7. Use of a trade mark with additions or alterations

Date Published

Sometimes a trade mark will be used with additions or alterations that do not substantially affect its identity. If this is established the Registrar and the courts have been invested with a discretion in deciding whether the trade mark has been used. In exercising this discretion regard is to be paid to the circumstances of the particular case (subsection 7(1)).

An example of a trade mark that was used with additions or alterations that did not substantially affect its identity can be found in QH Tours Ltd v Mark Travel Corp (1999) 45 IPR 553. In that case, the delegate found that use of the word ‘Funjet’ solus constituted use of the trade mark ‘Funjet-Service’.

7.1  Use of a word trade mark with an illustrative device

In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15, the High Court considered the significance of use of the word BAREFOOT with a footprint device that the Court regarded as ‘an illustration of the word’. The Court held, in the circumstances of the case, that the use, in light of the provisions of s7(1),  was use of the registered trade mark (which consisted solely of the word BAREFOOT). The majority said at 69:

The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).

However, whether use of a word trade mark with an illustrative device added to it can meet the requirements of s7(1) will depend on the circumstances of each case. Particular regard must be had to whether such a device is an obvious illustration of the word trade mark. It is possible that a highly stylised device may not be considered use of the word trade mark.