REGISTRATION PROCESS CREATING THE APPLICATION
State: [Applicant] may apply for registration of the trade mark in respect of [goods or services] as they claim to be the owner of the trade mark and [intend to use/has authorised someone to use/intends to assign TM to body corporate who will use] TM in relation to the goods or services (s27)
WHAT CAN BE REGISTERED?
• EXAM : In order to register their mark, [ X ] will first need to establish that this mark is a ‘sign’ within the meaning of s 17 of the TMA. As X’s mark is [ insert characteristics from below ], it falls within the meaning of s 17 and the definition of ‘sign’ in s 6 of the TMA.
•
• A trademark is (s17):
o A ‘sign’
- S. 6: "sign" includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand (mark attached/burned into goods), heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
- Open-ended definition
- New types of sign: shapes, colours, sounds, scents and tastes. Taste not listed but that does not mean its necessarily excluded
- Things that cannot be/are not signs?
¨ Lime in a beer (corona?) – have tried to get it issued as a TM (business practice of selling beer with slice of lemon or lime on top)- rejected application-
¨ Dyson UK- clear transparent bin is not a sign (mere idea) “[t]he mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation” Public interest at issue: avoiding abuse of trade mark system by claiming multitude of signs Application in Australia?
And see below as to the procedural hurdles that a third party challenger might face
¨ JW Spear & Sons Ltd v Zynga Inc [2012] EWHC 3345 (Ch) The idea of a scrabble tile is not a sign because they tried to make it any square shape with any letters or numbers (protect the scrabble game)
o Used or intended to be used
o To distinguish the 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
FUNCTIONALITY- IS THERE A FUNCTIONAL ISSUE?
§ Functional TM’s are not explicitly prohibited under the TMA, and s39 of the 1994 Act never came into force which would have forced rejection of an application if it is related to functionality. It is dealt with under general law
o TMA makes no special rules for shape marks, or any particular kind of mark: Mansfield J in Philmac o Old exclusions: A sign should not be registered as a TM if it consists exclusively of
a. The shape which results from the nature of the goods themselves b. The shape of goods which is necessary to obtain a technical result; or c. The shape which gives substantial value to the foods
o Leave (for the most part) to general legal tests: Australia , but likely to fail at distinguishable test/distinctiveness
- Where the shape of a product provides or improves its function, other traders would clearly wish legitimately to use it and it must thereby fail the Clark test for whether it is capable of distinguishing: Philips v Remington
- But…Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 - The impact of Frucor Beverages Limited v The Coca-Cola Company [2018] FCA 993?
- Also note TMA s 25 and Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27 o Cannot register technical marks in Australia
§ The UK/European exception has been said to capture three limbs:
o Shape/other results from nature of goods: natural functionality.
- Philips(1998)- shape of football for registration of TM of a football o Shape/other is necessary to obtain a technical result: technical functionality.
o Shape/other gives substantial value to the goods: aesthetic or commercial functionality.
- Haucke: The shape of the chair gives it significant aesthetic value, but also other value, e.g., safety, comfort and reliability.
- Some debate over what the CJEU was suggesting: Is it simply that the shape can have aesthetic plus other value (e.g., comfort, safety) and trigger the exclusion? Or has the CJEU said that any substantial non-trade mark value emanating from the shape makes that shape non-registerable
§ General functionality doctrine: United States Re NV Organon 79 USPQ 2d 1639 o Any TM that achieves a technical function is excluded under US law
o Applicant had developed an artificial orange flavour that was good at disguising the unpleasant taste of an anti psychotic drug.
Taste impacted on people taking it and compliance o Not registrable because its there to perform a function
CROSS BORDER REGISTRATION- WAS THIS REGISTERED OVERSEAS?
Facilitating cross-border registration
§ Priority under the Paris Convention-
o 6 months after applying in one member state to apply in another member state o Most countries are members.
§ Madrid Agreement and the Madrid Protocol:
o Designed to streamline procedures for the registration of the same mark in multiple countries somewhat simultaneously o Requires the filing of a ‘basic application’ for registration at the registry of a contracting party.
o The applicant or owner can then attempt to secure an ‘international registration’, based on this basic application.
o Notifying home registry and inform them of the other contracting parties in which protection is sought.
o The home registry will make a formality check of the application and send it to the International Bureau of WIPO, which, if a further formality check is passed, will issue a so-called ‘international registration’.
o The international registration is not directly enforceable in a contracting party.
o Rather, once the international registration is issued the International Bureau will notify the designated registries of each contracting party in which protection is sought. Each registry will then determine, under its domestic or regional laws, whether to extend protection to the mark in its jurisdiction.
o International registration lasts for 10 years and can be renewed for further periods of 10 years.
o Fast and efficient.
o But note 5-year period for ‘central attack’.
§ TMA:
o Convention country s29: if made application in one or more convention company, within 6 months after the day of that application the person applies to the registrar of TM for at least some of the goods and services they did in the other country, the person claims a right of priority for registration of the TM
- Note: A convention country is people who signed a Paris Convention agreement
EXAMINATION BY THE OFFICE
State: The Registrar will examine the application and report on whether it was made in accordance with the Act and whether there are grounds under the Act for refusing the application (s31). The Registrar must accept the application unless satisfied it was not made in accordance with the act or there are grounds for rejecting it (s33). If there are grounds for rejecting, must reject the application (s33(3).
Key inquiries:
1. Does it comply with the formal requirements for a valid application?
o Must be in an approved form- usually will not be an issue on the facts 2. Is the trade mark distinctive (s. 41);
3. Is there a conflicting mark already on the register (s.44) or another ground for refusing the application?
Note: Registrar may not reject an application without giving the applicant an opportunity to be heard (s33(4)
à Remember, if these grounds aren’t established, then the Registrar is compelled to accept the application.
DISTINCTIVENESS (S41)
STATE: A mark must meet the requirements of distinctiveness to be registered (s 41(1)). The Registrar is compelled to reject the application under s 41(1) where the mark in question falls under either s 41(3) or s 41(4).
1. State: The first step in considering s41 is to determine where along the continuum of distinctive character the mark falls. This involves consideration of the extent to which the mark is inherently adapted to distinguishing the applicant’s goods or services (Burrell).
‘Adaptation to distinguish’ is ‘tested by reference to the likelihood that other persons, trading in goods of the relevant kind… would think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it’ (Kitto J in Clark)
INHERENT DISTINCTIVENESS
1. STATE: Whether a mark is inherently adapted to distinguish is first assessed according to the ‘ordinary signification’ of the mark (Cantarella, qualifying Kitto J in Clark). This inquiry involves considering whether the mark, when viewed as a whole (Diamond T Motor) would ordinarily signify the word as descriptive of the goods or services in question before looking to the likelihood of other traders legitimately needing to use that mark(Cantarella). If both steps are met, then the mark cannot be registered as a trade mark.
[i] ASK: What would the ordinary consumer take the mark to mean?
[ii] An ordinary consumer is ‘persons who will purchase, consume or trade in the goods’
[b]
Case law:[i] Clark à Mark ‘MICHIGAN’ was deemed not inherently adapted to distinguish by Kitto J. This was because the word was a geographically descriptive word that other traders would wish to use (see word marks below)
[ii] Cantarella à ‘ORO’ and ‘CINQUE STELLE’
