8. Use of multiple trade marks

Date Published

Traders may use multiple trade marks in relation to the same goods or services, for instance a house mark and a trade mark for a specific line brand (e.g. INTEL and PENTIUM).  It may be difficult to establish whether a person has used multiple trade marks or a single trade mark containing multiple elements. However this enquiry is necessary to determine whether there has been use of the trade mark in question.

Particular difficulties arise where one or more of the elements present is descriptive in nature. In Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, it was held that use of the word COLORADO with a device was use as a composite mark, and not use of the word COLORADO solus. However, in Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 at 133, Kenny J said:

I accept, as Sports Warehouse contended, that a sign may be registrable as a trade mark even though it is used together with another trade mark, and that there can still be use of a mark where it is a component of a larger composite mark: see Chocolaterie Guylian at 93 [97]; also E & J Gallo Winery at 662 [68]-[69]; also E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69 at 108 [186] (Flick J). Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 74 IPR 246 (‘Colorado’) is not authority for the contrary proposition. Each case turns on its own facts and the trade mark in question viewed in the context of those facts.

However, if we are to accept that a sign can be used as a trade mark even where it is used as part of a larger trade mark, the presence of more distinctive material in close proximity to the sign will likely make it difficult to establish use sufficient to demonstrate a capacity to distinguish in its own right. In Sports Warehouse, Kenny J held at 133:

Where an application for registration relies on use, the question is whether the particular sign for which registration is sought has itself been used as a trade mark so as to become capable of distinguishing the relevant goods or services. In my view, when the “TW” logo was placed in close association with the words “TENNIS WAREHOUSE” in 2003, this had the effect of substantially diluting any trade mark significance that attached to the words “TENNIS WAREHOUSE” by themselves.

See also Wellness Pty Ltd v Pro Bio Living Waters Pty Limited [2004] FCA 438; Michael Harvey v Lion-Beer, Spirits & Wine Pty Ltd [2013] ATMO 5.