Unregistered Trade Mark Protection

Author: Serge Perkovic, Principal,

Northfields Lawyers, May 2016

Protection of Unregistered Trade Marks

in Common Law Jurisdictions (Australian Position) –

Material (Non Procedural) Matters

A ‘trade mark’ is a mark which is used or proposed to be used in relation to goods or services for the purpose of distinguishing between the goods or services dealt with or provided in the course of trade by a person from the goods or services so dealt with or provided by another person[1].

Unregistered trade marks are regulated by the common law. In the non common law jurisdictions, such as are majority of EU countries, unregistered trade marks are regulated by respective national laws (while registered trade marks are regulated at the EU level).

Protection of unregistered trade marks in Australia can be achieved by opposition of their registration by someone else or through the common law action in tort for passing off or claims in breach of the Australian Consumer Law provisions which prohibits misleading and deceptive conduct in the course of business.

Opposition to Registration  

The grounds for oppositions may be:

a)    That “use of the trade mark in relation to particular goods and

      services would be likely to deceive or cause confusion”[2].  

b)    That the unregistered trade mark acquired a reputation in Australia

before the priority date for the registration of the opposed trade mark in respect of those goods or services and this situation would likely deceive or cause confusion[3].

c) That the applicant is not the owner of the trade mark[4].   

Likely to Deceive or Cause Confusion

Section 43 of the 1995 Act provides that an application must be rejected if use of the trade mark in relation to the designated goods or services is likely to cause deception or confusion because of some connotation the trade mark, or a sign contained in the trade mark has. In assessing whether a trade mark must be rejected under s 43 the enquiry is focused on the mark itself (or a sign contained within it)[5] . 

The section will be triggered where there is a real and tangible danger of deception or confusion as described by Kenny J in McCorquadalev Masterson[6]. as “a reasonable likelihood that the relevant public will be deceived or confused; the possibility of confusion is not sufficient”[7].  The reference to the public should not be understood here in the sense it is used in a passing off action (as described below); it is rather one of the factors against which the mark itself is to be judged.

Whether a mark is likely to deceive or cause confusion is a question of fact and the likelihood of deception or confusion is judged by reference to the way in which the mark may be used if it is registered. It is immaterial that there is little or no risk if the mark is only used on some of the goods or services in respect of which registration is sought and a decision maker must take into account all legitimate uses which the applicant may reasonably make of his or her mark within the ambit of his or her registration. All of the surrounding circumstances may be relevant in determining what may be proper normal and fair use of the mark and the circumstances include "…the circumstances in which the mark will be used, the circumstances in which goods or services will be bought or sold, and the character of the probable purchasers of the goods or services."[8].

It is also said that the 'probable purchasers' are “ordinary people who are not particularly perceptive or cautious but who are also not exceptionally careless or stupid.”.

In determining whether there is a likelihood of deception or confusion a decision maker is entitled to give effect to his or her own opinion. A decision maker should not, however, rely on his or her own opinion to supplement any deficiency in the evidence where the goods sold are in a specialized market, consisting of persons engaged in a particular trade, and the goods are not sold to the general public for consumption and domestic use.

The test to be applied is that formulated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty[9]: while a mere possibility of confusion is not enough — for there must be a real, tangible danger of its occurring it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

In order for there to be a ‘likelihood’ that use of the mark will cause deception or confusion it must be shown that ‘enough persons in the relevant public” (underlined by SP) will be affected[10]. This will require evidence of the market in which the products/services will be supplied and the characteristics of the likely purchasers. If the trade mark will be used on products which are acquired by discerning and knowledgeable purchasers who are likely to exercise care in purchasing them the risk of deception or confusion is likely to be small.

If the trade mark is, on its face, likely to give rise to deception or confusion it will be easier to support the application of s 43 than will be the case where it is a secondary meaning inherent in the mark which is alleged to give rise to the likelihood of deception or confusion.

An example of the first kind of case might be where the trade mark includes the words “all natural herbs” and the goods specified are chemical cleaning products; an example of the second kind of case would be where the application mark is alleged to give rise to an inference that use of it is authorized by some famous person, or that there is an authorization or sponsorship of some kind in place, or that the goods are of a particular kind or come from a particular location. In the latter kind of case detailed evidence will be required to establish the likelihood that deception or confusion will result from the use of the mark.

Whether the application mark is found to be substantially identical or deceptively similar to the cited mark, the relationship between the goods/services must also be considered.

An examination of the nature of the goods themselves will obviously be important but it will rarely be enough to allow a decision maker to decide whether they should be regarded as being similar. It will be important to consider the respective uses to which the goods are put, the trade channels through which they are bought and sold, their origins, and whether they are considered to be of the same description by those engaged in the manufacture and distribution of them.

Situation of similar services: much the same kind of enquiry will be made to determine whether services should be regarded as similar. The Manual of the Intellectual Property Australia suggests that an examiner should take account the nature and character of the services; the origin and purpose of the services; whether the services are usually provided by the same business or person;

whether the services are provided from the same sources, in the same area or district, during the same season or in relation to the same related goods or services and to the same class or classes of customers; and whether the services are regarded as being the same by persons who supply them. It is not possible to compare goods and services in the same way as one compares goods with goods or services with services. The close relationship between some goods and services means, however, that there may be a risk of deception or confusion if the same mark is registered by different owners, one for goods and the other for services.

Finally, there is still some tolerance of similarity. The doctrine of honest concurrent use means that a degree of confusion had to be tolerated within the system.

Acquired Reputation and where the Applicant is not the Owner of the Trade Mark  

On other grounds for opposition it is necessary, in addition to all of the above, that unregistered trade mark acquired a reputation on the market [s 60 of the Trade Marks Act 1995 (Cth) or that the owner of the unregistered trade mark is to be considered as an owner of the trade mark (s58 of the TMA).  

When that is proven that there is no doctrine of honest concurrent use applicable, so there is no tolerance for any deception and confusion.

When proving reputation than consideration from application of tort of passing off at common law as discussed below maybe relevant.

The essence of any claims for opposition from an owner of unregistered trade mark under the TMA Act is that

he, she or it used an unregistered trade mark – was engaged in a regular business of selling the goods and services in question and they must be able to show that the name has been used to draw in trade and generate business.

Continuously Used

The phrase "continuously used" was described by Maugham J in Smith Bartlet & Co v British Pure Oil, Grease & Carbide Co Ltd as requiring: “… not an occasional user from a date anterior to the user by the owner of the registered trade mark but a continuous user by him. The word “continuous” is not one which is capable of strict definition. It does not mean in the case of a sale of goods, a sale every week or even every month.”

Protection at Common Law – Tort of Passing Off and Misleading and Deceptive Conduct under Australian Consumer Law

In tort of passing off, the focus is protection of proprietary rights of traders is in the commercial reputation they have built up and one of the elements in a passing off suit is the subsistence of some reputation or goodwill on the part of the plaintiff at the date of commencement of the relevant conduct by the defendant.

Reputation may be characterized as the attractive force which brings in custom, that is, the quality that draws customers to the business in which the reputation has its source.

In general, the plaintiff will be taken to have the reputation required to support an action in passing off where it is shown that a substantial number of people would consider the name, get-up or other indicia that is in issue to be distinctive of the goods or services of the plaintiff.

Hence a reputation may be garnered by the use of a distinctive name or trade mark[11], slogans used or images created in the course of advertising, including indirect advertising.

Separate protection of sub-brands, or indicia used in conjunction with 'house' marks, requires establishment of separate reputation attaching to those indicia, and operating independently of the house mark.

The fact that a product or business is identified with the use of an otherwise descriptive term distinctiveness may be acquired simply by repeated or exclusive use over a period of time or by use of the descriptive name in combination with a distinctive get-up. The further along the continuum towards the fancy name or other indicia one goes, the easier it is to establish a distinctive reputation.

Finally, the Australian Consumer Legislation prohibits misleading and deceptive conduct in the course of business and any use of unregistered trade mark may be in contravention of this prohibition.

Disclaimer

The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this publication is accurate at the date it is received or that it will continue to be accurate in the future. We are not responsible for the information of any source to which a link is provided or reference is made and exclude all liability in connection with use of these sources.

[1] Lever Bros v G Mowling & Son (1908) 6 CLR 136 ; Re Rowley and Pyne; Ex parte Dalton (1883) 9 VLR (L) 307 ; Olin Corp v Pacemaker Pool Supplies (1984) 4 IPR 526; (1984) AIPC ¶93-216.

[2] Section 43 of the Trade Marks Act 1995 (Cth). 

[3] Ibid section 60.

[4] Ibid section 58. 

[5] Big Country Developments Pty Ltd v TGI Friday's Inc (2000) 48 IPR 513  .

[6] (2004] FCA 1247; (2004) 63 IPR 582.4.

[7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594; [1955] ALR 115; (1954) 1A IPR 465.

[8]  McCorquadale v Masterson (2004] FCA 1247; (2004) 63 IPR 582.4.

[9] (1954) 91 CLR 592 at 595; [1955] ALR 115; 1A IPR 465. His Honour adopted the comments made by Romer J in Re Jellinek's and while his Honour was considering s 28(a) of the Trade Marks Act 1955, his views have been widely accepted as being equally applicable to the provisions of the 1995 Act.

[10] Scotch Whisky Association v De Witt (2007) 74 IPR 382; (2008) AIPC 92-264; [2007] FCA 1649.

[11] Reddaway v Banham [1896] AC 199; [1895-9] All ER Rep 133 ; TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (1999) 45 IPR 43 at 50 , Fed C of A, Full Court; Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182; (2002) AIPC ¶91-789.

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