expiry of the deadline for service of evidence.[19]

Hearings
IP Australia will write to the parties asking whether they wish to be heard once the evidentiary stages have been completed. If the parties wish to continue they may chose to either (1) rely on the material already filed and served; (2) file written submissions for consideration; or (3) have a representative present its case at a hearing before a delegate of the Commissioner of Trade Marks. Hearings are conducted at IP Australia in Canberra or at one of the state sub-offices.

The decision maker is not bound by the rules of evidence at such hearings. Witness are not called save in exceptional circumstances. The hearing focuses on submissions made on the basis of the evidence already filed and served. The unsuccessful party has a right of appeal to the Federal Court.

Registration

If the application proceeds without opposition or if the opponent is unsuccessful then the trade mark is registered. Registration fees are payable depending on the type of application and the numbers of classes for which the trade mark is registered. Renewal fees are payable every 10 years.

Conclusion

The above is a basic discussion of selected issues which may arise in applying for a standard trade mark in Australia. It is hoped that this information will provide practitioners with a basic road map which will assist in navigating through the application process.[20]


IAN HORAK is a barrister at the Victorian Bar, practising in commercial and intellectual property. He is also a registered Patent and Trade Marks Attorney.


[1] See for example, Marleef Pty Ltd v Metcash Trading Ltd [2001] FCA 1316.

[2] IP Australia is the federal government body administering trade marks. The IP Australia website can be found at http://www.ipaustralia.gov.au.

[3] Trade Marks Regulations 4.2(1).

[4] The filing fee to register a standard trade mark is $150 per class as per Schedule 9 of the Regulations.

[5] A copy of the Nice Classification (8th edn) can be found at the World Intellectual Property Organisation website at http://www.wipo.int/classifications/en.

[6] Regulation 4.18.

[7] Regulation 4.12.

[8] Regulation 4.15 and Schedule 2.

[9] Clark Equipment Co v Registration of Trade Marks (1964) 111 CLR 511.

[10] Ocean Spray Cranberries Inc v Registrar of Trade Marks 47 IPR 579.

[11] 52 IPR 24.

[12] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407.

[13] 41 IPR 163.

[14] 44 IPR 167.

[15] Jellinek’s Application 1A IPR 393.

[16] Regulation 5.1.

[17] Section 58. See for example, Estar Online Trading Pty Ltd v Estar Ltd 53 IPR 583.

[18] Section 60. See for example, McCormick & Co Inc v McCormick 51 IPR 102.

[19] Regulation 5.7 to 5.13.

[20] The Trade Marks Office Manual of Practice and Procedure provides further and more detailed information on the filing, prosecution and opposition of trade mark applications. An electronic copy of this manual and the prescribed forms can be found at the IP Australia website at http://www.ipaustralia.gov.au.

Comments




Leave message



 
 Security code
 
LIV Social
Footer