Tips for selecting a unique trade mark

/ Louise Emmett / Articles

Before a trade mark is adopted, searches should be conducted to check whether anyone else has registered or is already using a similar mark.  It is also important to consider whether the proposed mark is sufficiently “distinctive” or unique to be registrable.  This will depend on whether other businesses are likely to need to use the proposed mark in respect of their own goods and services.

The following examples are generally not considered to be distinctive:

  • Descriptive words that have a direct reference to the relevant goods/services. This also applies to minor misspellings or variations of descriptive words.
  • Geographical names that have an obvious or potential connection with the relevant goods/services.
  • Surnames, depending on the commonness of the surname and whether the goods/services are very specialised or commonplace.
  • Single letter marks, unless the mark is stylised in a unique manner.
  • Combinations of numbers that have a meaning or relevance in the marketplace.
  • Logos that are simply an ordinary depiction of the goods or consist of a very simple design.

If the Trade Marks Office raises a “distinctiveness” objection, it may still ultimately be possible to obtain a registration by filing evidence of use of the mark to show acquired distinctiveness.  However, preparing this type of evidence can be time-consuming and costly with no guaranteed outcome.  It is consequently preferable to consider the question of distinctiveness prior to adopting and commencing use of a new mark.

Examples of distinctive marks include:

  • Invented words with no meaning.
  • A mark that is emotive or allusive but not directly descriptive of the relevant goods/services.
  • An unusual combination of words or a clever play on words.
  • Two letter marks and three letter marks, unless the letters have a descriptive meaning or are commonly used acronyms or abbreviations in the relevant industry.
  • Combinations of letters and numerals, unless the combinations are commonly used to indicate characteristics of the goods such as size or quantity. .
  • Stylised logos.

As the question of distinctiveness can be subjective, an option that may be worth consideration is to file an application for the proposed mark through the fast-track “headstart” system.  “Headstart” applications are assessed within 5-10 days (sometimes even sooner) and so we can find out very quickly whether a distinctiveness objection is likely to be raised.  “Headstart” results will also provide an indication of whether there are conflicting similar marks that may pose an obstacle to an application.  Once “headstart” results are issued there is a further 5 day period to decide whether to proceed with formally filing the application.

Take-home message:

Distinctive marks are easier to register and enforce.  It is consequently beneficial to invest some time selecting a mark that is unique and, ultimately, likely to be more memorable in the marketplace.

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TENFOLDS GRUNGE v PENFOLDS GRANGE: How close is “too close” for parody trade marks?

/ Louise Emmett / Articles

Brand owners may have grounds to oppose the registration of a parody trade mark in Australia on the basis that the use of the parody mark would lead to deception or confusion in the marketplace. There is, however, no general prohibition against parodies per se.  If consumers would not be confused, but instead conclude that a name has been cleverly used as a clear parody, the brand owner is unlikely to have grounds for successfully opposing the registration of the mark.

For example, the owners of the iconic “Penfolds Grange” brand were unsuccessful in opposing a trade mark application for “Tenfolds Grunge” (Southcorp Limited v Morris McKeeman [2006] ATMO 48).  The Hearing Officer in this case concluded that the “Tenfolds Grunge” mark would be seen as an obvious parody and, as such, deception or confusion was unlikely.  The Hearing Officer considered that there was no doubt that “Tenfolds Grunge” made a play on, or reference to, the “Penfolds Grange” mark; however, the fact that a mark might “ape, mimic or parody” another mark does not in itself disbar it from registration.

Similarly, the Australian Post Corporation (the “POST OFFICE”) was unsuccessful in opposing a trade mark application for “POST WITHOUT THE OFFICE” (Australian Postal Corporation v Sendle Pty Ltd [2017] ATMO 42), with the Hearing Officer concluding that consumers would be sufficiently careful and astute so as not to be confused or deceived by the use of this mark.

On the other hand, Hasbro successfully opposed a trade mark application for “LIVE-OPOLY” covering toys/games and entertainment services on the basis of Hasbro’s rights in the “MONOPOLY” brand, the “world’s most popular board game” (Hasbro Inc v Imagination Holdings Pty Ltd [2005] ATMO 43).  The Hearing Officer in this case held that the inclusion of the “OPOLY” element in the “LIVE-OPOLY” mark would lead to potential purchasers concluding that there was some connection with the “MONOPOLY” game, when this was not the case.

Also, Target Australia successfully opposed a trade mark application for marks incorporating “TARJAY” on the basis that “TARGET” stores have been colloquially referred to over the years by way of a French sounding pronunciation i.e. “TARJAY” or “TARGÉT” (Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd [2015] ATMO 54).  The Applicant argued that it chose to apply to register the “TARJAY” marks as part of its marketing strategy to be “cheeky” and as a means of cleverly and satirically referencing Target; however, the Hearing Officer concluded that a parody only works if it is immediately apparent and, in this case, shoppers would be likely to be misled.

Take home message:  A brand owner may have grounds to oppose the registration of a parody trade mark in Australia if the mark is not clearly a parody mark.  A parody mark must be of a nature that is immediately recognisable as a parody and not imply some endorsement by, or commercial connection with, the brand owner that would lead to deception or confusion in the marketplace.

In addition to opposing the registration of a parody mark, a brand owner may have grounds for objecting to the use of a parody mark in Australia on the basis that such use constitutes misleading and deceptive conduct in contravention of the Competition and Consumer Act 2010 (Cth) and/or the common law tort of “passing off”.

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Can you infringe a trade mark registration by using a meta-tag in the source data for a website?

/ Louise Emmett / Articles

Many businesses use search engine optimization tools to improve the ranking of their website in search results.  These tools can include incorporating meta-tags (or website keywords) in the source data for the website.  Search engines (such as Google) use meta-tags to identify which search results to display when a user conducts a search.

The Full Federal Court has recently confirmed that the use of a meta-tag may constitute trade mark infringement as, although meta-tags are not actually displayed on a website, the source data of a website is visible to those who know what to look for.

The case of Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 involved an apartment complex development in Cairns called “Harbour Lights”.  The “Harbour Lights” name is registered as a trade mark in respect of a range of property related services including commercial real estate agency services, accommodation letting agency services and hotel accommodation services.

Apartment owners in the “Harbour Lights” complex who wish to let their apartments are free to choose Accor or another letting agent to manage this for them, or they can arrange the letting themselves.  Only Accor, however, is permitted to operate its business on-site which means it can offer benefits to guests such as on-site reception and on-site luggage storage.  Liv Pty Ltd trades under the name “Cairns Luxury Apartments” and offers accommodation services in the “Harbour Lights” complex in competition with Accor.

Accor claimed that Liv had infringed the trade mark registration for “Harbour Lights” by using this name in various ways including in domain names, websites and advertising material and as a meta-tag in the source data of a website.  (The case also involved various other claims and cross-claims).

The claim in relation to the use of meta-tags involved the source data for Liv’s website at: cairnsluxuryapartments.com.au.  The source data for this website included the following phrase:

“content: = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short term rental”.

The Full Court upheld the finding of the primary judge that the use of the words “Harbour Lights Apartments” in this phrase was, effectively, use as a business name and that this consequently constituted trade mark infringement.

As part of their defence, Liv argued that there was no evidence that the use of the text in the source data was within their control, given that the source data for the website was created by an IT consultant.  This argument was rejected on the basis that Liv had engaged an IT consultant to create the website, Liv operated the website, Liv had changed the content from time to time, and Liv controlled the website including the source data for the website.  The primary judge inferred that the words comprising the source data must have been included to optimise the search results for Liv’s benefit, and that the IT consultant for Liv must have included the words in the source data for the website with Liv’s acquiescence.  The Full Court upheld this finding.

Lesson:  The use of meta-tags may constitute trade mark infringement depending on the circumstances.  If text would infringe if it appeared in standard advertising material, then the text is likely to infringe if used in the source data for a website notwithstanding that this data is not actually displayed on the website itself.  Business owners should consequently take care to check the content of the source data used for their websites.

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Overseas Supplier Liable for Trade Mark Infringement in Australia

/ Louise Emmett / News

In the recent case of Playgro Pty Ltd v Playgo Art & Craft Manufactory Limited [2016] FCA 280, the Australian Federal Court held that an overseas manufacturer infringed Australian trade mark registrations by supplying goods to third party retailers in China, who then on-sold the goods to customers in Australia.

Briefly, the facts of the case were as follows: the applicant was the owner of a number of Australian trade mark registrations for “PLAYGRO”. The respondents were Hong Kong companies who manufactured and sold in China toy products bearing the mark “PLAYGO”. The respondents sold and delivered toy products to third party Australian retailers in China. The respondents knew when they sold the products to the Australian retailers that the goods were to be offered for sale and sold to customers in Australia.

The Court held that the respondents had infringed the applicant’s Australian trade mark registrations on the basis that:

  1. the “PLAYGRO” and “PLAYGO” marks were deceptively similar; and
  2. the respondents’ conduct constituted use of the “PLAYGO” mark in Australia.

On the question of use of the mark in Australia, the respondents submitted that they should not be liable for trade mark infringement under Australian law given that they sold and delivered the goods to the third party retailers in China. However, the Court rejected this and concluded that the “PLAYGO” mark was being used by the respondents so long as the goods were in the course of trade, with the goods remaining in the course of trade until their ultimate sale to customers in Australia.

Lesson: Overseas manufacturers should beware that they could infringe Australian trade mark registrations if they supply goods that are then on-sold into the Australian market. Overseas suppliers should consequently consider trade mark clearance searches in Australia and obtain Australian trade mark registrations where possible.

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Registering Shapes, Colours and Other “Non-Traditional” Trade Marks

/ Louise Emmett / Articles

The world of trade marks has come a long way since Australian Trade Mark Registration No. 1 was filed back in 1906.  This registration, which is still in force today, covers chemical substances in class 5 and is for the following “traditional” style logo mark incorporating the words “PEPS for COUGHS COLDS & BRONCHITIS” (as shown above).

Over one hundred years later, trade mark owners are increasingly seeking to register creative “non-traditional” trade marks such as shapes, colours, sounds and even scents.  There are now hundreds of shape and colour trade mark registrations in Australia and, at the time of writing, 50 sound registrations and one scent registration.  Examples of these types of marks include:

  • Shape registrations for the shape of the TOBLERONE chocolate bar and the COCA COLA bottle;
  • Colour registrations for PURPLE for Cadbury chocolate and RED for the sole of Christian LOUBOUTIN shoes;
  • A sound mark registration in the name of McCain Foods (Aust) Pty Ltd for the words “AH McCAIN” followed by a “PING” sound and the words “YOU’VE DONE IT AGAIN”; and
  • A scent mark registration for EUCALYPTUS RADIATA for golf tees in the name of E-Concierge Australia Pty Ltd.

As with traditional trade marks, non-traditional trade marks must be sufficiently distinctive in order to be accepted by the Trade Marks Office for registration.  This means, for example, that it is likely to be difficult to register shapes that are common to the relevant trade and colours for which there is a competitive need.  It may be possible to overcome an initial “distinctiveness” objection by filing evidence with the Trade Marks Office showing the nature and extent of the use of the relevant trade mark, however, evidence of advertising that simply features a particular shape or colour, for example, is unlikely to be sufficient.  Evidence of advertising that draws attention to the shape or colour, on the other hand, may assist in demonstrating that a shape or colour has become distinctive in the market.  The guidelines published by the Trade Marks Office indicate that statements such as “Look for the star shaped box” or “Unusual colours; exceptional goods” are the type of promotional terms that may assist.

Securing trade mark registrations for the brand names and logos used by a business will in most cases be of primary importance, however, applying to register distinctive “non-traditional” trade marks may provide valuable additional protection.

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