A guide to trade marks in Australia

What is a trade mark?

Under the Trade Marks Act 1995 (Cth) (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”.

A trade mark may be a letter, number, word, phrase, logo, packaging, picture, movement, sound, smell, or a combination of these.

It is not the name of a business, company, or domain.

The different types of trade marks

There is a variety of trade mark types. These include:

Series

This kind of trade mark registration may be suitable when there is one brand that covers a range of related products, such as clothing, footwear, and sunglasses.

There are specific criteria a trade mark must meet in order to qualify as a series trade mark.

Sound

This may be, for instance, a particular sound, an advertising jingle, or a song.

Movement

This may be a movement that is recognised as being associated with a good or service. An example of this type of trade mark is Toyota’s “Oh, What a Feeling!” jump silhouette.

Shape

A shape trade mark can be registered for products including toothbrushes, biscuits, bottles and other packaging.

An application for a shape trade mark may need to show that the shape distinguishes the good or service from another and that it is not a copy of a shape already being used in commerce.

Colour

A specific colour may be registered as a trade mark, but doing so is difficult.

The trade mark applicant must show that the public has come to identify the colour with the particular goods or services they provide.

For instance, Cadbury has registered a particular shade of purple as a trade mark for use on the packaging for its boxed and block chocolate products.

Scent

This type of trade mark is difficult to register because the scent must be an unusual or distinctive smell that is linked to a particular good or service.

An example is the eucalyptus radiata scent applied as a trade mark to golf tees.

Trade marks for wine

There are specific requirements that need to be met for wine trade marks.

A key consideration is whether a geographical indication (GI) or protected wine term applies.

A GI shows that a good has originated from a specific territory, region, or locality where a particular quality or other characteristic is attributed to that place.

An example of a wine GI is “Barossa”. A protected wine term is a traditional expression or a quality wine term that describes the production method or colour, quality, or type of a wine. An example of a protected wine term is “vintage”.

Trade marks for plants

A trade mark for a plant relates to the source of the plant, such as the grower or seller, rather than the plant itself.

A plant’s name, such as its scientific or common name, cannot be registered as a trade mark.

Registration of a trade mark

A trade mark may be registered for goods, services, or both. A registered trade mark gives the owner an exclusive right to use the trade mark and authorise others to use it.

A trade mark registration lasts for 10 years from the date of filing for registration (but it may be renewed). A product or service that has a registered trade mark may carry the ® symbol. A search of Australian trade marks can be made at www.ipaustralia.gov.au.

How do I register a trade mark?

A person may apply to register a trade mark if the person claims to be the owner of it, and they:

·   are (using it, or intend to use it) themselves;

·   authorise (or intend to authorise) another person to use it; or

·   intend to assign it to a company that is about to be set up for using the trade mark.

To be eligible to register a trade mark, the owner must be:

• an individual;
• a company;
• an incorporated association;
• an unincorporated association (for a collective trade mark only) or
• a body existing under legislation, such as a registered charity.

If a trade mark application meets all of the prescribed requirements (after being examined by the registrar), notice that the requirements have been met will be advertised in the Australian Official Journal of Trade Marks from which time, other persons have two months to oppose the registration of the trade mark.

If there is no opposition, the trade mark is registered.

If, after examining the application, the registrar finds that the trade mark application did not meet all of the prescribed requirements, they will issue the applicant with a report. The report will outline the deficiencies found in the application and how they can be overcome.

If an application is still not accepted at this stage, the applicant has a final right to appeal before the trade mark registration may be rejected.

In certain circumstances, registration of a trade mark can be expedited or deferred.

Rejection of trade mark registration

Under the Act, a trade mark application may be rejected for many reasons, including that the trade mark:

• contains or consists of a sign, or resembles a sign, that is prohibited from being used as a trade mark;
• cannot be represented graphically;
• does not distinguish the applicant’s goods or services from those of another person;
• contains (or consists of) scandalous matter, or its use would be contrary to law;
• would be likely to deceive or cause confusion; or
• is substantially identical (or deceptively similar to) another registered trade mark or trade mark that is pending registration.

Opposition to trade mark registration

A third party may oppose a trade mark registration on certain grounds, including that:

• the applicant is not the owner of the trade mark;
• the trade mark is already in use, or is deceptively similar to one already in use;
• the applicant does not intend to use (or authorise the use of) of the trade mark in Australia, or assign it to a company for use in Australia;
• another trade mark has already acquired a reputation in Australia for particular goods or services, and because of that reputation, the registration of the applicant’s trade mark would be likely to deceive or cause confusion;
• the trade mark contains a false geographical indication (GI);
• the registrar accepted the application on the basis of evidence or representations that were false; or
• the application was made in bad faith.

Certification trade marks

A certification trade mark recognises goods or services that possess a particular standard or characteristic — for example quality, origin or manufacturing method.

A standard trade mark, however, only distinguishes one entity’s goods or services from another’s.

Examples of a certification trade marks include:

• the Woolmark logo, which certifies that the fabric in a product is 100 per cent pure new wool;
• the Not Tested on Animals logo, which licenses products in which none of the ingredients have been tested on animals;
• the National Heart Foundation Approved Tick logo, which promotes foods consistent with healthy eating and improving public health; and
• the Australian Certified Organic logo, which promotes the principles of organic agriculture as defined by the Australian Organic Standard 2006.

Applying for a certification trade mark is similar to applying for a standard trade mark, but also requires a copy of the rules governing the use of the certification trade mark.

The governing rules must address features such as:

• what requirements must be met to be able to use the certification trade mark;
• the method for determining whether those requirements have been met;
• what requirements the owner of the certification trade mark (or an approved user) must meet to use the certification trade mark; and
• procedures for resolving disputes about whether goods or services meet the certification requirements.

Removal of a trade mark for non-use

A trade mark must be actively used for its registration to be maintained.

Any person can apply to have a trade mark removed from the register on the grounds of non-use. The time allowed for filing such an application depends on whether the registered trade mark owner did not use the trade mark at all, or if they had no intention of using the trade mark.

A non-use application being made because the trade mark was not used may be made from three years after the trade mark was entered into the register, if the trade mark was entered on or after 24 February 2019. However, the period is five years if the trade mark was entered before 24 February 2019. The application must show that the trade mark has not been used in the past three years.

A non-use application being made because the registered trade mark owner had no intention of using the trade mark may be made at any time after the registration application was filed.

The trade mark’s registered owner (and anyone else the Registrar considers relevant) will then receive a notice advising of the request to remove the trade mark from the register. This ensures that those parties have the opportunity to oppose the removal. The burden is on the party opposing removal to establish use of the trade mark, and each party has a right to appeal a removal decision.

Trade mark infringement

The registered owner of a trade mark is responsible for the trade mark’s protection.

Under the Act, a trade mark is infringed if a person uses a sign, as a trade mark, on goods or services that are “substantially identical with, or deceptively similar to”, a registered trade mark for the same or similar goods or services.

A trade mark may also be infringed if the goods or services are not the same or similar to the trademarked goods or services, but the trade mark is well-known, and the sign would indicate a link between the unrelated goods or services and the registered trade mark owner.

Under the Act, a trade mark is taken to be applied to any goods, material, or thing if it is “woven in, impressed on, worked into, or affixed or annexed to the goods, material or thing”. It is taken to be applied “in relation to” goods or services if it is:

• applied to any covering (including packaging, frames, lids, or containers), document, label, reel, or thing in (or with) which the goods or services are traded;
• used in a way that is likely to lead someone to believe that it refers to, describes, or designates the goods or services;
• used in an advertisement; or
• used in a commercial document such as an invoice, catalogue, business letter or price list, and the goods or services are delivered or provided to a person following a request or order made by referring to the trade mark.

A trade mark may be infringed in circumstances such as when the trade mark is:

• altered, or partially or fully removed, from registered goods;
• applied to registered goods which have been tampered with; or
• applied to registered goods when this is likely to injure the reputation of the trade mark.

A trade mark is not infringed when a person uses it:

• in the case of a sign — in good faith, to show “the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services”;
• with the consent of the registered owner; or
• when they have continuously used an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark, before that trade mark was registered or the registered trade mark was first used.

Remedies for trade mark infringement

Relief available from a court includes an injunction, damages, or an account of profits. An additional amount may be added to an order for damages after the court considers factors such as the flagrancy of the infringement and the need for deterrence.

How Gibbs Wright Litigation Lawyers can help

Call Gibbs Wright today to discuss your trade mark matter with our intellectual property lawyers in a confidential consultation.