19A.8. Use of multiple trade marks

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.

In Wellness Pty Ltd v Pro Bio Living Waters Pty Limited [2004] FCA 438, the Federal Court held that the following use was of separate trade marks PRO-BIO and LIVING WATERS:

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.

The assessment of non-traditional signs such as shape and colour trade marks will often raise issues as to whether a shape or colour has been used as a trade mark given invariably there will also be more distinctive trade mark elements present. In PopSockets LLC [2021] ATMO 125, the Hearing Officer held that despite extensive use of the particular shape of the goods, that use was not use as a trade mark, taking into account (among other factors) the prominent use of the brand ‘PopSockets’.

The English and Welsh High Court explains the position in Societe De Produits Nestle Sa v Unilever Plc [2002] EWHC 2709 (Ch) at [33]:

There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone.

See also Michael Harvey v Lion-Beer, Spirits & Wine Pty Ltd [2013] ATMO 5.

However, the use of other trade marks together with a shape or colour will not disqualify the latter for registration as a trade mark. The examiner must carefully consider the circumstances of each case, and keep in mind that there is no strict dichotomy between trade mark use and other types of use. Evidence of public education or circumstances prevailing in a particular industry that a shape or colour is intended to perform a trade mark function may assist the applicant’s case (see BP case discussed above).