Intellectual property is a enigmatic industry if one does not know how it operates and where to look for information. Comprising a major part of this industry, trade marks confer various benefits upon Australian traders if utilised correctly. Yet, there are a number of misconceptions and ambiguities that perhaps need attention for clarification and enlightenment.

Registration of trade marks is the primary starting point as it raises important questions that one must ask and have answered in order to understand the purpose, process and potential benefits that a trade mark affords.

 

What can be registered?

"A word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging or a combination of these as well as a brand name" 1

 

What is the purpose of trade marks?

They are used to distinguish the goods and services of one trader from another so that there is no confusion in the market place.
They can also assist substantially in the marketing of ones goods and services whereby the public, through a single representation (your trade mark), can identify the quality of your goods and services. They maintain ones reputable position in the market place.

 

What rights does registration of a trade mark confer on the registrar?

Registration confers a legal right to use, license or sell the trade mark within Australia for the categories of goods and services for which it was registered .

 

What do we mean by goods and services?

The goods and services are classes or categories in which you wish to have your trade mark protected.

There are 34 classes of goods and 11 classes of services for trade marks in Australia.
Look at this hypothetical example:
The soft drink, Coca Cola, may choose to list goods class 31 "Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages"2. This will ensure protection from others using, selling or licensing 'Coca Cola' for their own benefit in the categories of the goods and services listed above.

You can choose a variety of classes when registering, however you must at least choose one class of goods or one class of services.

Indeed, it is possible to register a trade mark similar to one already in existence on the proviso that the trade marks falls into differing classes of goods or services. The primary reason for this is to avoid confusion in the market place.
In the situation of similar trade marks already registered, approval of the new trade mark will depend on the examiners who assess it according to the Trade Marks Act 1995.

 

How does one apply?

Before applying, one must conduct in a thorough search as to whether the trade mark one wishes to register is not already in existence.

If results of the search are favourable, an application can be made via Intellectual Property Australia.

Types of trade marks that may be difficult to register

It is important to note that descriptions of goods and services within the trade mark, for example, showers (goods) and plumber (services) will be difficult to register.
These descriptions must be reserved for universal use in describing goods and services of trade marks.

1. "Trade Marks", Australian Government: IP Australia (2010) at http://www.ipaustralia.gov.au/trademarks/what_index.shtml Accessed 27/08/2010.
2. Ibid.

So Why Register?

Where a trademark is unregistered, the owner must rely on the common law action of "passing off" or take proceedings under the Fair Trading Act 1987 to protect the mark. Such actions can involve long and costly litigation.
Registration of a trademark, however, gives the owner of the registered trademark legal protection. You can sue for infringement if someone else uses a similar mark to your registered trademark for similar goods and/or services.

Importance of trade mark registration highlighted as MONSTER ENERGY case dismissed

Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCA 406 (31 March 2008)

CASE SUMMARY

In this case, the applicant (Hansen) alleged that the use of the brand name MONSTER ENERGY (the second biggest selling energy drink in the world, behind Red Bull), or its contraction MONSTER, for energy drinks by the respondents (Bickfords) conveyed a misrepresentation that the Bickfords product is the product of Hansen or is associated with Hansen.

MONSTER ENERGY and MONSTER are unregistered trademarks, so Hansen cannot use the protection of registration to sue for infringement. Instead, Hansen and Bickfords (in his own cross-claim) are limited to suing under the common law tort of passing off and under s 52 of the Trade Practices Act 1974 (Cth).

This means that both parties needed to supply evidence of a sufficient reputation of its product amongst Australian customers, before they can succeed. The parties agreed that the similarities between the products could relevantly mislead or deceive for the purposes of the TPA and the tort of passing off.

Evidence

Bickfords' evidence included a survey with only 264 respondents, conducted after its products had entered the market, posing the question 'where have you heard/seen MONSTER ENERGY drink advertising'. The Court gave this material little or no weight as it was unclear whose product the survey was referring to. The Court also held that the OzTAM television ratings data was inadmissible hearsay because the original makers of the representation that a person or persons are in the room where the television is on (the people pressing the buttons on the OzTAM device) were not in Court giving the evidence themselves.

Copying

The court found that Bickfords deliberately copied Hansen's brand, but only in Australia where Hansen had no actual sales or direct promotion, and where Hansen did not have sufficient reputation of the quality and type it alleged. Bickfords knew this and acted accordingly in its own commercial interest. The Court accepted that these specific circumstances permitted Bickfords to seize a window of opportunity to enter the market in Australia by adopting the Hansen model and brand.

Reputation

Neither Hansen nor Bickfords established upon the evidence before the Court the reputation required by law to succeed in their respective claims. Both the claim and cross-claim were dismissed and no restraining orders were made.

Conclusion

Substantial sales and advertising of a product overseas does not necessarily translate to 'reputation' in Australia. Overseas companies that fail or neglect to protect their position by making early application to register their trade marks in Australia, may do so at considerable cost.

 

Disclaimer:

Material published electronically on this site is for information purposes only, resourced from IP Australia-

www.ipaustralia.gov.au/trademarks/index.shtml