Trade Mark - Registration
Potential Trademarks
‘Trade mark’ requirement
s17 TMA ‘trade mark’ ?
s 17 ‘trade mark’ – ‘sign’ used, or ‘intended to be used’, to distinguish goods or services from
other in trade.
‘sign’ capable of ‘distinguishing’ the trader’s goods or services from those of others?
s 6 ‘Sign’ - letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of
packaging, shape, colour, sound or scent
Is it capable of ‘graphical representation’?
… is not exhaustive -- must be capable of graphical representation – letters, words, pictures,
drawings, etc. (even scent can be, might be a combination of words, pictures..;) (TM same as C
in the circle for copyright :unregistered, but these carries no legal significance in Australia)
What are the relevant (class(es) of) goods or services?
Owner / potential owner
Are they ‘using’, ‘intending to use or authorise or assign’, the trade mark ‘as a trade mark’?
s 27(1) - requirements of who can apply for trade mark registration (only need a claim to
ownership, different to copyright – authors)
• … a person who claims to be the owner of the trade mark; and satisfies one:
i. the person is using or intends to use the trade mark in relation to the goods and/or services
(‘use’ register can be amended, if not used, cease to use it for a period of time) (‘intend to
use’: part of a business plan);
ii. the person has authorised or intends to authorise another person to use the trade mark in
relation to the goods and/or services (startup – sell to bigger business) (similar to below);
iii. the person intends to assign the trade mark to a body corporate that is about to be
constituted with a view to the use by the body corporate of the trade mark in relation to
the goods and/or services.
… can be different to ‘author’ or ‘creator’ of the mark itself … the key is in the intentional use of
the mark
s 8 – ‘authorised user’ and ‘authorised use’
• It is imperative that the trade mark be used in a bona fide manner … i.e., as a trade mark (not just
used in the sense of colloquially used referred to in conversation) (get something registered to stop
anyone else from getting commercial value out of that)
s 7 – ‘use of a trade mark’ covers
• essentially any commercial dealing sufficiently connected to Australia (*Moorgate Tobacco Co Ltd v
Philip Morris Ltd) … not personal or private use
• Intended to rule out ‘ghost marking’ and ‘trade mark squatting’ (commercially related use, low bar
– *Moorgate: registration of a mark ‘golden lights’ owned in UK, but market some related, but been
no sale of the products in Aus. Held: sufficient to count as required use) (doesn’t need to involve
the exchange of value of money)
, Is the trade mark ‘registered’ or ‘registrable’? presumption of registrability.
Grounds of rejection in Part 4, Division 2?
Not satisfy the general definition of a ‘trade mark’ s17
• must be ‘used or intended to be used’ – making of an application is itself prima facie evidence
of an intention to use the mark: Aston
• must be used ‘to distinguish goods or services’ – i.e., used in a certain way … as a mark
• ‘dealt with or provided in the course of trade’ – satisfied by any commercial dealing sufficiently
connected with Australia – not personal use - Moorgate
The application for registration is or was not the true ‘owner’ of the mark s58 (see ‘ownership’ s
27(1))
The application was made in bad faith s62A
Contain a prohibited sign s 39
Cannot be represented graphically s40
Its use be scandalous or contrary to law s42 (rule orientated, scandal – the size of intended
audience in Aus)
Not satisfy the requirement of ‘distinctiveness’ s41
• s 41(1) – must be rejected if it is not capable of distinguishing the applicant’s goods or services
from those of other person’s (’not capable’)
• s 41(3) – a trade mark will not be capable of distinguishing the designated goods or services
(*negative, examiner shows the lack of distinctiveness) IF:
- it is not to any extent inherently adapted to distinguish the designated goods or services
from those of other person’s (inherent capability, distinguishable - likely to pass the test)
AND
- the applicant has not used the trade mark before the filing date … to such an extent that
the trade mark does in fact distinguish the designated goods or services as being those of
the applicant (not acquire the capability through prior use, and not become distinctive
before the priority date)
• s 41(4) – must reject trade marks that are to some extent inherently adapted to distinguish the
designated goods or services BUT not sufficiently, having regard to the combined effect of s
41(4)(b) elements (*not acquire enough distinctiveness) (factors see below):
- the extent of inherent adaptation to distinguish;
- the use or intended use of the trade mark by the applicant;
- any other circumstances
Three types of registrable trademarks
1. ‘inherently adapted to distinguish’ – Inherent ability to distinguish, on the other hand, requires
something about the trade mark itself which makes it unique in the context of its application to the
applicant’s goods or services
2. ‘acquired the ability to distinguish’ – not inherently adapted to distinguish but has acquired
capability to distinguish comes from use of the trade mark in the marketplace, in the same way that
a reputation is generated
3. in between ‘inherent distinctiveness’ and ‘acquired distinctiveness’
Potential Trademarks
‘Trade mark’ requirement
s17 TMA ‘trade mark’ ?
s 17 ‘trade mark’ – ‘sign’ used, or ‘intended to be used’, to distinguish goods or services from
other in trade.
‘sign’ capable of ‘distinguishing’ the trader’s goods or services from those of others?
s 6 ‘Sign’ - letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of
packaging, shape, colour, sound or scent
Is it capable of ‘graphical representation’?
… is not exhaustive -- must be capable of graphical representation – letters, words, pictures,
drawings, etc. (even scent can be, might be a combination of words, pictures..;) (TM same as C
in the circle for copyright :unregistered, but these carries no legal significance in Australia)
What are the relevant (class(es) of) goods or services?
Owner / potential owner
Are they ‘using’, ‘intending to use or authorise or assign’, the trade mark ‘as a trade mark’?
s 27(1) - requirements of who can apply for trade mark registration (only need a claim to
ownership, different to copyright – authors)
• … a person who claims to be the owner of the trade mark; and satisfies one:
i. the person is using or intends to use the trade mark in relation to the goods and/or services
(‘use’ register can be amended, if not used, cease to use it for a period of time) (‘intend to
use’: part of a business plan);
ii. the person has authorised or intends to authorise another person to use the trade mark in
relation to the goods and/or services (startup – sell to bigger business) (similar to below);
iii. the person intends to assign the trade mark to a body corporate that is about to be
constituted with a view to the use by the body corporate of the trade mark in relation to
the goods and/or services.
… can be different to ‘author’ or ‘creator’ of the mark itself … the key is in the intentional use of
the mark
s 8 – ‘authorised user’ and ‘authorised use’
• It is imperative that the trade mark be used in a bona fide manner … i.e., as a trade mark (not just
used in the sense of colloquially used referred to in conversation) (get something registered to stop
anyone else from getting commercial value out of that)
s 7 – ‘use of a trade mark’ covers
• essentially any commercial dealing sufficiently connected to Australia (*Moorgate Tobacco Co Ltd v
Philip Morris Ltd) … not personal or private use
• Intended to rule out ‘ghost marking’ and ‘trade mark squatting’ (commercially related use, low bar
– *Moorgate: registration of a mark ‘golden lights’ owned in UK, but market some related, but been
no sale of the products in Aus. Held: sufficient to count as required use) (doesn’t need to involve
the exchange of value of money)
, Is the trade mark ‘registered’ or ‘registrable’? presumption of registrability.
Grounds of rejection in Part 4, Division 2?
Not satisfy the general definition of a ‘trade mark’ s17
• must be ‘used or intended to be used’ – making of an application is itself prima facie evidence
of an intention to use the mark: Aston
• must be used ‘to distinguish goods or services’ – i.e., used in a certain way … as a mark
• ‘dealt with or provided in the course of trade’ – satisfied by any commercial dealing sufficiently
connected with Australia – not personal use - Moorgate
The application for registration is or was not the true ‘owner’ of the mark s58 (see ‘ownership’ s
27(1))
The application was made in bad faith s62A
Contain a prohibited sign s 39
Cannot be represented graphically s40
Its use be scandalous or contrary to law s42 (rule orientated, scandal – the size of intended
audience in Aus)
Not satisfy the requirement of ‘distinctiveness’ s41
• s 41(1) – must be rejected if it is not capable of distinguishing the applicant’s goods or services
from those of other person’s (’not capable’)
• s 41(3) – a trade mark will not be capable of distinguishing the designated goods or services
(*negative, examiner shows the lack of distinctiveness) IF:
- it is not to any extent inherently adapted to distinguish the designated goods or services
from those of other person’s (inherent capability, distinguishable - likely to pass the test)
AND
- the applicant has not used the trade mark before the filing date … to such an extent that
the trade mark does in fact distinguish the designated goods or services as being those of
the applicant (not acquire the capability through prior use, and not become distinctive
before the priority date)
• s 41(4) – must reject trade marks that are to some extent inherently adapted to distinguish the
designated goods or services BUT not sufficiently, having regard to the combined effect of s
41(4)(b) elements (*not acquire enough distinctiveness) (factors see below):
- the extent of inherent adaptation to distinguish;
- the use or intended use of the trade mark by the applicant;
- any other circumstances
Three types of registrable trademarks
1. ‘inherently adapted to distinguish’ – Inherent ability to distinguish, on the other hand, requires
something about the trade mark itself which makes it unique in the context of its application to the
applicant’s goods or services
2. ‘acquired the ability to distinguish’ – not inherently adapted to distinguish but has acquired
capability to distinguish comes from use of the trade mark in the marketplace, in the same way that
a reputation is generated
3. in between ‘inherent distinctiveness’ and ‘acquired distinctiveness’
