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- Part 1 Introduction, Quality
- 1. Introduction
- 2. Quality Management at IP Australia
- 3. Monitoring and Measuring Quality at IP Australia
- 4. Examination Quality Standards
- Part 2 General Filing Requirements
- Relevant Legislation
- 1. How a document is filed
- 2. Filing of Documents - requirements as to form
- 3. Non-compliance with filing requirements
- 4. Filing Process (excluding filing of applications for registration)
- Part 3 Filing Requirements for a Trade Mark Application
- Relevant Legislation
- 1. Who may apply?
- 2. Form of the application
- 3. Information required in the application
- 4. When is an application taken to have been filed?
- 5. The reason for having minimum filing requirements
- 6. The minimum filing requirements
- 7. Consequences of non compliance with minimum filing requirements
- 8. Other filing requirements
- 9. Fees
- 10. Process procedures for non payment or underpayment of the appropriate fee
- 11. Process procedures for the filing of a trade mark application
- Part 4 Fees
- Relevant Legislation
- 1. Fees - general
- 2. Circumstances in which fees are refunded or waived
- 3. Procedures for dealing with "fee" correspondence
- 4. Underpayments
- 5. Refunds and or waivers
- 6. No fee paid
- 7. Electronic transfers
- 8. Disputed credit card payments/Dishonoured cheques
- Part 5 Data Capture and Indexing
- Part 6 Expedited Examination
- Part 7 Withdrawal of Applications, Notices and Requests
- Relevant Legislation
- 1. Withdrawal of an application, notice or request
- 2. Who can withdraw an application, notice or request?
- 3. Procedure for withdrawal of an application, notice or request
- 4. Procedure for withdrawal of an application to register a trade mark
- Part 8 Amalgamation (Linking) of Trade Marks
- Relevant Legislation
- 1. Amalgamation of applications for Registration (Transitional)
- 2. Amalgamation (Linking) of Trade Marks under the Trade Marks Amendment Act 2006
- Part 9 Amendments and Changes to Name and Address
- Relevant Legislation
- 1. Introduction
- 2. Amendment of an application for a registration of a trade mark - general information
- 3. Amendment before particulars of an application are published (Section 64)
- 4. Amendment after particulars of an application have been published (Sections 63, 65 and 65A)
- 5. Amendments to other documents
- 6. Amendments after registration
- 7. Changes of name, address and address for service
- 8. Process for amendments under subsection 63(1)
- Part 10 Details of Formality Requirements
- Relevant Legislation
- Introduction
- 1. Formality requirements - Name
- 2. Formality requirements - Identity
- 3. Representation of the Trade Mark - General
- 4. Translation/transliteration of Non-English words and non-Roman characters
- 5. Specification of goods and/or services
- 6. Address for service
- 7. Signature
- 8. Complying with formality requirements
- Annex A1 - Abbreviations of types of companies recognised as bodies corporate
- Annex A2 - Identity of the applicant
- Part 11 Convention Applications
- Relevant Legislation
- 1. Applications in Australia (convention applications) where the applicant claims a right of priority
- 2. Making a claim for priority
- 3. Examination of applications claiming convention priority
- 4. Convention documents
- 5. Cases where multiple priority dates apply
- 6. Recording the claim
- 7. Effect on registration of a claim for priority based on an earlier application
- Part 12 Divisional Applications
- Relevant Legislation
- 1. Divisional applications - general
- 2. Why file a divisional application?
- 3. Conditions for a valid divisional application filed on or after 27 March 2007
- 4. In whose name may a divisional application be filed?
- 5. Convention claims and divisional applications
- 6. Can a divisional application be based on a parent application which is itself a divisional application? What is the filing date in this situation?
- 7. Can the divisional details be deleted from a valid divisional application?
- 8. Divisional applications and late citations - additional fifteen months
- 9. Divisional Applications and the Intellectual Property Laws Amendment (Raising the Bar) Act 2012
- Annex A1 Divisional Checklist
- Part 13 Application to Register a Series of Trade Marks
- Relevant Legislation
- 1. Series of Trade Marks - Act
- 2. Material Particulars
- 3. Provisions of Paragraphs 51(1)(a),(b) and (c)
- 4. Applying Requirements for Material Particulars and Provisions of Paragraphs 51(1)(a), (b) and (c)
- 5. Restrict to Accord
- 6. Examples of Valid Series Trade Marks
- 7. Examples of Invalid Series Trade Marks
- 8. Divisional Applications from Series
- 9. Linking of Series Applications
- 10. Colour Endorsements
- Part 14 Classification of Goods and Services
- Relevant Legislation
- 1. The purpose of classification
- 2. The classification system
- 3. Requirement for a clear specification and for correct classification
- 4. Classification procedures in examination
- 5. Principles of classification and finding the correct class for specific items
- 6. Wording of the specification
- 7. Interpretation of specifications
- 8. International Convention Documents
- Annex A1 - History of the classification system
- Annex A2 - Principles of classification
- Annex A3 - Registered words which are not acceptable in specifications of goods and services
- Annex A4 - Searching the NICE classification
- Annex A5 - Using the Trade Marks Classification Search
- Annex A6 - Cross search classes - pre-June 2000
- Annex A7 - Cross search classes - June 2000 to December 2001
- Annex A8 - Cross search classes from 1 January 2002
- Annex A9 - Cross search classes from November 2005
- Annex A10 - Cross search classes from March 2007
- Annex A11 - Cross search classes from January 2012
- Annex A12 - Cross search classes from January 2015
- Part 15 General Provision for Extensions of Time
- Relevant Legislation
- 1. When the general provision applies
- 2. When the general provision does not apply
- 3. Circumstances in which the Registrar must extend time
- 4. Grounds on which the Registrar may grant an extension of time
- 5. Form of the application
- 6. Extensions of time of more than three months
- 7. Review of the Registrar's decision
- Part 16 Time Limits for Acceptance of an Application for Registration
- Relevant Legislation
- 1. What are the time limits for acceptance of an application to register a trade mark?
- 2. Response to an examination report received within four (or less) weeks of lapsing date
- Part 17 Deferment of Acceptance
- Relevant Legislation
- 1. Deferment of Acceptance - introduction
- 2. Circumstances under which deferments will be granted
- 3. Period of deferment
- 4. The deferment process where the applicant has requested deferment
- 5. The deferment process where the Registrar may grant deferment on his or her own initiative
- 6. Termination of deferment
- 7. Transitional practice
- Annex A1 - Deferment of acceptance date - Grounds and time limits
- Part 18 Finalisation of Application for Registration
- Relevant Legislation
- 1. Introduction
- 2. Accepting an application for registration
- 3. Rejection of an application for registration
- Part 19A Use of a Trade Mark
- Relevant Legislation
- 1. Use of a trade mark generally
- 2. Use 'as a trade mark'
- 3. Use 'in the course of trade'
- 4. Australian Use
- 5. Use 'in relation to goods or services'
- 6. Use by the trade mark owner, predecessor in title or an authorised user
- 7. Use of a trade mark with additions or alterations
- 8. Use of multiple trade marks
- Part 19B Rights Given by Registration of a Trade Mark
- Relevant Legislation
- 1. The trade mark as property
- 2. What rights are given by trade mark registration?
- 3. Rights of an authorised user of a registered trade mark
- 4. The right to take infringement action
- 5. Loss of exclusive rights
- Part 20 Definition of a Trade Mark and Presumption of Registrability
- Relevant Legislation
- 1. Definition of a trade mark
- 2. Background to definition of a trade mark
- 3. Definition of sign
- 4. Presumption of registrability
- 5. Grounds for rejection and the presumption of registrability
- Part 21 Non-traditional Signs
- Relevant Legislation
- 1. Non-traditional signs
- 2. Representing non-traditional signs
- 3. Shape (three-dimensional) trade marks
- 4. Colour and coloured trade marks
- 5. "Sensory" trade marks - sounds and scents
- 6. Sound (auditory) trade marks
- 7. Scent trade marks
- 8. Composite trade marks - combinations of shapes, colours, words etc
- 9. Moving images, holograms and gestures
- 10. Other kinds of non-traditional signs
- Part 22 Section 41 - Capable of Distinguishing
- Relevant Legislation
- 1. Registrability under section 41 of the Trade Marks Act 1995
- 2. Presumption of registrability
- 3. Inherent adaptation to distinguish
- 4. Trade marks considered sufficiently inherently capable of distinguishing
- 5. Trade marks that have limited inherent capacity to distinguish but are not prima facie capable of distinguishing
- 6. Trade marks having no inherent adaptation to distinguish
- 7. Examination
- Registrability of Various Kinds of Signs
- 8. Letters
- 9. Words
- 10. Phonetic equivalents, misspellings and combinations of known words
- 11. Words in Languages other than English
- 12. Slogans, phrases and multiple words
- 13. Common formats for trade marks
- 14. New terminology and "fashionable" words
- 15. Geographical names
- 16. Surnames
- 17. Name of a person
- 18. Summary of examination practice in relation to names
- 19. Corporate names
- 20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works
- 21. Titles of other books or media
- 22. Numerals
- 23. Combinations of letters and numerals
- 24. Trade marks for pharmaceutical or veterinary substances
- 25. Devices
- 26. Composite trade marks
- 27. Trade marks that include plant varietal name
- Annex A1 Section 41 prior to Raising the Bar
- Annex A2 Flowchart of "Capable of Distinguishing"
- Part 23 Overcoming Grounds for Rejection under Section 41 - including Evidence of Use
- Relevant Legislation
- 1. Introduction
- 2. Submissions in rebuttal, amendments and informal information
- 3. Evidence of use - general requirements
- 4. Examining evidence - general
- 5. Specific evidence requirements for trade marks with no inherent adaptation to distinguish
- 6. Endorsements for applications overcoming section 41 grounds for rejection
- Annex A1 - Information for applicants on the preparation and presentation of a declaration including model layout
- Annex A2 - Model layout for statutory declaration/affidavit
- Annex A3 - Model layout for supporting statutory declaration
- Annex A4 - How to supply evidence of use of a Trade Mark under subsection 41(5) - for trade marks with a filing date prior to 15 April 2013
- Annex A5 - How to supply evidence for use of a Trade Mark under subsection 41(6) - for trade marks with a filing date prior to 15 April 2013
- Annex A6 - How to supply evidence of use of a trade mark under subsection 41(4) - for trade marks with a filing date on or after 15 April 2013
- Annex A7 - How to supply evidence of use of a trade mark under subsection 41(3) - for trade marks with a filing date on or after 15 April 2013
- Part 24 Disclaimers
- Relevant Legislation
- 1. What is a disclaimer?
- 2. Request for a voluntary disclaimer
- 3. Effect of a disclaimer on registration
- 4. Effect of a disclaimer on examination
- 5. Amendment of disclaimers
- 6. Revocation of disclaimers
- Part 26 Section 44 and Regulation 4.15A - Conflict with Other Signs
- Relevant Legislation
- 1. Introduction to section 44 and regulation 4.15A
- 2. Presumption of registrability and the application of section 44
- 3. Cross Class Search List
- 4. Similarity of goods and services
- 5. Similarity of trade marks
- 6. Factors to consider when comparing trade marks
- 7. Trade marks with the same priority/filing date
- 8. Assignment of applications and registrations
- 9. Grounds for rejection when the citation is in its renewal period
- Annex A1 - Citing multiple names
- Part 27 Overcoming Grounds for Rejection under Section 44
- Relevant Legislation
- 1. Introduction
- 2. Amending the goods and/or services of the applicant's specification
- 3. Negotiation with owner/s of conflicting trade mark/s
- 4. Filing evidence of honest concurrent use, prior use or other circumstances
- 5. Removal of the conflicting trade mark
- 6. Dividing the application
- Annex A1 - An example of a letter of consent
- Part 28 Honest Concurrent Use, Prior Use or Other Circumstances
- Relevant Legislation
- 1. Introduction
- 2. Honest concurrent use - paragraph 44(3)(a)
- 3. Examining evidence of honest concurrent use - the five criteria
- 4. Other circumstances - paragraph 44(3)(b)
- 5. Conditions and limitations to applications proceeding under subsection 44(3)
- 6. Prior use - subsection 44(4)
- 7. Examining evidence of prior use
- 8. Endorsements where the provisions of subsection 44(3) or 44(4) and/or reg 4.15A are applied
- Annex A1 - Information sheet for trade mark applicants - Evidence of honest and concurrent, prior use or other circumstances
- Part 29 Section 43 - Trade Marks likely to Deceive or Cause Confusion
- Relevant Legislation
- 1. Trade marks likely to deceive or cause confusion
- 2. Connotation
- 3. Deception and confusion as a result of a connotation within a trade mark
- 4. Descriptions of goods/services
- 5. International Non-Proprietary Names and INN Stems
- 6. Names of Persons
- 7. Phonewords and Phone Numbers
- 8. Internet Domain Names
- 9. Geographical References
- 10. Claims to Indigenous Origin
- Annex A1 - Table of INN stems
- Part 30 Signs that are Scandalous and Use Contrary to Law
- Relevant Legislation
- 1. Introduction
- 2. Scandalous signs
- 3. Use contrary to law
- Annex A1 - Examples of Legislation which may trigger the provisions of section 42(b)
- Annex A2 - Official notice re copyright in the Aboriginal Flag
- Annex A3 - Defence force prohibited terms and emblems
- Annex A4 - Major Sporting Events protected words
- Part 31 Prescribed and Prohibited Signs
- Relevant Legislation
- 1. Prohibited signs - subsection 39(1)
- 2. Prescribed signs - subsection 39(2)
- 3. When does a ground for rejection exist under subsection 39(2)?
- 4. Practice regarding the signs prescribed under subsection 39(2) appearing in subreg 4.15
- 5. Other information relevant to examining trade marks that contain a prohibited and prescribed sign
- Part 32A Examination of Trade Marks for Plants (in Class 31)
- Relevant Legislation
- 1. Introduction
- 2. Examination of Plant Trade Marks
- 2.1 Section 42: Contrary to Law
- 2.2 Section 39: Prescribed Signs
- 2.3 Section 41: Capacity to Distinguish
- 2.4 Section 43: Deception and Confusion
- 2.5 Section 44: Comparison of Trade Marks
- 2.6 Non-Roman characters (NRC) and transliterations in class 31 plant examination
- Annex 1 - Applicable Section of the PBR Act
- Annex 2 - Applicable Sections of the UPOV Convention
- Annex 3 - Applicable Sections of the ICNCP
- Annex 4 - An Example of a PBR Letter of Consent
- Annex 5 - Case Law Summaries
- Annex 6 - How to Supply Evidence of Use of a Trade Mark for Plants and/or Plant Material
- Part 32B Examination of Trade Marks for Wines (in Class 33)
- Relevant Legislation
- 1. Introduction
- 2. Examination of Wine Trade Marks
- 2.1 Section 42: Contrary to Law
- 2.2 Section 43: Deception and Confusion
- 2.3 Section 41: Capacity to Distinguish
- 2.4 Section 44: Comparison of Trade Marks
- 3. Protected Terms in Specifications of Goods
- Part 33 Collective Trade Marks
- Relevant Legislation
- 1. What is a collective trademark?
- 2. Application of Act
- 3. Application for registration
- 4. Limitation on rights given by registered collective trade marks
- 5. Assignment or transmission of collective trade marks
- 6. Infringement of collective trade marks
- Part 34 Defensive Trade Marks
- Relevant Legislation
- 1. Australian trade marks law and defensive trade marks
- 2. Requirements for the filing of a defensive trade mark
- 3. Section of the Act NOT applying to defensive trade marks
- 4. Registrability of defensive trade marks
- 5. Grounds for rejection under Division 2 of Part 4 of the Act
- 6. Grounds for rejecting a defensive application under section 187
- 7. Evidence required for defensive applications
- 8. Rights given by defensive registration
- 9. Grounds for opposing a defensive registration
- 10. Cancellation of defensive trade marks
- Part 35 Certification Trade Marks
- Relevant Legislation
- 1. What is a certification trade mark?
- 2. Certification trade marks and geographical indications (GIs)
- 3. Sections of the Act NOT applying to certification trade marks
- 4. The registrability of certification trade marks
- 5. Rights given by, and rules governing the use of, certification trade marks
- 6. Assessment by the Australian Competition and Consumer Commission (ACCC)
- 7. Opposition to the registration of a certification trade mark
- 8. Variation of rules
- 9. Assignment of registered certification trade marks
- 10. Assignment of unregistered certification trade marks
- 11. Transmission of certification trade marks
- 12. Rectification of the Register and variation of rules by order of the court
- Annex A1 - Certification Trade Marks flow chart
- Part 38 Revocation of Acceptance
- Relevant Legislation
- 1. What is revocation of acceptance?
- 2. Reasons for revocation
- 3. Revocation process
- Part 39 Registration of a Trade Mark
- Relevant Legislation
- 1. Overview of registration
- 2. Particulars of registration
- 3. Format of Certificate of registration
- 4. Timing
- 5. Date and term of registration
- 6. Registration fees
- 7. Registration process
- 8. Notification of Protection process for International Registrations Designating Australia
- Annex A1 - Certificate of Registration
- Part 40 Renewal of Registration
- Part 41 Cancellation of Registration
- Relevant Legislation
- 1. What is the effect of cancelling a registration?
- 2. Why is a registration cancelled?
- 3. Cancellation process
- Part 42 Rectification of the Register
- Relevant Legislation
- 1. What is rectification?
- 2. What part does the Registrar play in rectification actions brought by a person aggrieved?
- 3. Rectification procedures
- Annex A1 - Flow chart of rectification procedure
- Part 43 Assignment and Transmission
- Relevant Legislation
- 1. What is assignment and transmission?
- 2. Timing for assignment
- 3. Application to record assignment etc
- 4. Process for assigning all goods and/or services (full assignment)
- 5. Process for assigning only some goods and/or services (partial assignment)
- 6. Process for assignment of certification trade marks
- 7. Transmission of certification trade marks
- Part 44 Claim of Interest or Rights in a Trade Mark
- Relevant Legislation
- 1. Background
- 2. Effect of recording the claim
- 3. When can the interest be recorded?
- 4. Recording the claim
- 5. Amending the record of a claim
- 6. Cancelling the record of a claim
- Part 45 Copies of Documents
- Relevant Legislation
- 1. Documents copied by the Office
- 2. Types of copies requested
- Annex A1 - Flow chart of production of copies/certified copies
- Part 46 Grounds for Opposition to Registration or Protection
- Relevant Legislation
- References used in this part
- 1. What is opposition to registration or protection?
- 2. The Registrar’s role in an opposition
- 3. When registration or protection can be opposed
- 4. Grounds for opposition to registration of national trade marks
- 5. Grounds for opposition to protection of international trade marks
- Part 47 Procedures for Opposing Registration or Protection
- Relevant Legislation
- 1. Filing a notice of opposition
- 2. Request to amend a notice of intention to oppose or a statement of grounds and particulars
- 3. Filing a notice of intention to defend
- 4. Opposition may proceed in the name of another person
- 5. Making Convention documents available to opponent
- Part 48 Removal of a Trade Mark from the Register for Non-use
- Relevant legislation
- References used in this part
- 1. What if a trade mark is not used?
- 2. Application for removal/cessation of protection for non-use
- 3. Opposition to a non-use application
- 4. Application for extension of time to oppose the non-use application where the trade mark is already removed
- 5. Grounds on which a non-use application may be made
- 6. Burden on opponent to establish use of a trade mark
- 7. Authorised use by another person
- 8. Use by an assignee
- 9. Localised use of trade mark
- 10. Circumstances that were an obstacle to the use of a trade mark
- 11. Where there is no evidence in support of the opposition
- 12. Registrar's discretion in deciding an opposed non-use application
- 13. Registrar to comply with order of court
- 14. Right of appeal
- 15. Certificate - Use of a trade mark
- Part 49 Non-use Procedures
- Relevant legislation
- 1. Application for removal or cessation of protection of a trade mark for non-use
- 2. Opposition to non-use application
- 3. Amendment to notice of intention to oppose or statement of grounds and particulars
- 4. Notice of intention to defend
- 5. Opposition may proceed in the name of another person
- 6. Opposition proceedings
- Part 51 General Opposition Proceedings
- Relevant Legislation
- 1. Evidence
- 2. Extension of the period for filing evidence
- 3. Cooling-Off Period
- 4. Suspensions
- 5. Hearing of the opposition
- 6. Dismissal or discontinuance of proceedings
- 7. Award of costs
- 8. Rights of appeal
- 9. Period in which a trade mark can be registered/protected
- 10. Guidelines for Revocation of Acceptance of Opposed trade marks
- 11. Unilateral Communications with Hearing Officers
- Part 52 Hearings, Decisions, Reasons and Appeals
- Relevant Legislation
- References used in this Part
- 1. What is a decision?
- 2. What is a hearing?
- 3. Is a hearing always necessary?
- 4. Role and powers of the Registrar in hearings
- 5. Rights of appeal from decisions of the Registrar
- 6. Appeals from decisions of the Federal Court etc.
- 7. Implementation of decisions
- 8. Service of documents on the Registrar
- Part 54 Subpoenas, Summonses and Production of Documents
- Relevant Legislation
- 1. Subpoenas
- 2. Summonsing a witness
- 3. Production of documents
- Annex A1 - Consequences of mishandling a subpoena
- Annex A2 - Format of a summons to witness
- Annex A3 - Format of notice requiring production
- Part 55 Costs
- Relevant Legislation
- 1. Legislative Basis
- 2. Award of costs
- 3. Applications for an award of costs
- 4. Determination of the amount of costs
- 5. Full costs where certificate of use of a trade mark provided to removal applicant
- 6. Costs recovery
- 7. Security for costs
- Annex A1 - Taxing of costs in "multiple" oppositions relying on same evidence
- Part 60 The Madrid Protocol
- Relevant Legislation
- Glossary
- 1. Introduction
- 2. International Applications
- 2.1 General Description
- 2.2 International Application Form
- 2.3 Data Entry
- 2.4 Certifying Process
- 2.5 Fees for International Applications
- 2.6 Renewal
- 3. The Basic Application or Basic Registration (Basic Trade Mark)
- 4. International Registrations that have Designated Australia
- 4.1 General Description
- 4.2 Record of International Registrations
- 4.3 Filing/Data Capture/Allocation of Australian Trade Mark Number
- 4.4 Indexing
- 4.5 Expedite
- 4.6 Classification of Goods and Services
- 4.7 Examination of an IRDA
- 4.8 Reporting on an IRDA
- 4.9 Provisional Refusal
- 4.10 Amendments
- 4.11 Deferment of Acceptance
- 4.12 Extension of Time
- 4.13 Final Decision on Provisional Refusal Based on Examination
- 4.14 Acceptance
- 4.15 Revocation of Acceptance
- 4.16 Extension of Time to File Notice of Opposition to Protection
- 4.17 Opposition to Protection
- 4.18 Protection
- 4.19 Cessation or Limitation of Protection
- 4.20 Cessation of Protection because of Non-Use
- 4.21 Opposition to Cessation of Protection because of Non-Use
- 4.22 Renewal
- 4.23 Claim to Interest in, or Right in Respect of a Trade Mark
- 4.24 Change in Ownership of an International Registration
- 4.25 Transformation
- 4.26 Replacement
- 4.27 Customs
- Part 61 Availability of Documents
- Relevant Legislation
- 1. Availability of Documents
- 2. Accessing Documents
- 3. Documents to be made Available for Public Inspection (API)
- 4. Information that the Registrar of Trade Marks will Not Accept in Confidence
- 5. Confidential Information in Correspondence
- 6. Policy in relation to TM Headstart
- Part 62 Revocation of Registration
- Relevant Legislation
- 1. What is revocation of registration?
- 2. Prerequisites to revocation of registration
- 3. Factors to be taken into account before deciding whether revocation of registration is reasonable
- 4. Circumstances under which registration may be revoked
- 5. Mandatory revocation
- 6. Right of appeal: revocation of registration
- 7. Extension of time
- 8. Amendment or cessation of protection by Registrar of Protected International Trade Marks (PITMs)
- 9. Registrar must notify Customs if protection of a PITM is revoked
- 10. Right of appeal: cessation of protection
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.
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’ and the sign is unlikely to perform a ‘branding function’. Such use is therefore not use of a sign ‘as a trade mark’.
Context is all important in determining whether a sign has been used as a trade mark or for some other purpose (Shell Co of Australia v Esso Oil (Aust) Ltd (1963) 109 CLR 407). The subjective intention of the user will be of secondary importance in assessing whether there has been trade mark use in a particular context. In Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874 at 30, Hill J said:
In most, if not all cases, the question whether there has been use as a trade mark will be determined by an objective examination of the use in the context in which it appears
The nature of the sign in question is also a relevant consideration. 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, Hill J held at 23:
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:
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, the Full Court provided a concise summary of the relevant considerations for use as a trade mark:
Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. 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 (subsection 7(2)).
2.2 Use as a domain name, key word or metatag
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:
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.
The decision of Advantage Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd [2016] FCA 255, affirmed that the metatag use was not use as a trade mark because it was not visible to the ordinary internet user. However, use in sponsored link advertisements (being visible to consumers) may constitute trade mark use.
2.3 Business names
A business name and a trade mark are two distinct concepts. A business name is the name under which a business operates. 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.
2.4 Shape and colour trade marks
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 section 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.
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:
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 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. Reeves J considered the context of the respondent’s use, particularly the use in standalone format without any immediate connection to descriptive content and its depiction ‘banner style’ on various webpages.
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:
Nature of sign | Note: |
Is the sign invented or does it have some descriptive or laudatory significance? | An invented sign is more likely to be perceived as a trade mark than a sign with some descriptive significance |
Context of use | Note: |
Is the sign displayed prominently in advertising, on displays, webpages or packaging or is it made less noticeable by being included amongst other material? | A sign that is used ‘as a trade mark’ will generally perform a ‘branding function’. It may be difficult for a person to show that a sign is performing a branding function where use of the trade mark appears to be intended solely or primarily for some descriptive or laudatory purpose. |
Is it use of the trade mark as applied for? | Use of a sign that is not identical to the trade mark applied for can be considered if the additions or alterations do not substantially affect the identity of the trade mark (see 7). |
Has use been demonstrated in conjunction with, or close proximity to, other signs that are clearly acting as trade marks? | Use with other signs may indicate the sign is not being used as a trade mark in its own right - However, it may be two separate trade marks operating concurrently. Even if it is being used as a trade mark, its significance may be diminished by other material. (see 8). |
Does the sign have a primarily functional purpose? | Functional features (e.g. on a shape trade mark) make it less likely (though not impossible) that a sign is acting as a badge of origin |
Amended Reasons
Amended Reason | Date Amended |
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