19A.2. Use 'as a trade mark'

Not all use of a particular sign will constitute use ‘as a trade mark’. In Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19], the Full Bench of the Federal Court held :

Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of 'trade mark' in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

This statement was expressly approved by a majority of the High Court in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 at [43].

In Self Care at [24], the High Court said:

Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote.   

The use of a trade mark to indicate a connection in the course of trade has been referred to as the ‘branding function’ of the trade mark (see Anheuser-Busch, Inc v Budejovický Budvar, Národní Podnik & Ors [2002] FCA 390 and Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299). In Nature's Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117 at [19], the Full Court held:

The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 422.

Use that is solely descriptive or laudatory is unlikely to be use of a sign as a ‘badge of origin’. Such use is therefore not use of a sign ‘as a trade mark’. However, the High Court in Self Care at [25] cautioned:

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods. 

It will generally be more difficult to establish that use of a descriptive word is use of a sign ‘as a trade mark’. In Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874 at [23], Hill J held:

Where the word has or a combination of words have a clear meaning in ordinary use, the question will be much more difficult as the word or combination of words may either have taken on a secondary meaning indicating the origin of the goods or may simply convey an ordinary meaning (ie some message other than the trade origin of the goods): see Top Heavy Pty Ltd v Killin (1996) 34 IPR 282 at 286.

However, his Honour went on to say at [23]:

It is well established that there is not a true dichotomy between words capable of being used as a badge of trade origin and words that are descriptive: see Johnson & Johnson at 347 per Gummow J and at 339 per Lockhart J.

In Woolworths Limited v BP Plc (No. 2) [2006] FCAFC 132 at [77] ('BP'), the Full Court commented:

How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin…

In Nature's Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117 at [19], in the context of infringement proceedings relating to a sign used on goods and in the presence of other distinctive material, the Full Court held:

Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or ‘context’) of the impugned words: Johnson & Johnson at 347; Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik [2002] FCA 390

Set out below (2.1-2.4) is a discussion of the use of signs in particular circumstances and whether this constitutes use ‘as a trade mark’. Paragraph 2.5 contains some illustrative examples that assist in understanding and applying the abstract concepts discussed above. A summary of the relevant considerations is set out in 2.6

2.1  Aural use

An aural representation of a trade mark that consists of a letter, word, name or numeral, or any combination thereof, is considered use of the trade mark for the purposes of the Act (s 7(2)).

Corroborated recollection of a conversation in which a trade mark has been referred to in relation to a commercial product available for purchase has been held by the Federal Court to constitute sufficient evidence of use as a trade mark - Rakman International Pty Limited v Boss Fire & Safety Pty Ltd [2022] FCA 464 at [571] (‘Rakman’). However, in the same case, Yates J confirmed that caution must be exercised in accepting such evidence, and rejected other evidence of conversations on the basis that they did not occur in the course of trade (at [580]) or that the evidence did not establish that reference to the trade mark occurred in the course of particular meetings (at [595] to [597]).  

Aural use of a trade mark may in some cases be inferred. For instance, use of a composite mark containing word and device elements is likely to also lead to aural use of the word alone in circumstances where the trade mark is referred to during verbal dealings for the goods or services (for example, where goods are normally ordered over the phone). It is important, however, to consider the limitations of this use as well. Aural use to refer a composite mark, is not use of the composite mark itself. It is use of the letter, word, name or numeral, or any combination thereof which appears within a composite mark.  It might be use of a substantially identical mark but that is a question of how much graphic or other material is included in the composite mark beyond the letter, word, name or numeral, or any combination thereof. 

2.2  Use as a domain name, key word, metatag, social media account name or handle

It is common for many traders to provide their goods or services via a website that is identified by a domain name. Use of a domain name may in some circumstances constitute use of a trade mark. In Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, Kenny J held at [153]:

It is not suggested that mere registration of a domain name can amount to use of the mark. More must be shown. Plainly enough, not all domain names will be used as a sign to distinguish the goods or services of one trader in the course of trade from the goods or services of another trader. Sports Warehouse is correct in its submission that that whether or not a domain name is used as a trade mark will depend on the context in which the domain name is used. In this case, the domain name is more than an address for a website, the domain name is also a sign for the Applicant’s online retailing service available at the website. In the context of online services, the public is likely to understand a domain name consisting of the trade mark (or something very like it) as a sign for the online services identified by the trade mark as available at the webpage to which it carries the internet user.

Goods or services available via websites are generally located via internet search engines. Internet search engine providers often sell words or phrases corresponding to registered trade marks as ‘key words’ or ‘metatags’. A purchaser of a key word or metatag will generally have their website prioritised in search results for that key word or metatag.  Metatags contain computer coding statement of the content of a particular website and are used by search engines to index and find a page. The practice by search engines to optimise or rank the priority of a website appearing in its search result by metatag is sometimes referred to as ‘Ad Word’ or key word advertising.

In Advantage Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd [2016] FCA 255 and Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319, the Federal Court held that the metatag use was not use as a trade mark because it was not visible to the ordinary internet user. However, in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, the Full Court affirmed a decision by the primary judge that use of HARBOUR LIGHTS in source code of its website was use as a trade mark for the purpose of determining an infringement claim. This was despite the fact that there was no evidence that anyone saw the metadata.

Evidence of use of a trade mark as metadata should be treated with caution for the purposes of assessing registrability under s 41 and s 44. In many cases, even if the use relied on is use ‘as a trade mark’ the weight that it should be given may be significantly diminished by the context of use. Further, metadata use is more likely to be relevant to infringement cases. It is unlikely that an applicant would rely solely on evidence of use as a metatag to support registration.  

However, use in sponsored link advertisements (being visible to consumers) may constitute more compelling evidence of trade mark use.

The use of sign as an account name or handle on social media can also constitute ‘use as a trade mark’. In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, Burley J held at [324] that the use of the words LA FAMIGLIA RANA as the account name and @lafamigliarana as the handle on Facebook both constituted trade mark use. His honour said at [325]:

In my view each of the account names and the @lafamigliarana handles amount to trade mark uses. A consumer would not see them as merely being descriptive. They indicate a connection in the course of trade between the goods and the person who applies the mark to the goods: Johnson & Johnson (Lockhart J at 341, Burchett J at 342, Gummow J at 251); Shell Co (per Kitto J at 424-425, Dixon CJ, Taylor J and Owen J separately agreeing). They are used to identify the Rana Facebook page or Rana Instagram page, each of which provides a means by which goods sold by Rana are displayed and presented: see, by analogy in relation to a domain name Flexopack at [64] and Sports Warehouse at [154].

Using similar analysis, the Full Federal Court in Henley Constructions Pty Ltd v Henley Arch Pty Ltd [2023] FCAFC 62 allowed Henley Properties’ cross-appeal and held that the phoneword 1300HENLEY was used as a trade mark. At [297], the Full Court said:

While, undoubtedly, Henley Constructions used the sign 1300HENLEY as a telephone number, it did so for promotional purposes—namely, to promote the name HENLEY as the source of the building and construction services that Henley Constructions was offering in trade. In this way, Henley Constructions was using 1300HENLEY as a sign to distinguish its services from the building and construction services provided by other traders. 

2.3  Business names

A business name and a trade mark are related but different things. A business name is the name under which a business operates and if it is different from the name of person or company who carries on the business, it must be registered as a business name with ASIC. The allocation of a business name (or a company) by ASIC does not give the holder any rights to use that business or company name. Trade mark rights in a business or company name arise in two ways: by registration as a trade mark under the Trade Marks Act 1995 or by developing common law rights (reputation) through use of the business or company name. The purpose of the business name registration systems is to make readily available on the public records the operators of a business.  It is administrative, not proprietary, in character. Registration of a business name in itself creates no intellectual property rights and is not prima facie evidence that a sign has been used ‘as a trade mark’.

In Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278 at [73], Lander J held:

There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services. The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person. Because it has established that it intended to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.

Whether a person has used a sign that constitutes their business name as ‘a trade mark’ will depend on whether they have used it as a badge of origin taking into account the considerations outlined above.  

In many cases, particularly in relation to provision of services, the trade mark and business name will be one and the same, in that the same word or phrase will serve the dual purpose of being the name under which the business is carried on, and the name which distinguishes the services of that business.  

 

2.4  Shape and colour trade marks

• See Part 21 Non Traditional Signs

The normal rules apply when determining whether a shape or a colour has been used ‘as a trade mark’. However, the relationship of a shape or a colour to the relevant goods or services will influence how the general principles are applied.

In Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at 61, Sundberg J set out the criteria for determining whether use of a shape is use ‘as a trade mark’.

The principles relevant to use of shape as a trade mark are now set out.

a. A special shape which is the whole or part of goods may serve as a badge of origin. However the shape must have a feature that is ‘extra’ and distinct from the inherent form of the particular goods: Mayne at [67], Remington at [16] and Kenman Kandy at [137]

b. Non-descriptive features of a shape point towards a finding that such features are used for a trade mark purpose. Where features are striking, trade mark use will more readily be found. For example, features that make goods more arresting of appearance and more attractive may distinguish the goods from those of others: All-Fect at [25].

c. Descriptive features, like descriptive words, make it more difficult to establish that those features distinguish the product. For example, the word COLA or an ordinary straight walled bottle are descriptive features that would have limited trade mark significance: All-Fect at [25] and Mayne at [61]-[62].

d. Where the trade mark comprises a shape which involves a substantial functional element in the goods, references to the shape are almost certainly to the nature of the goods themselves rather than use of the shape as a trade mark: Mayne at [63]. For example, evidence that a shape was previously patented will weigh against a finding that the shape serves as a badge of origin: Remington at [12] and Mayne at [69].

e. If a shape or a feature of a shape is either concocted compared to the inherent form of the shaped goods or incidental to the subject matter of a patent, it is unlikely to be a shape having any functional element. This may point towards the shape being used as a trade mark: Kenman Kandy at [162] and Mayne at [69].

f. Whether a person has used a shape or a feature of a shape as a trade mark is a matter for the court, and cannot be governed by the absence of evidence on the point: All-Fect at [35].

g. Context "is all important" and will typically characterise the mark’s use as either trade mark use or not: Remington at [19] and Mayne at [60]-[62].

As is apparent from the foregoing propositions, a shape mark case may require consideration of different types of features in determining whether the mark is used as a trade mark for the purposes of the Act. At one end of the spectrum are shapes or features thereof that are purely functional. The features may have derived substantially from a patented product, such as the S-shaped fence dropper, or go to the usefulness of the product: Remington at [3] and [12]. Cases such as Mayne and Remington show that such features point away from trade mark use.

At the other end of the spectrum are those features of a mark that are non-descriptive and non-functional. They ordinarily make the shape more arresting of appearance and more attractive, thus providing a means of distinguishing the goods from those of others. All-Fect and Remington show that non-functional features add something extra to the inherent form of the shape. A concocted feature will typically be considered non-functional: Kenman Kandy.

Finally, there will be cases, such as the present, that fall between the ends of the spectrum. These cases are not black and white. They involve consideration of whether one set of features supersedes, submerges or overwhelms the other.

Similarly, considerations of functionality will be relevant in determining whether a colour has been used ‘as a trade mark’. In Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551 at 53, Mansfield J held:

… a trader might legitimately choose a colour for its practical utility. That is, the colour may be a feature of a product that serves to improve the functionality or durability of the product. The function of visibility is, for example, served by the colour yellow; heat absorption by the colour black; light reflection by the colour white; military camouflage by a combination of khaki, brown and green.

…

The shape mark cases properly indicate a reluctance to permit, by virtue of a trade mark registration, a permanent monopoly of matters of engineering design: Kenman per French J at [45]; Koninklijke Philips Electronics NV v Remington Products Australia Ltd [1999] FCA 816; (1999) 91 FCR 167; Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279 per Jacob J; British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281. In my view there is no reason why the functionality principles applied to the registration of shape marks should not also apply to the consideration of the application of colour marks.

It is important to bear in mind that even if an applicant can establish that a particular use of their shape or colour is use ‘as a trade mark’, that use may not be sufficient to demonstrate the mark is or will become capable of distinguishing for the purposes of s 41 (see Parts 21, 22 and 23).
​​​​​​​

2.5  Illustrative examples

It is not possible to list exhaustively all situations in which use ‘as a trade mark’ will or will not occur. However, the cases provide some illustrative examples.

Examples where use as a trade mark found

The High Court in Self Care v Allegan expressly approved at [25] Allsop J’s decision in Anheuser-Busch, Inc v Budejovicky Budvar, Narodni Podnik [2002] FCA 390 at [191] that Budejovicky Budvar used “Budweiser Budvar” as a trade mark on its labels and packaging notwithstanding the presence of a clear, dominant brand: Budejovicky Budvar. One of the labels in question was:

At [190]-[191] Allsop J explained:

[190] Here, dealing with Exhibit GRB 11 and Exhibit TH 10, the matters to which I have referred above, taken in conjunction with the fact that the words ‘Budweiser Budvar’, and the word ‘Budweiser’, are used in a collocation of words giving information about the trade connection and from the impression which I think someone who reads it will take, lead me to the conclusion that ‘Budweiser’ and ‘Budweiser Budvar’ is and are being used as trade marks on the orange strip.

[191] It is not to the point, with respect, to say that because another part of the label (the white section with ‘Budějovický Budvar’) is the obvious and important ‘brand’, that another part of the label cannot act to distinguish the goods. The ‘branding function’, if that expression is merely used as a synonym for the contents of ss 7 and 17 of the TM Act, can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant ‘brand’ is of relevance to the assessment of what would be taken to be the effect of the balance of the label.

In Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874, the Full Court held that Aldi had used “Cheezy Twists” as a trade mark notwithstanding the descriptive nature of the phrase and the presence of a “house” brand “Chazoos”: 

After discussing the principles at [26], Hill J said:

 … While the words “Cheezy Twists” are capable of describing the contents of the package, my view is that they do much more than that.  Such description is found on the packet in any event in the words “cheese flavoured snacks”, which on no view of the matter were used as a trade mark.  While it is no doubt true to say that the word  “Chazoos”, with or without logo, is used as a trade mark, the present is a case where two trade marks are used, one a generic word used over a product range and the other used as a badge of origin in respect of a particular product.

And at [80], Lindgren J said:

The distinctive form of the words “CHEEZY TWISTS”, their prominent position within the waving banner across the front of the packets, and the use of the obviously descriptive expression “cheese flavoured snacks” just below the banner, and, far less significantly, the misspelling of “CHEEZY”, all of which were referred to by his Honour, lead me to conclude that he did not err in finding that in the use it made of them on the packets, Aldi used the words “CHEEZY TWISTS” as a trade mark. 

In Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291, the court considered whether use of the words CIRCLE ON CAVILL by the respondent infringed various trade marks consisting of or containing these words. ‘Circle on Cavill’ was the name of an apartment complex on the Gold Coast in which accommodation could be rented.  

Reeves J considered the context of the respondent’s use, particularly given the term ‘Circle on Cavill’ was also used in a descriptive capacity on the respondent’s website. He said at [57]:

However, when one looks at the uses Tailly has made of the words “Circle on Cavill” on its websites as a whole and in context, I consider this descriptive use of those words pales into insignificance by comparison to the other use Tailly has made of those words. Moreover, I consider the other use Tailly has made of those words clearly constitutes trade mark use. As to the descriptive use of those words, when one looks at each website, it is clear that the descriptive use appears in small font in the form of prose in the body of the website. On the other hand, the other use Tailly has made of the words “Circle on Cavill” appears at the head of the first page of each website in a banner-style heading in large font combined with a depictive background. Thus, when one compares the size, positioning and format of the descriptive use of the words “Circle on Cavill”, with the size, positioning and format of the banner heading use of those words, I consider that a member of the public, taking an objective view of the matter, would conclude that the primary, or most significant use of those words is as a badge or emblem to indicate that Tailly is the origin of the accommodation letting services at Circle on Cavill.

In BP, the Full Court held that the use of green and yellow (or gold) by BP as its corporate colours was to distinguish its goods and services from other oil companies (although the court ultimately held that such use did not align with the mark applied for – namely, the colour green by itself). The Full Court took into account the longstanding use of colour by oil companies as part of the getup of their service stations and the aural reference to the colours in advertisements by BP. 

Examples where use as a trade mark not found

In Self Care, it was held that various uses of the phrase ‘instant Botox(R) alternative’ were not use ‘as a trade mark’ (example below).  

Factors taken into account include (i) the use of two clear ‘badges of origin’ FREEZEFRAME (umbrella brand) and INHIBOX (the name of the product), (ii) the small font in which ‘instant Botox(R) alternative’ was used, (iii) the descriptive nature of ‘instant Botox(R) alternative’, and (iv) inconsistent use of font, size, and presentation across different products and the user’s website.   

In Re Johnson and Johnson Australia Pty Limited v Stirling Pharmaceuticals Pty Limited [1991] FCA 310, an infringement action, the court considered whether use of the word CAPLETS on packaging for paracetamol was use ‘as a trade mark’. On the facts, the court held that there was no use ‘as a trade mark’. Relevant to the court’s decision was the fact that the word TYLENOL was the striking feature of the packaging and that the word CAPLETS was used in a similar sized font to clearly descriptive material (such as Paracetamol 500mg). Lockhart J held at 73:

On the facts, the court held that there was no use ‘as a trade mark’ by Johnson and Johnson. Relevant to the court’s decision was the fact that the word TYLENOL was the striking feature of the packaging and that the word CAPLETS was used in a similar sized font to clearly descriptive material (such as Paracetamol 500mg).  

It is interesting to note that Sterling Pharmaceuticals (whose infringement action was unsuccessful) were presenting CAPLETS as a trade mark on their Panadol caplets packs (see the TM notation in the example below, indicating that Panadol Caplets is a "BRAND OF PARACETAMOL", with the word CAPLETS itself bearing a TM symbol) however,  

Lockhart J held at [73]:

The context in which CAPLETS appears on the TYLENOL packaging and in its advertising demonstrates plainly in my opinion that the use is essentially descriptive and not a badge of origin in the sense that it indicates a connection in the course of trade between the product TYLENOL and the appellant. A person looking at the packaging would assume that the word CAPLETS describes or indicates the shape of the product contained in it or the dosage form. It is used in a descriptive sense precisely as the words tablets or capsules are used. 

In Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd [2020] FCA 82; 150 IPR 11(confirmed on appeal [2020] FCAFC 186), the court held at 204 that the dominant use of ‘Urban Pale’ on a beer label was as a product name descriptive of the nature and style of the beer product in question.    

In reaching this conclusion, O’Bryan J took into account the nearby use of the words ‘by La Sirene’ which he considered conveyed the source of origin of the product.   

In Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, the applicant was seeking registration of a seahorse shape for chocolates. The applicant used the shape on chocolates that also displayed the letter ‘G’ prominently.  The shape was also displayed on the front of a box that contained other ocean themed shapes and the mark GUYLIAN as its most striking feature. 

In upholding the decision of the Registrar to refuse registration, Sundberg J said at [97]:

Each case turns on its own facts and here my impression of the packaging and promotional material as a whole is that it is the “Guylian” trademark, together with the “G” logo”, that does the work of distinguishing the goods, not the seahorse shape.

2.6  Summary of relevant considerations

A summary of some of the main considerations for determining whether use of a sign is use ‘as a trade mark’ is set out in the following table: