IP Notes
1. Introduction to intellectual property
What is intellectual property?
Legal definition: Intellectual property
Exclusive rights to the results of creative and intellectual efforts protected under common law or statutes.
This topic introduces the student to an overview of what intellectual property is, its nature, development and the framework within which it operates. It will therefore first provide a broad definition of intellectual property (IP) by reference to accepted categories of IP. IP is a legal term that refers to unique creations of the mind, such as inventions, designs and brands.
IP can be categorized into four main types: patents, trademarks, copyrights and trade secrets,
Patents: protect inventions, new processes, substances, methods or devices
Trademarks: protects logos, words, and other branding
Copyrights: Protects Art, writing, music, film and computer programs
Registered designs: Protect layout designs or plans of integrated circuits
Subject matter covered by IP |
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Topics |
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1.6 Why have IP rights
Rationales |
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IP as property rights |
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IP as property rights: Issue |
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Rights in physical property: the IP issue |
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Labour theory |
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Personality theory |
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Incentive theory |
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IP justifications – utilitarianism |
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Summary: Why do we have IP? |
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History of Intellectual property law
History of Intellectual property law | 1. Concept of ‘property’ arose from feudalism in the 12th century
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International treaties: Overview |
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Globalisation |
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Current legislation |
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IP as negative rights |
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Court processes |
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Remedies
Available remedies |
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IP and its connection with technology |
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Week one summary and key points of Intellectual property IP law
What is intellectual property?
| Legal definition: Intellectual property (IP) refers to exclusive rights granted to individuals or entitled for their creative and intellectual efforts, protected under common law or statutory law. It encompasses a variety of legal protections for intangible assets such as inventions, designs, artistic works and brand identifiers. |
Categories of intellectual property |
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Subject matters covered by IP
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Why have IP rights? |
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Differences between IP and Physical property rights |
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History and International Development of IP Law |
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Current legislation in Australia |
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Enforcement and remedies | Legal process: IP cases are handled in federal and state courts
Primary remedies: Injunctions, monetary damages, and ancillary orders (e.g., seizure of infringing goods) Criminal offences: Counterfeiting, false entries in IP registers and unauthorized reproduction |
IP and Technology |
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Week 2 Passing off
In this week, will cover the tort of passing off. With its focus on protecting commercial reputations against unauthorised dealings, the tort of passing off has evolved to recognise and enforce unregistered trademarks through common law and has extended its reach to protect get-ups and packaging of products, as well as the exploitable “image” of individuals and corporations.
Passing off is a common law tort that protects the reputation or the goodwill of a trader. Goodwill usually comprise one of the most significant and valuable assets of a business. Goodwill is usually the good name, reputation and the connection between the business and the customers.
The classic form of the tort is when A attempts to pass of his product as B’s by A using the indicia and the distinctive of B’s product. This may be using B’s:
Trademark (If registered, trademark infringement is perhaps a between alternative)
Product design
Get up; or
Aspects of marketing
We will explore these legal requirements for an action under passing off together with relevant case law.
Week two lecture structure:
Introduction to the concept of passing off: Passing off refers to false representation in which one party misleads consumers into thinking their goods or services are associated with another party’s offerings. This not only affects consumers trust but also the economic interests of the rightful brand owner
Historical background of passing off: The origins of this legal concept can be traced back to the early common law practices in England, where it was established to address issues of unfair competition and to protect traders from deceptive practices by competitors
Detailed explanation of the cause of Action concerning passing off: The includes understanding legal precedents that define how passing off is adjudicated in courts, including the criteria that need to be met for a successful claim.
Example of situation of passing off
Consider a hypothetical situation where a new brand markets a beverage product using imagery and branding remarkably similar to that of a well-known established product. This could lead consumers to mistakenly associate the new brand with the established one, resulting in confusion and a potential loss of sales for the original brand.
General definition of passing off
Legally, passing off is defined as a misleading act suggesting that one’s goods or services are those of or connected to another’s. This situation can be demonstrated through various elements including:
Business name similarities: When two businesses use names that are too alike, it can mislead consumers regarding their offerings.
Trademark issues: Registered trademarks can legally protected. If one party uses a mark similar enough to cause confusion, it can lead to trademark infringement claims, complicating the passing off scenario.
Product design limitations: If a new product is designed to closely resemble an existing product, it may lead to passing off claims.
Get-Ups: This refers to the overall look of a product, which includes packaging, design and presentation that contribute to brand identification.
Case study: Albrecht Discount
The Albert Discount case illustrates the evolution of branding strategies within the highly completive supermarket industry. Tensions among the founding members led to distinct branding and market differentiation strategies, showcasing how brand management is essential to protecting market share. This case is significant for understanding branding laws in a rapidly evolving retail environment.
The origin and History of passing off
The tote of passing off has roots in the 12th and 13th centuries in England, developing through common law and equity principles. In the landmark case Reddaway v Banham, Lord Herschell articulated against the unfair deception of consumers that can lead to illegitimate takeovers of market share by competitors.
Common Law tort and equity
Common law: Originally perceived as fraud focused on consumer protection and the plaintiff’s rights, over time, the tort’s aim has shifted to addressing the suffering endured by traders. The requirements of intent to deceive have gradually been relaxed to accommodate a broader range of harmful practices.
Equity: This outlines the protection of property rights, particularly the reputation or goodwill associated with a trader’s business, emphasizing the non-monetary aspects of brand identify within the realm of intellectual property law.
The Modern concept of passing off
In the 20th century and beyond, the concept of passing off has broadened significantly. It now covers actions that protect business reputations and goodwill developed over time. Remedies of passing of claims can include:
Damages: Financial compensation based on the harm suffered, taking into account the intent behind the actions
Injunctions: Court orders that prevent the defendant from continuing the infringing behaviour.
Accounts of profit: Requires the infringing party to account for any profits made from the misleading activities, ensuring that the rightful owner is compensated.
Examples of misrepresentation
In Cadbury v Schwepopers v Pub Squash, complexities in proving passing off through evidence of consumers confusion and brand associations were highlighted, emphasizing the nuances involved in distinguishing marketing strategies in competitive industries.
Cadbury v Schwepopers v Pub Squash
Facts:
In the 1980 case of Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd, Cadbury Schweppes, manufacturers of the soft drink "Solo", sued The Pub Squash Co., alleging that Pub Squash's similar advertising and packaging caused consumer confusion and unfairly exploited Solo's market.
Cadbury Schweppes claimed that Pub Squash's advertising campaign and packaging were deliberately designed to imitate Solo, causing consumers to be confused or misled into believing that Pub Squash was a product of Cadbury Schweppes.
The issue:
The core issue was whether Pub Squash’s actions constituted the tort of “passing off” meaning misrepresenting their product as that of another, and whether this caused confusion or deception among consumers.
Held:
The appeal by Cadbury Schweppes was dismissed, meaning the court upheld the lower court's decision in favour of Pub Squash.
Why?
Fails to establish reputation in yellow cans – often used in lemon drinks
Fails to establish that marketing phrases exclusively associated with solo
Consumers are aware
Cans were different: Nature of marketplace and habits of ordinary consumers
Supermarkets: Placed closely together
Therefore, there is no misrepresentation
CS failed to establish passing off, there was at least some acknowledgment that passing off could happen in advertising when following satisfied:
A misrepresentation
Made by a trader in the course of trade
To prospective customers of his ultimate costumers of his goods or services supplied by him
Which is calculated to injure the business or goodwill of another trader (In the sense that is reasonably foreseeable consequence) and
Which causes actual damage to a business or goodwill of the trader by whom the action is brough or will probably do so.
Legal definitions and legal requirements to prove passing off
Overview of requirements:
Must be satisfied to prove a case in passing off
1) Reputation of the plaintiff (Distinctive)
2) Misrepresentation
3) Damages as result of misrepresentation
Legal definitions of passing off
The legal definition provided by the courts, such as in Fletcher challenge Ltd v Fletcher challenge, indicates that a defendant’s misrepresentation can significantly harm the plaintiff’s reputation and overall business goodwill, further illustrating the serious repercussions of passing off cases.
Requirements to prove passing off
To successfully claim passing off, several essential elements must be established
Reputation: The plaintiff must demonstrate a well-established and distinctive reputation or goodwill linked to the relevant indicia.
Misrepresentation: There must be a deliberate misrepresentation by the defendant that causes confusion among the public regarding their goods or services
Damage: Actual damage or a substantially significant likelihood of damage must result directly from the misrepresentation, impacting the plaintiff’s business interest.
First requirement reputation
Reputation may be assessed through various factors, property interest – reputation of the business/goodwill associated with the business (AG Spalding and brothers v AW Gamage Ltd (1915).
Proof of reputation: Plaintiff must adduce evidence to provide:
Length of time in the market: Duration and stability of brand presence.
Scope of marketing activities: Extent and effectiveness of promotional activities
Geographic reach and sales volume: How widespread the brand’s recognition and presence are in the market
Details of sales network
Volume of sales in number and money value
Use of domain and extent website usage by prospective customers
Trade name/indicia
Additional evidence
Location: Goodwill versus reputation
In Australian law, a well-established business reputation is sufficient for instating a passing off action without requiring actual trading activity, which is more lenient compared to the UK’s stricter regulation.
Is it sufficient for business to prove that it gas reputation in the jurisdiction where passing off occurs or must it demonstrate that It actually trades there?
Goodwill: Attractive force that attracts custom (business must be operating (Trading) in the jurisdiction – Requires actual trade
Business reputation: How others view the business (Business to be known in jurisdiction) – does others know about the company and what it sells?
Australia: Established business reputation in Australian is enough, goodwill (actual trade) must not be proven.
Goodwill versus reputation: Australia position (2)
Confusion: The expression “goodwill” if often referred to in conjunction with “reputation” in this context as being the “property right” of the plaintiff that is entitled to protection, and it is the adoption of this expression and the concept which it embodies that has led come courts to require the carrying on of business by the plaintiff in the forum for him to succeed.
The real question is whether the owner of the goods has established a sufficient reputation with respect to his goods within the particular country in order to acquire a sufficient level of consumer knowledge of the product and attraction “For it to provide custom which, if lost would be likely to result In damage to him”
Not necessary for a trader to have a place of business in Australia or even sell its good here to be successful in maintaining an action of passing off
Prove reputation
Variety of means including advertisements on television or radio, or in magazines and newspapers within the forum
Constant travel of people between other countries and the forum, and that people within the forum (whether residents or persons simply visiting there from other countries) are exposed to the goods of the overseas owner.
Goodwill versus reputation (3)
Reputation means ConAgra Inc v McCain foods
So, establish reputation (knowledge of business) in the jurisdiction is enough to satisfy part of element 1. It is not necessary to prove goodwill or actual trade.
Cases
ConAgra Inc v McCain foods
This case illustrates that, while the plaintiff does not need to have engaged in actual trade in Australia, it is crucial to prove sufficient reputation within the jurisdiction to sustain a passing off claim, highlighting the geographical nuances in brand protection laws.
Facts:
The appellant (ConAgra) manufactured and sold in the United States of America a range of frozen food products which were not offered for sale in Australia
The respondent (McCain) commenced manufacturing and selling in Australia a similar range of products using the same name “Healthy choice” and a similar get up of packaging
The respondent also distributed to wholesalers and retailers of frozen food products in Australia, a brochure known as a “trade presenter” which was used to advertise the products and encourage the wholesalers and retailers to stock the products for sale in Australia. The trade presenter stated that the Healthy choice products had achieved a high level of sales in the United States of America and failed to make it clear that the products sold in the United States of America and the products for sale in Australia were not the same products.
Held:
Traders must have a reputation in the Jurisdiction. No need to show actual trade, but reputation must be established with reference.
Ownership of reputation: Geographical indicators:
When more than one trader has the right to the same reputation.
No need for plaintiff to be the only source of the reputation attached to a particular trade object.
Geographical indicators
Where the name indicated origin: Spanish Champagne case (Bollinger v The Costa Brava Wine Company (1961) Ch 262
Objection of a Champagne maker to use the term ‘Spanish Champagne’ for sparkling wine made in Spain
Plaintiff: Term champagne only applies to sparkling wine made in champagne, France.
using the words “Spanish champagne” is misleading
There is a right of property in the use of champagne acquired by long usage. This defendant has adapted the plaintiff’s appellation of origin on wine which has no connection with it. Their conduct is calculated to mislead the public.
Honest concurrent use
Where two traders independently use the same trade name (or indicium)
Honest concurrent use may be a defence of passing off – first trader will normally have had a sufficient reputation at the time the second comer also begun trading under the name.
Case by case basis
Plaintiff denied access to remedies
Not an excuse under ACL’s 18
A person may carry on business under their own name although they may not register the name as a trademark
First requirement continued: Distinctive reputation
Distinctive reputation
Plaintiff must establish a distinctive reputation in the relevant indicum.
Def Indicia: Anything that makes a product visually distinctive for examples signs, words, terms, trademarks, packaging
Distinctive: Capacity of goods to distinguish itself from goods of other traders: Beyond the shape and function of product
Most indicia possess distinctiveness as they go beyond describing the product
Distinctive reputation: Indicia
Central to developing reputation
Issues with certain Indicia: Words of general/descriptive meaning
Initially used to describe the goods (the primary meaning)
However, with time it might develop a secondary meaning to consumers. It is this secondary meaning that might generate distinctiveness for the plaintiff when
Secondary meaning/distinctiveness: The indicia becomes so exclusively connected to their product, that it will prevent competitors from associating the indicia with their products
Distinctive indicators of reputation
Indicia that must distinguish goods or services in the marketplace can include:
Trademarks and trade Names
Packaging designs
Slogans or promotional materials
Misrepresentation requirements
A critical aspect that must clearly evidenced is that the defendant’s actions occurred in the course of trade, casing substantial public confusion regarding the similarities between their goods and those of the plaintiff.
Reddaway v Banham [1896] AC 199: Secondary meaning descriptive words
Plaintiff sold belting for machinery that was called ‘camel hair belting’
Primary meaning: Belting was made of camel hair
Many years, plaintiff only suppliers consumers (Exclusive association)
Defendant: Also produced belting made of camel hair and starts calling their belt ‘camel hair belting’
Held:
P had established a reputation associated with the term so that buyers exclusively associated the term with the Plaintiff. When the defendant used the term and suggested that its product originated from the plaintiff when it was not, it was unlawful
P prove: Use was exclusive, extensive and pervasive (extent and nature of use): consumers exclusive association w P and no other trader (difficult to prove).
McCain international Ltd v Country Fair Foods [1981]: Secondary meaning descriptive words
Secondary meaning of indicia must be demonstrated to be used so extensively, pervasively and exclusively that consumers associate that product with the plaintiff and no other traders
Plaintiff objects to defendant’s use of term “oven chips” which P has originally used
Issue: is the word solely descriptive or has it developed a secondary meaning that is distinctive?
Descriptive name does not indicate the source of the goods but its nature
The name oven chips having used primarily for the purpose of describing a particular kind of article and not for the purpose of establishing the source or origin. The plaintiff is not entitled to any monopoly simply because the product was novel, GFand the name was novel. As the plaintiff have taken a risk of choosing descriptive words, they run the risk that the defendant cannot be prevented from using those same descriptive words so long as they make it clear that their brands of the product are not the same as the brand of the plaintiff.
The court of appeal held that the words “Oven chips” was not exclusively associated with the plaintiff.
Distinctiveness - Indicia
What sort of Indicia can have a reputation in the market place
Distinctive words/phrases that go beyond the function and appearance of the product
Word of descriptive/general meaning if they have a secondary meaning exclusively associated with the plaintiff
Trademark or trade name
Other material or activity has become associated or identified in the minds of the public
Examples: Title of a television program; get up of goods; slogans and television commercials; reputation of professional ballroom dancer; or fictitious film characters
Instead of words, appearance or packaging may also indicate a reputation of the plaintiff
Rechitt and Coleman products Ltd v Borden Inc (1990)
Packaging and appearance may indicate reputation of supplier of goods
Facts:
Since 1956 RC has sold lemon juice in lemon shaped squeeze bottles (55ml); same size as real lemons with the word 'jif' on the side
RC threatens competition with passing off action if they sell lemon juice in lemon shaped bottles - they are the only company doing it (monopoly)
1985: Borden starts advertising lemon juice in lemon shaped bottles but different size, other differences
Red caps, yellow labels, 'Real lemon' in red letters
Shape: Flat side to prevent it from rolling over
RC sues for passing off (injunction)
Held
Action successful:
Misrepresentation
Consumer exclusively associated the lemon shaped container with that of the plaintiff
Balance of probabilities: if not restrained consumers will be mislead (substantial number) into marking wrong purchase In thinking respondents juice is the jiff juice,
Packaging and appearance
Distinctive reputation in shapes and packaging depend on:
Reputation distinctive and exclusive association in minds of consumers
Does consumers exclusively associate the shape/packaging/appearance with the plaintiff
Appearance/shape/packaging must go beyond function
Misrepresentation: defendant represents their product as that of the plaintiff when this is in fact not true
Balance of probabilities: If not restrained consumers will be mislead (substantial number) into making wrong purchase (compares to intended purchase)
Personality - Character merchandising
Passing off can be used to prevent unpaid, exploitation of an actual or fictional public personality - celebrities, Instagram, Facebook or YouTube.
The commercial exploitation of the names and likeness of real persons and fictitious characters
Purpose: marketing of goods and services frequently seek to establish an association with a well-known person (Sports star, entertainer, former politician etc) with a feature film, a television program, a fictitious character or event
Boosts goodwill of company through the goodwill (fanbase) of the celebrity
Henderson v Radio Corporations (1960) 60 SR (NSW) 576
Radio corporation covered its ballroom dancing music record with a photograph of the Henderson's, a successful ballroom dancing team
They did not authorise this use and sue for passing off
The action was successful
Pacific Dunlop v Hogan (1989)
Hogan's famous crocodile Dundee's knife scene was imitated by a character in an advertisement for sale of pacific Dunlop Grosby shoes
Hogan's successfully sued for character merchandising (passing off)
Abandonment of reputation
Once established, reputation can be lost
5 years from trading has seized
Second requirement: Misrepresentation
There are two parts to the misrepresentation element
Act of the defendant should be made by the defendant in the course of trade
Defendant's act should have confused or deceived consumers (substantial proportion), or potential consumers, into believing that the defendant's goods or services are the plaintiffs goods or services or that there is some connection between them.
Definition misrepresentation
The courts use misrepresentation/deception/confusion interchangeably
Misrepresentation: Statement/conduct that is false or misleading (intent not required)
Confusion: Consumers wonder if two product are related
Deception: Consumers confused and draws the wrong conclusion (intent to mislead)
Damages for passing off
Intent to mislead
Successful in their intent to mislead (Cadbury Schweppes v Pub Squash) consumers have been deceived and drawn the wrong conclusion
Target of misrepresentation
The public at large: Substantial number of the public would be mislead by the defendant's conduct
Well and less informed consumers - Spanish Champagne matter
Specific group product target: Specific part of the population
Often has specific knowledge of the products: professionals etc
This can prevent deception - Hodgkinson matter
Albrecht Stores concept
Original concept: Small stores, no fresh produce, private brands, no marketing, limiting opening hours
Private brands contra well known brands
Issue with Trademarks
Logo and name
Confusion but not misleading
Third requirement: Causation
Causation
Third element in the 'classical trinity' is damage or a likelihood of damage to the reputation, business or goodwill of the plaintiff
A plaintiff suffered damages as a result of misrepresentation
All that is required at this stage is a probability or likelihood of damage if the threat is carried out (injunction)
Example of damage
Damage to reputation/goodwill - quality
Loss of license fee (character merchandising)
Unauthorised use will restrict the plaintiff's ability to use its reputation to launch other products of its own in the particular area or field
Damage caused to the reputation of the plaintiff must be a real and tangible risk of damage, not a mere possibility.
Remedies
Anton Piller orders:
A court order that provides the right to search premises and seize evidence without prior warning - prevents the destruction of evidence
Injunctions:
A court order to compel or prevent a party from doing certain acts pending the final determination of the case. Prevents the defendant from continuing the possible misrepresentation until judgement has been issued
Requires likelihood of damage (high probability, not too remote)
Even if innocent: likelihood of damage can be proven
Damages: Loss of profit, loss of reputation, loss of license fee (intent most likely requires)
Requires intent to deceive (most likely)
Requires proof of actual damages
If advised of passing off - intent
Account of profit: Type of equitable granted in cases where a defendant has profited from an equitable wrong - defendant must pay to the plaintiff profits made from wrongdoing
1. Trademark law protection
In this week we will cover trademark law including the definition of what a trademark is, its function as well as the legal requirements for acquiring trademark protection.
Trademarks are a form of intellectual property rights that are regulated by the Trade Marks Act 1995 (Cth). A trademark 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 another person, see S 17 TM Act 1995. Trademarks, therefore allow a business to protect their registered goodwill as a form of property (the trademark) and use it as a badge of origin. This in turn assists consumers to associate products with the business of origin that can prove valuable not only from a consumer perspective in selecting products but also from a marketing perspective.
Today:
Introduction to Trademark law
Origin and History of trademark law
Elements of trade mark protection
Introduction: The concept of Trademark laws | Tade mark: 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, see section 17 of the Trade mark Act 1995 |
Why we have seen it as such an important aspect of society that we allow business to register trade marks | Businesses evolved
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Functions of trade mark law |
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Benefits of registering a trade mark | Insights from professor Dan Hunter outline the key advantages of registering a trade mark compared to relying Soley on passing off, Including legal protections that safeguard investments in brand identity |
Challenges of passing off |
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History of trade mark
The origins
Trademarks date back to ancient societies where creators marked their pottery, evolving into more formalized systems
In England, significant trademark legislation evolved through acts starting with the Merchandise Marks Act 1862, leading up to the modern TM Act 1995 Implemented in Australia
England: History |
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Australia: History and influence | The colonies had their own acts mirroring UK laws until the establishment of federal regulation after Federation in 1901. The current Trade Mark act was enacted in 1995, with several amendments since to enhance trademark protections. |
Trade Mark registration: 4 types
Trade Mark registration: 4 types |
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What is required to successfully register a trade mark in Australia?
Element 1: ss 6 What is a sign? | The process involves application, examination, reporting, opposition scenarios and ultimately registration, which is initially valid for ten years.
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Element 1: ss 6 What is a sign? What qualifies as a sign |
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Sign: Developments | Packaging and shape
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Case study: Koninklijke Philips Electronics v Remington (200) 100 FCR 90 | TM infringement: Three headed shave by Philips
Burchett J: What is a Trade Mark
Decision
The appeal should be dismissed with costs.
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Koninklijke Philips Electronics v Remington (200) 100 FCR 90 | In the case the court ruled that Remington's product, a shaver with a similar shape to the Philip's registered design, did not infringe Philip's trade mark or design, finding substantial differences and no fraudulent imitation.
The main reasons
The significance: The case highlights the importance of demonstrating how a product feature is used as a trademark, and how the court will interpret the changes to trade mark law made by the 1995 Act.
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Considerations for packaging and shape. | So shape can be Trade Mark which includes the entire shape of either the goods or packaging. Trade Mark is available if function of the product does not determine the shape however the shape must go beyond function
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Colour, sound and scent | Mark must be capable of being represented graphically (writing, drawing, graph, formula) Difficulty to overcome section 40 in terms of
Scent: Cannot be inherent to product must go beyond the product
Combination of colours
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Element 2: Section 17 | Used or intended to be used to distinguish goods or services from goods originating from another person/business. |
Distinguishing goods and services | Owners must use the mark or intend to use it to distinguish their products from other products
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The legal concept: To distinguish section 41 | Section 41: Trade Mark is registerable if it is inherently distinctive or, has acquired distinctiveness through use
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The legal concept: To distinguish section 41 continued | Trade Mark will be taken to be capable of distinguishing the goods/services of the applicant from those of other traders unless subs (3) or (4) applies
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No capacity to distinguish | Grounds for rejection/ Opposition
Combination of elements will always go towards creating a more unique sign. So if you combine colours with shapes and words to create a unique sign for the company there is a much high likelihood of it being able to be distinguished. |
Test to distinguish: Clark Equipment Co v Registrar of trademarks (1964) | No definition of 'inherent adaptability to distinguish' in the Act
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Distinguishing goods and services | E and J Gallo Winery v Lion Nathon Australia Pty Ltd (2010)
Coca-Colo Company v All-Fect Distributions Ltd (1999) 96 FCR 10
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The BP v Woolworths Case
Demonstrating acquired distinctiveness | Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97
Proving that a colour alone is sufficiently distinctive can be difficult, as seen in BP's unsuccessful attempt to trade marl a specific shade of green. Colour trademarks are less likely to be approved if the colour is generic or functional within the relevant industry.
Trade Marking a single colour in Australia is difficult because its generally considered to have a low degree of inherent distinctiveness, Requiring applicants to demonstrate extensive use and acquired distinctiveness through evidence that the public associates the colour with their specific goods or services. |
No inherent adaptability to distinguish | May be registrable if there is distinctiveness through use - S 41(3)
Sings that initially may be purely descriptive can with extensive use develop an ability to distinguish
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Use or intend to use
Used or intention to use: Ownership | Registration requirement: Owner must use the sign or intent to use it as a trade mark - The owner must use it or intent to use it to distinguish its products from other products
Registration: You must be the owner of the mark
Owner must have legal capacity (person or entity) |
Intent to use | Intent to use is unconditional (Rawhide Case 1962)
Unconditional intention Actual: At some point in the future
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Used or intended use (2) | It will satisfy the require to used or intend to use if someone else has been authorised to use the trade mark and if not now then some point in the future
Used by others section 27
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Use in Australia | You are required to intend to use it in Australia if you want to register a trade mark in Australia
Held: Use even without intent to use in Australia so Trade Mark was not removed for non-use (registry)
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Geographical: Australia | Trade marks are geographical - must be used as a trade mark in Australia (Some connection with Australia)
E.g,: Is burger Kind v Hungry Jacks
Nothing inherently wrong about registering a mark that has been used by another trade in another country
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Not equal to Trade Mark use | Company, Baines names Registration of a company name does not constitute use of that name as trade mark. Business name distinguished from registration of a trade mark
Registration of a domain name will not constitute use as trade mark If you register domain name it must have a connection to your business. |
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Is there honest concurrent use?
