Module 7&8: Trademarks and Domain Names

Module 7&8: Trademarks and Domain Names

Trade Marks

Background

· Australian trademarks are usually protected through registration under the Commonwealth Trade Marks Act 1995. It is become increasingly common for businesses to register domain names as trademarks, in order to gain more protection for them. Trade marks, generally speaking, are those ''signs'' (traditionally, names, words and logos) that businesses use to identify themselves and the goods and services they provide. Because of the vital commercial role that trade marks play, no business enterprise can function without trade marks (“TM”).

· A TM is a sign used in trade to indicate source of goods or services, and distinguish them from those of other traders

· It is important in commerce - essential part of branding of goods and services

· TMs can be very valuable commercial asset, eg Coca Cola, Microsoft

· The obtaining of a trade mark registration under the Trade Marks Act 1995 may be seen as taking out a form of insurance; if registered owners of trade marks consider that their marks have been infringed they have a comparatively cheap and expeditious way of taking action against the infringer.

· In many cases a letter of demand to the infringer providing details of the owner's registration will enable the matter to be settled out of court.

· TMs can be registered or unregistered (common law); regn is not compulsory for protection

· not all TMs are registrable: unregd marks protected under TPA, passing off

· registration confers considerable advantages, so should be done where possible: regd TMs are easier and cheaper to enforce

Element 1: Type of name

· Distinguish between:

o Trade marks

o Business names

o Company names

o Domain names

· Registration of a business, company or domain name does not confer property rights or rights to use the name as a trade mark.

· It is a common misconception that a company name or registered business or domain name gives exclusive rights to the name, and that it is not possible for anyone else to adopt a similar name.

· Similar company names and registered business names are often permitted to co-exist. This is because, unlike the registered trademark system, the systems of registering company and business names are not intended to give exclusivity over names. The position in relation to domain names is similar, through the registration procedure will provide additional security.

· A company or business name or domain name may function as a trade mark if used as an identifier in relation to products or services. However, it only extends as far as the jurisdiction in which it is trademarked and to the industry in which it operates – IE, United is a valid trademark in the airline industry but could be used by a separate van rental company unless United already rented vans. The only exception is when the mark is so famous anything bearing the mark would be associated with it (ie coke (I guess)).

· It follows that the best way of securing exclusive rights to a company or business name or domain name is through registration of the name as a trade mark.

· Regn of a business or company name does not stop someone bringing an action to restrain its use or registering it as a trade mark.

· Unless the owner of the business or company name has built up sufficient reputation in the name,will not be able to prevent another person using it as a TM; cannot rely on business/company name regn as a defence in TPA or passing off action.

Nintendo v Care (2000)

· Nintendo produced, sold video games featuring cartoon character “Super Mario”

· Respondents staged wrestling bouts featuring a wrestler “Da’ Super Mario”, a real-life embodiment of the cartoon

· Held:

· Respondents had regd “Da’ Super Mario” as a business name

· Provided no defence to action under s 52, 53 TPA, passing off and TM infringement

· Business name regn conferred no IP rights

Trade Marks – definition

· Section 17 of the Trade Marks Act 1995 defines a trade mark:

o "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."

· Section 6 of the Trade Marks Act 1995 says that a ''sign'':

o "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."

§ Under previous Act, shape of Coca Cola bottle could not be regd, but is now under 1995 Act

§ Inclusion of “shape” not intended to produce a radical shift in the law

The goods themselves cannot be the trade mark

TM must have a separate identity from the goods – something added to the goods to distinguish them from those of other traders:

Koninklijke Philips Electronics v Remington Products Australia (2000):

· three headed shape of rotary shaver – NO, cf.

Kenman Kandy v Registrar of Trade Marks (2002): six legged millennium bug candy - YES

· Shape as an attribute of goods which distinguishes them from others

· The shape which distinguishes goods may be their shape as a whole

· But where shape serves a function, then it may not have the character of a distinctive attribute

Philmac v Reg of TMs (2002, 2003)

· Colour applied to goods or services

· In this case, terracotta applied to connecting inserts of compression fittings in rural irrigation pipes

· Could be registered as a TM if it distinguished Philmac’s goods from those of other traders

· A trade mark is personal property. It is a species of incorporeal or industrial property which confers a right on its owner to distinguish by a special mark goods in which that person deals from the goods of other persons: Colbeam Palmer Ltd & Anor v Stock Affiliates Pty Ltd (1968-1969) 42 ALJR 209.

· The registration and use of trade marks confers on traders a valuable marketing and advertising tool. The importance and commercial value of certain trade marks is apparent from the extensive and costly litigation relating to trade marks in Australia over the past 50 years.

· To be registered as a trade mark a sign must be ''used, or intended to be used''.

· To be ''used'' a sign must be used as a trade mark. For intended use, three elements must be present: the intention to use the sign must be genuine, definite and presently existing. These are all questions of degree.

· Authorised use by a person is treated under the Act as use.

Trade Marks – rights

The registered owner of a trade mark has the exclusive rights to:

(1) use the trade mark;

(2) authorise other persons to use the trade mark; and

(3) obtain relief for any infringement of the trade mark (sec 20).

These rights exist only in relation to the goods or services in respect of which the mark is registered. The rights date from registration, not lodgement of application.

Trade Marks – Assignment & Transmission

· Both registered trade marks and trade marks the subject of application for registration, can be assigned or transmitted. Such an assignment or transmission:

· May be partial, in that it applies to only some of the goods or services concerned; and
does not necessarily involve the goodwill of the business concerned.

· Assignments and transmissions of marks are recorded in the Register, and notified to any listed interested parties.

· Registered owners and authorised users usually reach their own agreements as to conditions of use. Subject to such agreements, an authorised user may:

o Use the mark in relation to the specified goods and services, subject to any registration conditions;
take action over infringements where necessary;

o put up notices concerning the usual prohibited acts;

o deal directly with the Comptroller of Customs where imported goods infringe the trade mark;

o permit a person to alter, deface, add to, remove, erase or obliterate a mark; and

o permit a person to apply the mark to goods, or in relation to goods or services in respect of which the mark is registered (sec 26).

Trade Marks – Registration

· Apply in approved form to IP Australia

o Search existing registers, databases of trade marks (regd and unregd)

o Online databases eg ATMOSS on www.ipaustralia.gov.au

· Who can apply:

o person/s who claims to be owner/s of the TM, providing:

§ they are using or intend to use it in relation to the goods and/or services

§ They have authorised or intend to authorise another person to use it in relation to the goods and/or services; or

§ They intend to assign it to a body corporate that is to be formed and that will use the TM in relation to the goods and/or services: s 27(1), 28

· “Owner” not defined, but cases indicate it is based on

o Authorship; Intention to use it on goods/services; Application for registration; first adoption of the mark in Australia

o “Use”: TM must already actually be in use or a definite intention to use it in relation to the relevant goods and/or services

§ If mark is not in use at time of application, it can be regd – no further evidence required of proof of use to maintain registration

§ At time of application, there must be an existing and genuine intention to use the mark in relation to each category of goods/services for which regn is sought

§ Absence of bona fide intention to ever use will not suffice

§ Lack of intention to use, authorise the use or assign the TM to another body to use is a ground of opposition to regn (s59), cancellation of regd mark (s 88(2)(a)) and removal of a regd mark from register for non-use( ss92-105)

Application must include a representation of the TM

· Specify particular categories of goods/services in respect of which regn is sought

· Register consists of a single part

· 45 classes: 34 for goods and 11 for services

· Application can be for goods or services or both, in one or more classes: ss 19, 27(5)

· Application examined to see if it complies with TM Act and if there are grounds for rejecting it: s31

· Presumption of registrability of TMs – Registrar has onus of establishing why application should be rejected

· After exam, Registrar must accept unless satisfied that application is not in accord with Act or there are grounds for rejecting it: s33(1)

· If application is not in accord with Act or there are grounds for rejecting it, Registrar must reject it: s33(3)

Application can be accepted subject to limitations

· If to be rejected, applicant must be given an opportunity to be heard: s33(2)

· Grounds for rejection of application (Division 2 of Act):

o Consists of certain proscribed signs eg patent, copyright, by Royal Letters Patent, representation of arms, seal or flag of State/Commonwealth: s39 + regs 18, 4.15

o TM cannot be represented graphically: s40

o TM not capable of distinguishing applicant’s goods/services in respect of which TM is sought to be registered from those of other persons: s 41(2)

o If TM contains or consists of scandalous matter or its use would be contrary to law e.g. where it would infringe copyright or TPA or would be defamatory: s42(a), (b)

o If use of TM in respect of those particular goods or services would be likely to deceive or cause confusion: s 43 - a question of “impression and common sense”: Murray Goulburn v NSW DairyCorp

o If applicant’s TM is “substantially identical with” or “deceptively similar to” a mark already on the Register or an earlier application, for similar goods/services or closely related goods/services:s 44

§ “substantially identical with”: - not defined – determined by side by side comparison of similarities & differences – total impression of resemblance or dissimilarity that emerges

§ “deceptively similar”: so similar that likely to deceive or confuse: s 10 – raises questions of suggestion, connotation, impression, recollection – not tested by side by side comparison but by comparing impression

· Registrar is required to notify applicant of his decision to accept/reject and advertise acceptance in Office Journal

· From time of advertisement of acceptance, 3 month period for notice of opposition to be filed: s 52(2) – extension of time for filing opposition is possible

· Trade Marks – Registration

Failure to reject

· If registration is not opposed, or opposition has not succeed, Registrar is required to register the TM, within 6 months of the advertisement of acceptance: s68(1), but cannot register until fee has been paid: s223(3)

· Upon registration, Registrar must advertise this in Official Journal

· TM is registered in name of applicant, in respect of the goods and/or services specified in the application and subject to any conditions and limitations imposed by Registrar in accepting the application for registration

· “R” is used to notify that TM is regd

· “TM” is used for unreg TMs, including where regn has been applied for

· No requirement to use R or TM

· It is an offence to use “registered” or R to represent expressly or impliedly that a TM is regd or regd in respect of particular goods or services unless the person knows or has reasonable grounds to believe that the TM is regd in Australia: s 151

· International TM regn:

· Protocol Relating to the Madrid Agt Concerning the Intl Regn of TMs (Madrid Protocol) – Australia a signatory, as from 1 July 2001