intellectual property winter session 2015. same grounds as rejection – s57 applicant not owner of...

Trade Marks(Week 3)

Beth Oliak

Intellectual Property Winter Session 2015

• same grounds as rejection – s57• applicant not owner of mark – s58• earlier use of similar trade mark – 58A• applicant not intending to use mark – s59• similar to mark with reputation – s60• false geographical indication - s61• application is defective - s62• application made in bad faith – s62A

Opposition to registration

S 57 - Registration may be opposed on same grounds as for rejection

The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.

(Note: those grounds are set out in ss 39-44, except s 40)

Same grounds as rejection – s57

S 58 - Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Applicant not owner – s58

Common law owner of mark:

• Person who first publicly used the mark in Australia as a trade mark to indicate a connection in the course of trade between goods/services and person

• Not any goods/services

• Designated goods/services and those that are that are the “same kind of thing”


In order to succeed under this ground of opposition, the Opponent must establish that:

• The respective trade marks of the Applicant and Opponent are either identical or substantially identical;

• The respective good and services of the parties are the “same kind of thing”; and

• The Opponent’s trade mark use was prior to both the application to register and any actual use of the trade mark in Australia by the Applicant


Mark not used by any person:

• “an application to register a trade mark so far unused must be founded on proprietorship”

• proprietor of the mark is combined effect

◦ authorship of the mark

◦ intention to use it upon or in connection with the goods

◦ applying for registration”

Shell Co (Aust) Ltd v Rohm & Haas Co (1949) 78 CLR 601


Aston v Harlee Manufacturing Co (1960)

• Two American businesses wanted to use the name Tastee Freez in Australia; Aston applies for registration first

• Harlee used the name first in the US; neither party had ever used it in Australia so the Shell test applied

• The Court did not give any weight to the prior use in the US in finding for Aston (absent a finding of fraud):

“When once it is conceded, as a matter of law, that a person may apply for and obtain in Australia a valid registration of a trade mark registered and used in a foreign country but not used in Australia, I do not think that exceptions and qualifications should be introduced which are based merely on conceptions of commercial ethics.”


Opponent's earlier use of similar trade mark

(1) This section applies to a trade mark (section 44 trade mark ) the application for registration of which has been accepted

because of:

(a) subsection 44(4); or

(b) a similar provision of the regulations made for the purposes of Part 17A.

Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is

substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

Opponent’s earlier use – s58A

http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/s44.html



Opponent's earlier use of similar trade mark (cont)

(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a) first used the similar trade mark in respect of:

(i) similar goods or closely related services; or

(ii) similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b) has continuously used the similar trade mark in respect of those goods or services since that first use.






• Mark may be registered where mark is substantially identical or deceptively similar to previously registered mark if the applicant used before the previously registered mark was registered – section 44(4)

• BUT can reject if the owner of the previously registered mark used before the applicant


Other Owner’s use

Applicant’s use Other Owner’s registration

Applicant’s application

Example:

AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2015] ATMO 7

• Application for “Crop Smart” filed in July 2009 in class 5 (Preparations for destroying vermin; pesticides, insecticides, parasiticides; fungicides, weed killers and herbicides).

• Applicant overcomes rejection under 44(4) (use prior to that of February 2008 date of Opponent’s registered mark “Smart” also for pesticides) by demonstrating use as of September 2006

• Sales figures by Opponent demonstrated that “Smart” was used as of 1998

• Opponent therefore successful under s 58A

• Registration refused under s 55(1); costs awarded as costs follow the event


Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note: For applicant see section 6.

Not intending to use – s59


• use it upon or in connection with goods or services

• intention as at date of application

• but evidence of use/non-use after date may be relevant

• not just non-use; need to prove no intention


Food Channel Network Pty Ltd v Television Food Network GP

• The Food Channel Pty Ltd applied to register a trade mark consisting of the words “Food Channel” and a cartoon picture of a stylised television with a banana and chilli as the antennae

• The Full Federal Court rejected the s 59 ground of opposition because uncontested evidence demonstrated that there had in fact been use of the trade mark in the course of trade


“A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. If he in fact does not use any of them for the period specified in s. 72, the unused mark or marks may be expunged under that section. On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars.”

Aston v Harlee Manufacturing Co

According to Wikipedia:

Ghost marks are trade marks which closely simulate ordinary words or phrases used in the course of trade, and which are not intended to be used as genuine trade marks.

Ghost Marks

• IG couldn’t register MERIT – descriptive

• IG registered NERIT as defensive mark to prevent others using MERIT

• No genuine intention to use NERIT

Imperial Group Limited v Phillip Morris

• Prevent trade mark dilution

• register in related classes that don’t intend to use

• register related words / logos that don’t intend to use

• Cybersquatter/trade mark pirates

• may be opposed (s59) or removed for non-use (Part 9)

• owner can use other mechanisms

• closely related goods and services – s120(1)/(2)

• well-known marks – s120(3)

• Ghost marks are now rarely filed (but see defensive marks)

Ghost Marks

(2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

. . . (b) services that are closely related to

registered goods; or . . . (d) goods that are closely related to

registered services.

Ghost Marks - s120(2)/(3)

(3) A person infringes a registered trade mark if:

(a) the trade mark is well known in Australia; and

(b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(i) goods ( unrelated goods ) that are not of the same description as that of the goods in respect of which the trade mark is registered ( registered goods ) or are not closely related to services in respect of which the trade mark is registered ( registered services ); or (ii) services ( unrelated services ) that are not of the same description as that of the registered services or are not closely related to registered goods; and

(c) because the trade mark is well known, 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; and

(d) for that reason, the interests of the registered owner are likely to be adversely affected.

Ghost Marks - s120(2)/(3)

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note: For priority date see section 12.

Similar to mark with reputation – s60

• Test: another trade mark has reputation AND because of reputation likely to deceive or cause confusion

• Reputation trade mark does not have to be registered

• Reputation demonstrated by evidence of sales, marketing, advertising and licensing

• Reputation can be in any goods or services; doesn’t have to relate to designated goods/services

• BUT if reputation relates to very different goods or services it will be difficult to show that the reputation will deceive or cause confusion

McCormick & Company Inc v McCormick• reputation means the recognition of the marks by the

public generally


Similar to mark with reputation – s60McDonalds v BowditchGOLDEN BOOMERANGS(The provision of tourist accommodation; fast food and restaurant services) – s 60 ground failed (no consumer confusion)

McDonalds v Macri Fruit DistributorsMCSALAD, MCFRUIT(Processed and prepacked fruit and vegetables) – s 60 ground successful

Greenpeace v TaylorGREENPIECE(Chemicals for use on/with plants; fertilisers and plant nutrients including, but not limited to liquid fertilisers and liquid nutrients for plants) – s 60 ground successful

Similar to mark with reputation – s60Qantas v NV SumatraJETSTAR for coffee, tea, cereal, biscuits, cocoa- s 60 ground successful

Intel v Third Party CorporationBELLINTEL for stock-broking services‘bellintell’ mark in colours separating ‘bell’ from ‘intell’ - S 60 ground successful

Coca Cola v The Big Australian SOLA COLA for mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages- 60 ground fails

DC Comics v Cheqout Pty Ltd [2013] FCA 478

• Appeal from decision to register “superman workout” for conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise)

• s 60 ground fails - fair and notional use of SUPERMAN WORKOUT by Cheqout for the class “without reference to any of the well known indicia associated with the DC Comics superhero” would not be likely to cause confusion

• S 62A (bad faith) successful - Applicant’s use of the logo below “soon after the application” was filed. Logo closely resembled DC Comics’ insignia and made use of colours “traditionally used in conjunction with the Superman character”.


Trade mark containing or consisting of a false geographical

indication

(1) The registration of a trade mark in respect of particular goods ( relevant goods ) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods ( designated goods ) originating in:

(a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or

(b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;

if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.

False geographical indication (s 61)

(2) An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:

(a) the relevant goods originated in the country, region or locality identified by the geographical indication; or

(aa) the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or

(b) the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or

(c) the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:

(i) 1 January 1996; or

(ii) the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;

whichever is the later; or

(d) if the registration of the trade mark is being sought in respect of wine or spirits ( relevant wine or spirits )--the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.


(3) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

(a) although the sign is a geographical indication for the designated goods, it is also a geographical indication for the relevant goods; and

(b) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

(4) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

(a) the sign consists of a word or term that is a geographical indication; and

(b) the word or term is a common English word or term; and

(c) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.


Verbrand Bayerischer Ausfuhrbrauereien Eingetragene Verein v Bavaria N.V. [2006] ATMO 53

• Ground under s 61 fails because Bavaria is not a geographical indication (as defined by section 6).

• BAVARIA and BAYERISCHES BIER are not the same, nor are they substantially the same. BAVARIA is the name of a German state; BAYERISCHES BIER refers to beer from Bavaria. Consequently the presence of BAVARIA in the applicant’s trade mark does not have the same effect as the presence of BAYERISCHES BIER.


Application etc. defective etc.

The registration of a trade mark may be opposed on any of the following grounds:

(a) that the application, or a document filed in support of the application, was amended contrary to this Act;

(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

Application defective – s62

Examples:

• Unintentionally providing false evidence during the examination phase which had a significant effect in bringing about the acceptance of the application (Link Recruitment Pty Limited v Link Employment and Training Inc [2006] ATMO 39)

• Evidence misleading in that is suggested that there had been sales of goods and services (Chris-Telle Pty Ltd v Australian Swimming Inc [2004] ATMO 60)

Application defective – s 62

Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

Application made in bad faith – s62A

Fry Consulting v Sports Warehouse

• unscrupulous, underhand or unconscientious

• deliberate misspellings registered trademark

• register foreign trade mark with no Australian market penetration with purpose of selling to foreign owner

• cyber-squatting

• not include mere negligence, incompetence or a lack of prudence

Application made in bad faith – s62A

Application for removal of trade mark from Register etc.

(1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

(2) The application:

(a) must be in accordance with the regulations; and

(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note: For prescribed court see section 190.

Removal for non-use (s 92)


(4) An application under subsection (1) or (3) ( non-use application ) may be made on either or both of the following grounds, and on no other grounds:

(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i) to use the trade mark in Australia; or

(ii) to authorise the use of the trade mark in Australia; or

(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv) has not used the trade mark in Australia; or

(v) has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;


(4) An application under subsection (1) or (3) ( non-use application ) may be made on either or both of the following grounds, and on no other grounds:

...

(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i) used the trade mark in Australia; or

(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.


• No intention to use when apply AND not in fact used as trade mark in good faith in Australia since registration

• Registered for 3 years and not used as trade mark in good faith in Australia for 3 years

• Woolly Bull Enterprises Pty Ltd v Reynolds (not necessary that there be an actual trade in the sense of the offering for sale and the sale of goods bearing the mark BUT must go beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, ie, to carrying its intention to use the mark into effect)

• Good faith – real not token, colourable

• remove OR impose limitations or conditions


S 27 - Application--how made

(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a) the person claims to be the owner of the trade mark; and

(b) one of the following applies:

(i) the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Who can apply for a mark?

• Aston v Harlee Manufacturing Co (1960) 103 CLR 391 (making of application prima facie evidence of intention to use)

• Moorgate Tobacco Co Limited v Phillip Morris Limited (No 2) (1984) 59 ALJR 77:

“The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of ‘proprietor’ of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.”

Who can apply for a mark?

• Registered owner exclusive right – s20

• use/authorise the trade mark in relation to designated goods/services

• obtain relief if trade mark infringed

• Registered trade mark personal property– s21

• Registered owner may deal with trade mark and give discharges in good faith – s22

• Equities may be enforced against registered owner except PPSA security interests

Rights

S 8 - Definitions of authorised user and authorised use

(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3) If the owner of a trade mark exercises quality control over goods or services:

(a) dealt with or provided in the course of trade by another person; and

(b) in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(4) If:

(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

(b) the owner of the trade mark exercises financial control over the other person's relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

Licensing

Authorised user rights – s26

• Use trade mark on designated goods/services

• Sue for infringement with owner’s consent

• Sue for infringement after end prescribed period if owner doesn’t sue within prescribed period

• Give notice to customs to prevent importation

• Permission to alter/deface mark on goods

Licensing

E & J Gallo Winery v Lion Nathan

• Application by Lion Nathan to cancel Gallo's registration of the trade mark BAREFOOT; issue whether Gallo used mark BAREFOOT in Australia

• Houlihan trade mark owner (later Gallo) owned Barefoot Cellars

• Barefoot Cellars applied mark to wine

• Barefoot Cellars sold wine to Einig-Zenzen, Germany who sold to Beach Avenue, Australia who sold wine in Australia

• Houlihan exercised quality control over Barefoot Cellars (thus authorised use)

Licensing

If the person uses as a trade mark:

• a sign that is substantially identical with, or deceptively similar to, the trade mark

• in relation to:

s120(1) registered goods or services

s120(2) goods/services of same description or closely related goods or services

s120(3): well-known trade marks (any goods or services)

Infringement – s120

Substantially identical:

Shell Co Australia v Esso Standard Oil

compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison

substantially identical or deceptively similar (see s44)

Deceptively similar :

• if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion (s10)

• Crazy Ron’s v Mobileworld

impression based on recollection of the applicant’s mark that persons of ordinary intelligence would have compared to impression such persons would get from respondent’s mark

substantially identical or deceptively similar (see s44)

Coca Cola Distributors v All Fect Distributors Pty Ltd

• All-Fect was using cola bottle to indicate a connection in the course of trade between goods and the person who applies the mark to the goods

• certain striking non-descriptive features of the goods were put there to make the goods more arresting and to distinguish them from other similar goods, that is, to use those features as a mark

Use as a trade mark

Johnson & Johnson (Tylenol) v Sterling Pharmaceuticals (Panadol)

CAPLET

• a registered mark serves to indicate the origin of the quality in a particular business, whether known or unknown by name

• Caplet was used to indicate or describe form or method of dosage of product found inside packages, and not a connection in the course of trade

Use as a trade mark

Top Heavy v Killin

• Whether the sign is used to distinguish one person’s goods and services from the goods or services of others

• Killin put words CHILL OUT on t-shirts as an exhortation to relax, not to indicate a connection in trade

Use as a trade mark

Pepsico Australia Pty Limited (t/a Frito-Lay) v Kettle Chip Co Pty Limited

• Frito-Lay's use of the words "KETTLE", or "KETTLE COOKED", was not use as a trade mark

• Frito Lay used words KETTLE or KETTLE COOKE for purpose and effect of describing qualities of the chips produced by Frito-Lay. The words have the effect of distinguishing between the qualities of those chips and those produced by means other than "kettle cooking”, but not to distinguish Frito-Lay's chips from Kettle’s chips

Use as a trade mark

Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited

• Shell, used an animated humanised oil drop in two short films advertising its petrol.

• Although Shell’s use of its oil man animation was to convey a particular message about its petrol, a viewer of Shell’s animation would consider that the animation had been chosen to identify the brand source of the petrol in relation to which it was used

• The “purpose and nature” of the use complained of was not trade mark use

Use as a trade mark

s123 - Goods etc. to which registered trade mark has been applied by or with consent of registered owner

(1) In spite of section 120, a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

(2) In spite of section 120, a person who uses a registered trade mark in relation to services that are similar to services in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied in relation to the services by, or with the consent of, the registered owner of the trade mark.

Secondary dealings

R A & A Bailey & Co Limited v Boccaccio Pty Limited (1986) 6 IPR 279

Bailey’s Irish Cream was produced overseas by the Australian trade mark owner although the particular bottles obtained from overseas and imported into Australia were imported without the permission of the trade mark owner. The New South Wales Supreme Court held that the importer was not using the trade mark as a trade mark and therefore could not be infringing the trade mark (instead ongoing use by the proprietor of he mark)

Secondary dealings

Transport Tyre Sales Pty Ltd v Montana Tyres and Rims Pty Ltd (1999) 43 IPR 481

• Montana acquires tyres in Singapore (manufactured in Japan) and exports them to Australia. Argument was that there had been no application of the Australian registered trade mark by or with the consent of the trade mark owner as required for the defence of s123 to apply

• Argument rejected on the basis that it would be impractical to distinguish between goods bearing the identical trade mark as being either goods for the Australian market or being for the Japanese market.

• The application of the trade mark to goods in one country by or with the consent of the overseas trade mark owner allowed the operation of the s123 defence. The intention of the trade mark owner regarding distributorship of the goods in Australia was irrelevant.

Secondary dealings

Polo/Lauren Company LP v Ziliani Holdings (2008)

• Ziliani legally bought in the US and parallelly imported into Australia for sale a number of articles of clothing onto which the Polo/Lauren ‘polo player logo’ was embroidered

• Ziliani did not have the licence or consent of Polo/Lauren to import or sell those articles in Australia

• Case demonstrates limited power of Copyright and Trade Mark Acts to limit parallel imports

Secondary dealings

Paul’s Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130

• Paul’s purchased goods from an intermediary in Pakistan who had obtained them from the authorised Indian licensee.

• The Indian licensee’s licence was limited to the Indian market

• Because the evidence showed that the Indian manufacturer knew that the goods would be sold outside India (in Pakistan), its manufacture of the goods was in breach of the licence and was not with the consent of the trade mark owner.

• The current position is that importers may be liable for trade mark infringement if they import goods where the brand owner's consent to the use of its trade mark on the goods is expressly limited to specific territories

Secondary dealings

Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) CLR 407

• Test for substantial identity:

“In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.“

• While it may be that certain frames of the films may be substantially identical to Esso’s marks, the film “does not stand still” and the figure depicted does not hold its pose or expression for long enough to establish infringement by the use of a substantially identical mark.

“substantially identical”

Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) CLR 407

• “On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.”

• Marks deceptively similar because “the oil drop man in each of the films is at various stages so similar in body, build and expression to the plaintiff’s mark that confusion is likely to arise”.

“deceptively similar”

Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641

Wingate Marketing Pty Ltd v Levi Strauss & Co Ltd (1994) 28 IPR 193


Polaroid Corporation v Sole N Pty Limited [1981] 1 NSWLR 49

SOLAROID and POLAROID (deceptively similar for glassware of some description)

Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 (‘Woolworths Metro’)

The trade mark comprised the words “WOOLWORTHS metro” on a background of wavy lines.

The application was refused on the ground that the proposed mark was deceptively similar to other registered marks consisting of the word “metro” and registered in respect of a variety of goods. Refusal upheld.


Beecham Group Plc v Colgate-Palmolive Pty Ltd [2005] FCA 838 (22 June 2005) (‘Macleans’)

“Macleans” claimed alleged trade mark infringement against Colgate for the use of the name “MaxClean”. Not deceptively similar

Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 (27 August 2003)

“THORPEDO” was not deceptively similar to “TORPEDOES” in relation to sports apparel. The association of 'Thorpe' with Ian Thorpe, particularly in connection with sporting apparel, could not be disregarded.


Southern Cross v Toowoomba Foundry

• Similar goods involves consideration of

◦ nature of goods

◦ uses to which they are put

◦ whether they are commonly sold together to the same class or classes of customers

Registrar of TM v Woolworths

• whether the closeness of the relationship and the resemblance of the mark together cause deception or cause confusion

• range of relationships between goods and services which may be "closely related”

Closely related goods/services

• Person uses person’s name/place of business (predecessor’s name) in good faith

• Angove’s Pty Ltd v Johnson (entitled to use words “St Agnes Liquor Store” in the name of its business in the Adelaide suburb of St Agnes, notwithstanding that plaintiff registered trade mark ST AGNES)

• Person uses sign in good faith to indicate kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services

• Person uses trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services

• Person uses trade mark in comparative advertising

• Person would obtain registration if applied (eg honest concurrent use)

Defences – s122

• Use in good faith imports an absence of intention to make use of the goodwill which has been acquired by another trader

• resemblance between the registered trade mark, of which the first respondent was aware and the name of the first respondent does not prevent the use being bona fide provided that there was an honest belief that no confusion would arise and if there were no intention of wrongfully diverting business

Wellness Pty Limited v Pro Bio Living Waters Pty Limited

• no evidence as to reason for choice of name and reason for incorporation; no good faith as “living waters” not used as a descriptor

Use in good faith

Prior use of identical trade mark etc.

(1) A person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark in relation to:

(a) goods similar to goods ( registered goods ) in respect of which the trade mark is registered; or

(b) services closely related to registered goods; or

(c) services similar to services ( registered services ) in respect of which the trade mark is registered; or

(d) goods closely related to registered services;

if the person, or the person and the person's predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before:

(e) the date of registration of the registered trade mark; or

(f) the registered owner of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Act, first used the trade mark;

whichever is earlier.

prior and continuous use – s124

• Injunction

• Damages

• Account of profits

• no damages/account of profits if mark not used and mark removed – s127

• Groundless threat of legal proceedings – s129

Remedies – s126

Owner can give notice to Customs objecting to importation of goods infringing mark – s132

Customs may seize imported goods with a sign that is substantially identical or deceptively similar to a notified trade mark – s133

Customs

intellectual property winter session 2015. same grounds as rejection – s57 applicant not owner of...

Documents

owner of trade mark

trade mark section

registered trade mark

opponents trade mark

mark intention

mark s59 similar

course of trade

common law owner of