Trade Mark Law & Practice

by Philip Macken

Overview

What is a Trade Mark?

 A trade mark is essentially a mark which serves to distinguish the goods or services of one trader from those of another trader.

Historically, a trade mark was regarded as a ‘badge of origin’. Although a trade mark may still function so as to indicate the origin or source of a particular product or service, the nature of a trade mark is now significantly broader and is more likely to indicate that some particular entity (which need not be identifiable by the trade mark) assumes responsibility for the quality of the goods or services provided under the trade mark. This broader nature of a trade mark accommodates modern commercial arrangements, such as franchising and licensing of products or services, where the actual provider of the goods or services (e.g. a franchisee or licensee) may not be the entity which owns the relevant trade mark and which exercises control over the quality of those goods or services.

Section 17 of the Trade Marks Act 1995 defines a trade mark as:

a sign, used or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

In modern, competitive business environments, trade marks are fundamental, intangible intellectual property assets in which substantial reputation and monetary value may reside. Indeed, the value of a well recognised trade mark may comprise a very significant proportion of the total value of the relevant business. Examples of particularly valuable trade marks include Coca-Cola, Microsoft, IBM, Toyota, Google and Billabong. (The Interbrand ‘Best Global Brands’ 2007 survey valued the top 3 brands as follows: ‘Coca-Cola’ US$65.3 billion; ‘Microsoft’ US$58.7 billion; and ‘IBM’ US$52.1 billion).

Unregistered (Common Law) Trade Marks

A trade mark does not have to be registered and it is not necessary for a trader to obtain (or seek) registration of a trade mark before commencing use of the trade mark. Unregistered trade marks exist and may give rise to legally enforceable rights, especially where the unregistered trade marks have been used extensively and developed a strong reputation and significant goodwill. This reputation and goodwill gives rise to “common law” rights which are able to be protected, typically by an action for passing off. For instance, if a competitor adopts a trade mark which is similar to another trader’s mark in which substantial reputation and goodwill reside, the trader may be able to take appropriate action against the competitor on the basis of “passing off”.

In order to constitute passing off, the offending activity must involve the following five essential elements:

• a misrepresentation;
• made by a trader in the course of trade;
• to prospective customers of his or ultimate consumers of goods or services supplied by him;
• which is calculated to injure the business or goodwill of another trader (in the sense that it is a reasonably foreseeable consequence of the misrepresentation); and
• which causes actual damage to the business or goodwill of the trader or will probably do so.

(see Lord Diplock’s judgement in Erven Warnick BV v. J Townend & Sons Hull Ltd [1980] RPC 31)

The reputation and goodwill in a trader’s business is also afforded some protection by s.52 and s.53 of the Commonwealth Trade Practices Act 1974 (‘TPA’) and corresponding provisions of applicable ‘fair trading’ legislation of the various states and territories of Australia.

Section 52(1) of the TPA provides:

A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

Section 53 of the TPA provides:

A corporation shall not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

• (c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
• (d) represent that the corporation has a sponsorship, approval or affiliation it does not have;

Although these provisions are directed towards protecting consumers, they are also often relied upon as a means for protecting a trader’s reputation and goodwill in a trade mark. Indeed, it is usually traders who bring legal action against competitors under these provisions.

Benefits of Trade Mark Registration

Although, as noted above, trade mark registration is not mandatory and enforceable legal rights can exist in relation to unregistered trade marks, there are a number of significant benefits in having a registered trade mark. Some of these benefits are set out below.

• When enforcing rights in a registered trade mark (e.g. in legal proceedings) it is only necessary to prove the relevant statutory tests (see later under ‘Trade Mark Infringement'). Unlike for unregistered trade marks, it is not necessary to lead evidence to prove reputation (and all of the other elements required to establish a passing off action). Consequently, the costs of legal proceedings can be reduced and the outcome is generally more predictable.
• A trade mark registration generally provides Australia-wide rights, whereas the common law rights in an unregistered trade mark are likely to exist only within the region in which the trade mark is proven to have a developed a reputation and goodwill.
• Registration of a trade mark (in repect of goods or services covered by the registration) provides a statutory defence to any allegation that the use of the trade mark infringes the trade mark registration of another entity (s.122(i)(e) and s.20(1)). However, this defence does not provide any protection against allegations of passing off or breaches of s.52 or s.53 of the TPA (or corresponding ‘fair trading’ legislation).
• A registered trade mark is a more tangible right than an unregistered trade mark and a registered trade mark may be assigned with or without the goodwill of the relevant business in which the trade mark is used. An unregistered trade mark is inseparable from the business in which it is used and may not be assigned separately.
• The existence of a registered trade mark has greater deterrent effect than an unregistered trade mark. It is more likely that another trader contemplating adopting the same or a similar trade mark will become aware of a registered trade mark (e.g. when conducting a trade mark availability search of the Trade Marks Register) and, as a result, refrain from adopting the contemplated trade mark.

A trade mark registration may also provide protection for a broader range of goods or services than those actually provided by the owner under the trade mark.

Registered Trade Marks

The legislation (including regulations) governing the registration of trade marks in Australia is found in the Trade Marks Act 1995 (the ‘TM Act’) and the Trade Marks Regulations 1995 (the ‘TM Regulations’).

The administration of the trade mark registration system is undertaken by the Australian Trade Marks Office of IP Australia. IP Australia is an Australian Government agency, within the Department of Innovation, Industry, Science and Research, having responsibility for administering patents, trade marks, designs and plant breeder’s rights in Australia.

This publication provides an overview of the law and practice in Australia in relation to trade mark applications, registrations and renewals, under the Trade Marks Act 1995. It also provides information in relation to trade mark oppositions and the general steps and timeframes concerning trade mark opposition proceedings. The publication also contains some brief commentary in relation to obtaining corresponding trade mark protection in overseas countries and information in relation to desirable strategies when pursuing foreign trade mark protection (including international trade mark applications under the Madrid Protocol).

The publication is intended to give practitioners an understanding of the essential concepts and the legal framework relating to the law and practice concerning registrable trade marks in Australia. It also provides practical guidance on how to conduct and manage the trade mark application process.

This publication is not intended as a resource in relation to unregistered trade marks (often referred to as "common law trade marks") and the law of passing off.

Several standard forms (of the Australian Trade Marks Office) and a number of precedent letters are also provided, relating to standard steps and procedures in relation to the filing, prosecution, registration and renewal of trade marks in Australia.

Only lawyers, patent attorneys and registered trade mark attorneys are entitled to hold themselves out as trade mark agents (or trade mark attorneys) for assisting persons to register their trade marks. There are penalties for unqualified persons holding themselves out as trade mark agents or trade mark attorneys.

Before Filing a Trade Mark Application

Selecting a Trade Mark

When adopting a new trade mark, there are a number of criteria which should be considered and some of the main ones are mentioned below.

Is the trade mark available for use? – An issue of fundamental importance in relation to any new trade mark which is being considered for use and, perhaps, registration is whether use of the trade mark is likely to infringe any existing rights of any other persons. This critical enquiry is dealt with more fully under ‘Searches’ (below).

Is the trade mark sufficiently distinctive? - Consideration should be given to whether the proposed trade mark includes distinctive or non-distinctive elements or, perhaps, both. It is quite common for trade marks to be chosen on the basis that they are somewhat descriptive of the goods or services of interest. However, such trade marks are typically lacking in capacity to distinguish the applicant’s goods or services from those of other traders, which is (subject to an exception specified in s.41(6)) a prerequisite of a registrable trade mark. For instance, the word ‘Comfort’ is unlikely to be registrable (by itself) for shoes. Similarly, a logo simply depicting a bunch of grapes would be difficult to register for wines. If registration of such a trade mark is to be sought, the client should be advised that the prospects of achieving registration are not good and that the attempt may be quite difficult and expensive (as evidence of use and acquired distinctiveness are likely to be required).

Which elements of the trade mark to include in the trade mark application? - If, as is common, a trade mark includes some elements which are distinctive and others which are non-distinctive, consideration should be given to seeking registration of the distinctive element(s) only. For instance, in the trade mark, ‘FLAMINGO Footwear’ (in respect of shoes), the word ‘FLAMINGO’ is distinctive whilst the word ‘Footwear’ is entirely descriptive (and, therefore, has no trade mark significance). It would generally be preferable to seek registration of the word ‘FLAMINGO’ by itself or to seek separate registrations of this word and of the composite mark, ‘FLAMINGO Footwear’. Similarly, where a trade mark incorporates words and a distinctive logo, consideration should be given to seeking separate registration of the words (provided they are sufficiently distinctive) and of the logo (itself).

Searches

Prior to adopting a new trade mark, or filing an application to register a new trade mark, it is (in most cases) important that appropriate "availability" searches are conducted. If another trader has already secured rights in a trade mark (either by way of a registered trade mark or under the common law), the use of the same or a similar trade mark may well constitute an infringement of the other trader's rights.

A typical "availability" search would generally involve checking (at least) the following resources:

• IP Australia's online ATMOSS database, for the same or any similar trade marks registered (or the subject of any trade mark applications) for the same or similar goods or services to those of interest to the client;
• ASIC's online database, for company names or registered business names which are the same as or very similar to the subject trade mark;
• the Internet (e.g. via Google™ search engine), for instances of other uses of the same or any similar trade mark.

Also, checks may be conducted of domain name registries to assess whether the corresponding domain names are available (e.g. www.trademark.com.au, www.trademark.asia etc)

There are other additional publications which may also be searched depending upon the type of goods or services of interest. For example, trade marks relating to pharmaceuticals, alcoholic products, fashion clothing may require that checks be done of relevant industry databases (or publications).

The above types of searches are relatively straightforward in relation to standard marks consisting only of words. However, trade marks which consist of (or include) devices or substantial stylisation of the words, can be much more difficult to search.

Trade mark searching is a specialised task which, to perform properly, takes a great deal of experience. Not only is it necessary to locate any earlier trade marks which are substantially identical to the subject trade mark, it is also very important to identify any other trade marks which might be regarded as ‘deceptively similar’. As ‘deceptive similarity’ can be based on visual, phonetic and/or conceptual comparisons, the search strategy adopted must be broad, flexible and tailored to the specific situation.

A trade mark availability search which fails to locate all relevant trade marks has the potential to cause substantial loss and damage to a client. The costs of launching a new brand (which may include market research, graphic design input, the creation of packaging, point-of-sale materials, stationery, advertisements and marketing materials, as well as legal expenses) can be a very costly exercise. If it is subsequently discovered (e.g. upon receipt of a ‘cease and desist’ letter) that a third party has rights in the same or a similar brand, the launch of the new brand may expose the client to liability for trade mark infringement, passing off and breaches of relevant fair trading legislation. Additionally, the client may need to start afresh and adopt a new brand. The costs (including lost opportunity costs) and embarrassment resulting from such a situation can be very significant.

There are certain inherent limitations in conducting an availability search of the Australian Trade Marks Office’s records. For instance, the official records may contain errors or inaccuracies and they may not be entirely up to date. It generally takes several days (and sometimes longer) from the filing of a trade mark application before the details of the application are available for public inspection.

Another significant limitation is that, by virtue of a particular international convention (the ‘Paris Convention’ which is discussed later), a foreign applicant may apply to register a trade mark in Australia claiming the filing date of an earlier foreign application, filed up to 6 months earlier, for the same trade mark. Therefore, it is possible that, an application for a conflicting trade mark may be filed up to about 6 months after the carrying out of the availability search, and this conflicting trade mark may subsequently pose both an infringement risk and an obstacle to registration in relation to the trade mark of interest.

Trade mark protection in Australia can also be sought by foreign applicants by way of an international application/registration under the Madrid Protocol. It can take several months before a Madrid Protocol application/registration (which includes Australia as a designated country) is recorded in the ATMOSS trade mark database of IP Australia. Therefore, at the time of conducting a search, an international application/registration may exist (having an earlier priority date) which designates Australia, but which does not appear in the ATMOSS database until after the search has been conducted.

As will be appreciated, there are also several inherent limitations when conducting searches of the ASIC records, other databases or over the internet (e.g. Google™ searches). Such limitations would include the accuracy and currency of the records searched and the effectiveness of the actual search engines employed.

When reporting the results of a trade mark availability search, it is important to include some comments on the inherent limitations of the search. A precedent letter is provided here - Letter to client reporting results of Trade Mark availability search.

If a local client’s trade mark is also proposed to be used in foreign countries, similar “availability” searches should be contemplated for each country of interest, particularly if such use is likely to commence in the near future. If the foreign use of the trade mark will not be commencing for some time, it may be more cost effective to proceed with the filing of trade mark applications in the countries of interest without first conducting any searches (depending on the number of classes to be included in the application). This is because the trade marks offices of many countries of interest will, as a matter of course, conduct their own searches of prior registrations and applications to determine the registrability of the subject trade mark. If any earlier conflicting applications or registrations exist, an adverse report will issue informing the applicant of the relevant earlier application(s) or registration(s).

However, there are a number of countries in which such searches of prior marks are not conducted. The appropriate strategy will therefore depend on the countries of interest, the number of classes of goods/services of interest, the time frame in which use of the trade mark is likely to commence in the relevant country and the relative costs of filing an application and conducting an availability search. (See also the subsequent discussion under ‘Trade Mark Protection in Foreign Countries’).

The Application Process - Summary

Filing a trade mark application

A summary of the information which needs to be provided in a trade mark application is set out below. Some guidance and recommendations are also included in order to ensure that the application (and any subsequent registration) is valid and affords the broadest available protection.

The Application

An application to register a trade mark needs to be filed with the Australian Trade Marks Office. An application can be filed by completing an Application to Register a Trade Mark ( Form TM00001) and lodging this form with the Trade Marks Office. The Application form may be submitted to IP Australia in person, by post or by facsimile.

Alternatively, a trade mark application may be filed on-line by visting this page (IP Australia's "Apply Online" page). For regular filers of trade mark applications, this is generally the preferred means of filing such applications.

The official filing fee needs to be paid at the time of lodging the application. For applications filed by post, the official fee may be paid by cheque, money order or credit card (submitted with a ‘ Payment Form for Credit Cards, Cheques and Money Orders’). For applications filed by fax, payment is made by credit card (submitted with a ‘ Payment Form for Credit Cards, Cheques and Money Orders’).

For applications filed online, payment is made by credit card. The online payment system automatically calculates the official fee payable.

The official filing fee payable will depend upon a number of factors, including the manner in which the application is filed and the number of classes of goods and/or services included in the application. Applications filed online are slightly cheaper than applications filed (by post or fax) using Form TM00001.

In order to determine the official fee payable in respect of any trade mark application, reference may be made to Schedule 9 of the Trade Marks Regulations 1995.

The Applicant

A trade mark application may only be made by a person or persons having legal personality (s.27(2)(c)). Therefore, a trade mark application may be filed in the name of an individual or a company. A trade mark application may also be filed in the name of an incorporated association, a trust or a body politic (see definition of 'person' in s.6). Where an application is filed on behalf of a trust, it will need to be filed in the name of the trustee(s) in order to satisfy the ‘legal personality’ requirement.

Applications filed by an unincorporated association, society or club are not acceptable except in the case of applications for a ‘collective trade mark’ (see below).

Also, an application may be made in the name of two or more persons (‘joint owners’) provided the relations between the persons are such that "none of them is entitled to use the trade mark except (a) on behalf of all of them or (b) in relation to goods and/or services with which all of them are connected in the course of trade” (s.28).

A trade mark application may not nominate a trading name or a registered business name as the applicant.

An application to register a trade mark needs to be filed in the name of a person who is entitled to file the application (see below). Therefore, it is critical that the correct entity is specified as the applicant for the trade mark application. Specifying the incorrect entity may invalidate the application and this error may not be able to be appropriately amended at a subsequent stage. This can be particularly relevant in corporate groups where it will be important to consider which company within the group should be nominated as the applicant.

The address of the applicant (or each applicant in the case of joint owners) needs to be specified in the application. This may be a street address or a Post Office box address.

To be entitled to apply for registration of a trade mark, in relation to specified goods and/or services, the applicant must claim to be the owner of the trade mark and must:

• be using or intending to use the trade mark in relation to the specified goods and/or services;
• have authorised or be intending to authorise another person to use the trade mark in relation to the goods and/or services; or
• be intending to assign the trade mark to a body corporate that is about to be constituted with a view to the use by that body corporate of the trade mark in relation to the goods and/or services.

(s.27(1))

The term ‘owner’ is not defined in the TM Act. However, at common law, the owner (or proprietor) of a trade mark, in relation to particular goods or services, is the first person to either: (a) use the trade mark (as a trade mark) in relation to the relevant goods or services; or (b) adopt, intend to use and apply for registration of, the trade mark in relation to the relevant goods or services (see Dixon J in Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 627). The Trade Marks Office does not conduct any investigation into an applicant's claim to ownership, unless on the face of it, the claim appears to be defective. However, a third party may raise any such defects during opposition proceedings (see ‘Opposition to Registration’ below) or revocation proceedings (see ‘Revocation of Registration’ below).

In most cases, the appropriate applicant will be readily identifiable. However, in some situations (such as in a corporate group), questions can arise as to the appropriate applicant.

Clearly, a company which is using or intending to use the trade mark may be the applicant. Also, it is generally acceptable for the parent company (or holding company) of a corporate group to be nominated as the applicant. In such a situation, the parent (or holding) company typically has financial control over the other companies in the group and the TM Act deems any authorised use of a trade mark by an entity, which is under the financial control of another entity, as being use by the controlling entity (see s.7(3) and s.8).

There is no requirement for an applicant to submit any statement or declaration regarding actual or intended use of the subject trade mark. The act of applying for registration will generally be taken as an indication that the trade mark is in use or is intended to be used. However, if the specification of goods and/or services is unrealistically broad and so calls the matter of use or intended use into question, the Trade Marks Office may request the applicant to provide a declaration in relation to the use or intended use of the trade mark.

An applicant may be a foreign national (person or corporation). However, an application on behalf of a foreign national needs to specify a local address for service, being an address in Australia to which all correspondence from the Trade Marks Office (or from any other person), concerning the application, is to be sent. The local address for service will typically be the office of the local (Australian) firm which is representing the applicant.

The Trade Mark

As mentioned above, a trade mark is a "sign, used or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person (s.17). Typically, a trade mark often comprises a word and/or a logo (e.g. ‘Coca-Cola’, ‘Nike’ and the Nike ‘Swoosh’ logo).

A trade mark application for a word mark should generally be filed in plain block capital letters as this will provide relatively broad protection, covering most usual renderings of the trade mark, such as those represented in standard fonts. If the particular rendering or stylisation of the trade mark is itself distinctive and is an important visual feature of the mark, broader protection would be obtained by seeking separate registrations of the word in plain block capital letters and in the stylised format.

A logo will typically comprise an ‘artistic work’ as defined by section 10 of the Copyright Act 1968. The Copyright Act affords protection to such works although the nature of copyright protection is quite different to the protection afforded to a registered trade mark under the TM Act. These differences go beyond the scope of this text but one significant difference is that the Copyright Act only provides protection against copying, whereas the TM Act will provide protection against the unauthorised use of a deceptively similar trade mark (whether copied or produced independently).

Another important issue to be borne in mind in relation to logos is ownership. Typically, a logo will be designed by a graphic designer or advertising agency on behalf of a client. Due to the ownership provisions of the Copyright Act (see s.35), in the absence of a written assignment, the graphic designer or advertising agency will generally retain ownership of the copyright in the logo and the client only has an implied licence to use the logo (the terms of which licence will necessarily be unclear). Clients are often surprised to learn this. Therefore, clients should be advised always to seek a written assignment of the copyright in any logo (and other copyright works) created by an external agency.

Also, there is authority for the view that, in respect of a logo mark, unless the applicant is the owner of the copyright, the applicant may not be entitled to apply for the registration of the mark (see the obiter comments of Whitford J. in KARO STEP Trade Mark [1977] RPC 255 at 273-4).

The abovementioned definition of a ‘trade mark’ includes reference to it being a ‘sign’. The TM Act defines a ‘sign’ as including:

"any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent" or any combination of these (s.6 – Definitions).

This broad definition is not exclusive but, in addition to usual types of trade marks (e.g. words and logos), it expressly includes less usual types of marks, such as three-dimensional shapes, colours, sounds and scents.

The distinctive shapes of products or parts of products have successfully been registered. For instance, the arrow-shaped clip of a Parker™ pen and the triangular shape of Toblerone™ chocolate have been registered as trade marks.

When considering the registration of a trade mark comprising the shape of the relevant goods, regard should also be had to the possibility of seeking protection of the shape as a registered design under the Designs Act 2003. Design registration will however only be possible if, at the time of filing the application to register the design, the design is novel (i.e. it has not been published, commercialised or publicly used).

Examples of sound trade marks are: 'the sound of the word Yahoo sung in a yodelling style' and 'a combination of the spoken words "JUST LIKE THAT" followed by the sound of fingers clicking'.

Only a small number of applications have been filed for scent trade marks. One such application which proceeded to acceptance was for the smell of beer applied to darts. The application was discontinued, however, prior to registration.

A number of trade mark applications, for colours or combinations of colours, have proceeded to registration. However, some applications for colour trade marks have proven to be contentious. For instance, several trade mark applications by Cadbury Schweppes, for the colour purple (in respect of chocolate products) have been opposed by rival traders.

In order for a trade mark to be registrable, the TM Act sets out certain criteria which must be met and these are discussed further below, under ‘Examination and Prosecution of Trade Mark Applications’. Generally, the more unusual (i.e. distinctive) the relevant word, logo, shape, colour, sound, scent (or other sign) is, in relation to the relevant goods or services, the greater will be the prospects of the mark being accepted for registration. A word (or logo) which is descriptive of the relevant goods or services, or a shape (or colour) which has some functional purpose in relation to the relevant goods or services, is unlikely to proceed to acceptance (without evidence of substantial use).

Prohibited signs

Certain signs are prohibited from registration, such as the words, ‘Patent’, ‘Copyright’, ‘Returned Soldier’ and ‘Olympic Champion’ and representations of the Arms, or of a flag or seal, of the Commonwealth or of a State or Territory (s.39(2); r.4.15).

There is also other legislation in Australia which contains prohibitions on the use of certain terms and/or symbols as trade marks (see under ‘Other Considerations’ below).

Graphical Representation of Trade Mark

To be registrable, a trade mark (including those comprising sounds or scents) must be able to be represented graphically (s.40). Where the trade mark comprises a shape, colour, sound or scent, a clear description of the trade mark will need to be provided. If there is no other form of graphical representation of such a trade mark, a description of the mark may constitute the graphical representation.

Formalities

The TM Regulations set out certain other formality requirements in relation to the representation of a trade mark in any trade mark application (see r.4.3). By way of illustration, some of these formality requirements are set out below.

• The representation of a trade mark must not exceed 8 centimetres by 8 centimetres;
• If the trade mark includes words of a language other than English, the applicant will be required to file a translation of the words into English;
• If the trade mark includes characters constituting words that are not in roman letters, the applicant will be required to file both (a) a transliteration of the characters into roman letters and (b) a translation of the words into English;
• If the trade mark contains, or consists of, a three-dimensional shape, the representation of the trade mark must be illustrated in a perspective that shows each feature of the trade mark or the representations must include views of the trade mark that are necessary to show each feature of the mark.

Detailed information concerning the formality requirements of representations of trade marks (including the requirements for three-dimensional, colour, sound and scent marks) are set out in Part 10.3 of the Examiner’s Manual.

Other considerations

In most cases where the trade mark comprises words or a logo, the selection of the trade mark to be included in the application will be straightforward. However, it will sometimes be necessary to consider various options in order to maximise potential protection. For instance, if a trade mark is a composite mark (including words and a logo), consideration will need to be given to whether the applicant should seek registration of:

• (a) the composite mark;
• (b) the words;
• (c) the logo; or
• (d) two or more of the above alternatives.

If a trade mark is generally represented in colour, consideration will also need to be given to whether, in the application, the trade mark is represented in colour or black and white. Generally, registration of a trade mark in black and white will provide broader protection as such a registration will not be limited to any particular colour. It is possible to include, in a single ‘series’ application, representations of a trade mark in both colour and black and white (see below under ‘Series Applications’) and such a registration will provide broader protection.

As noted above, if a trade mark comprises words in a foreign language, the Trade Marks Office will require an English translation of these words. Also, if the trade mark is represented in non-Roman characters (e.g. Chinese, Japanese, Korean, Arabic etc), both a translation and a transliteration of the trade mark will be required. The translation and/or transliteration will then be included, as an endorsement, on the application. Suitable wording for such endorsements are:

• The applicant advises that the English translation of the [identify language] language word, [insert foreign word] appearing in the trade mark is ‘[insert translation]’
• The applicant advises that the [identify language] characters appearing in the trade mark may be transliterated as [insert transliteration] which may be translated into English as ‘[insert translation]’

When a local applicant is adopting a new trade mark comprising English language words and this mark is likely to be used in foreign, non-English speaking countries, regard also needs to be had to whether the words, or the transliteration of the words, may have any adverse connotations in the relevant foreign language. A word which in English may have a benign meaning, may have a very negative connotation in another language.

Certain other Australian legislation exists which relates to specific marks and, typically, prohibits their use as trade marks. Examples include:

• Geneva Conventions Act 1957, which prohibits the unauthorised use of terms such as “Red Cross”, “Red Crescent” and related emblems and insignia;
• Olympic Insignia Protection Act 1987, which prohibits the unauthorised use of certain words (including ‘Olympic’ and ‘Olympic Games’), symbols and emblems associated with the Olympic Games;
• Advance Australia Logo Protection Act 1984, which prohibits the use of the ‘Advance Australia’ logo.

Series Applications

A single trade mark application may include two or more trade marks if the trade marks resemble each other in material particulars and differ only in respect of the following minor particulars:

• statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used;
• statements or representations as to number, price, quality or names of places; or
• the colour of any part of the trade mark

(see s.51).

Some examples of accepted ‘series’ trade marks are:

• BUTTER BUDS; CHEESE BUDS; CHEDDAR BUDS
  in respect of food flavourings
• The Falls; The Falls B&B; The Falls Retreat; The Falls Country Retreat
  in respect of bed and breakfast and country holiday accommodation
• UNCLE TOBYS CRUNCH; UNCLE TOBYS OAT CRUNCH
  in respect of breakfast cereals and related goods

There is no limit on the number of trade marks which may be included in a series application and the number of representations included does not affect the official filing fee. The official filing fee in relation to a series application is higher than for a standard application. However, a series application (covering multiple representations of a trade mark) is generally significantly cheaper than filing separate applications for each of the representations. The registration fee payable at the time of registration is, however, no higher for a ‘series’ application than for a normal application. The same is true in relation to the renewal fee which is payable every 10 years (see ‘Renewal of Trade Mark Registrations’).

A series application may incorporate either a single class or multiple classes of goods and/or services.

Goods and Services

A trade mark application needs to be filed in respect of the goods and/or services of interest to the applicant under the trade mark (s.27) and therefore the trade mark application must specify these goods and/or services.

In Australia, it is allowable to include more than one class of goods and/or services in a single trade mark application (s.19(1), (2)). The official filing fee payable to IP Australia will depend upon the number of classes in the application. Also, at the later stage of registration of the trade mark, the official registration fee is also dependant upon the number of classes included in the application. Similar comments apply to the renewal of a trade mark registration (see ‘Renewal of Trade Mark Registrations’).

Under a multilateral treaty administered by WIPO (the ‘Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks’), all goods and services are classified into 45 classes - comprising 34 classes of goods and 11 classes of services. These are set out in Schedule 1 of the TM Regulations. For instance, computers and computer software are in class 9; motor vehicles are in class 12; stationery is in class 16; clothing is in class 25; accounting services are in class 35; building services are in class 39; and legal services are in class 45. In any trade mark application, the relevant class(es) and the goods and/or services of interest to the applicant must be specified. If the application is a multi-class application, the classes need to be specified in numerical order.

As noted above, in order to be entitled to file a trade mark application, an applicant must generally be using or intending to use (or has authorised or is intending to authorise another person to use) the subject trade mark in relation to the goods and/or services covered by the application (s.27(1)). The applicant will generally not be required to provide a signed statement or declaration in relation to such intention. Also, the intention need not be an immediate intention to use the relevant trade mark. If there is a general intention to use the trade mark in the relatively near future, then this should suffice.

If, however, at the time of filing the application, an applicant has not used the trade mark and has no intention of using the trade mark in relation to the goods or services covered by the application, this can be a ground on which the trade mark application may be opposed or any subsequent registration may be cancelled. In a situation where the lack of use and lack of intention to use the mark relate only to some of the goods or services, the challenge may be limited to these goods or services.

In order to maximise the potential scope of an Australian trade mark application, the statements of goods and/or services should be drafted broadly. Another reason for this is that a trade mark application or registration may be amended so as to restrict the scope of the statement(s) of goods and/or services. However, it is generally not possible to broaden the statement(s) of goods and/or services of an application or registration.

Wider protection can typically be obtained by using generic terminology when referring to particular goods or services. For instance, in Australia, it is better to specify: ‘clothing’ in preference to ‘t-shirts and shorts’; ‘sporting goods’ in preference to ‘cricket bats’; and ‘entertainment services’ in preference to ‘live cabaret performances’.

It is not acceptable to use (or include) in any statement of goods/services the terms, 'all goods’, ‘all goods in this class', 'all services', ‘all services in this class', ‘all other goods', or 'all other services' (r.4.4(2)).

Minimum Filing Requirements

In order for a trade mark application to be taken to have been filed, and accorded a filing date, the application must:

• (a) state that the application is for registration of the trade mark, or contain a clear indication to that effect;
• (b) include a representation of the trade mark that is sufficient to identify the trade mark; and
• (c) specify the goods and/or services in relation to which the application is made; and
• (d) include sufficient information to enable the Registrar to establish the identity of the applicant; and
• (e) contain sufficient information to enable the Registrar to contact the applicant.
  (the ‘minimum filing requirements’) (r.4.2(1)).

The standard application form ( Form TM00001) and the on-line application form contain prompts to enter all the above information.

Also, the official filing fee must accompany the application. If this fee is not paid (or is underpaid), the application will not be taken to have been filed and no filing date will be given until full payment of the fee is made. The applicable fee will depend upon how the application is filed (e.g. by post or electronically) and the number of classes included in the application. The relevant fees for filing trade mark applications are set out in items 1 and 3 of Schedule 9 of the TM Regulations.

If a trade mark application fails to meet the minimum filing requirements, it will not be given a filing date until it does comply. In the case of such failure, the Registrar will notify the applicant within 14 days of the non-compliance and allow the applicant two months from the date of the letter detailing non-compliance to rectify the deficiencies in the application (r.4.2(2)). The application will not be taken to have been filed until the deficiencies are rectified. If the deficiencies are not rectified in the time allowed, the application will be returned to the applicant and any fees paid in relation to the application will be refunded. If the application is rectified within the time allowed, the filing date given to the application will be the date the Trade Marks Office receives the correspondence which rectifies all the deficiencies in the application, provided the appropriate fee has been paid (r.4.2(3)).

Some other points to be borne in mind when preparing and filing trade mark applications are provided below.

Address of Applicant(s) – It is usual to specify the applicant’s street address but a Post Office box address may be provided instead. If there are two or more applicants, the address of each applicant is required.

Address for Service – An address for service of documents in Australia must be specified (s.215(5)). Where another entity (e.g. a law firm, patent attorney firm etc) is appointed to act on behalf of an applicant in relation to the preparation and filing of a trade mark application, the entity should specify its name and address as the address for service. In respect of applications on behalf of foreign nationals that do not have any business establishment in Australia, it is usual to appoint a local firm (of patent/trade mark attorneys or lawyers) as the address for service. An address for service may be a Post Office box address.

Convention Applications – Where the applicant is a foreign national and the applicant has filed an earlier application for the same trade mark in another country within the last 6 months, the Australian trade mark application may claim priority from (and, thereby, the filing date of) the earlier application – pursuant to the International Convention for the Protection of Industrial Property (the ‘Paris Convention’). This facility only exists if the earlier foreign application is the first application for the subject trade mark filed in a foreign country in respect of the specified goods and/or services. If priority is to be claimed under the Paris Convention, the Australian application form must provide details of the earlier application, namely the relevant country, the filing date and (if possible) the application number of the foreign application.

The applicant of a Convention application will generally not be required to provide a certified copy of the original (foreign) trade mark application from which the Australian application claims priority. However, if during examination, a citation objection is raised based on a third party application which was filed during the period between the applicant’s foreign application and the Australian application (claiming Convention priority), the validity of the claim to priority will be an important issue and the Trade Marks Office may require a certified copy of the foreign application to be supplied.

In the same way, an Australian applicant may file foreign trade mark applications which correspond with the applicant’s Australian application within the relevant 6 month period. This is discussed further under ‘Trade Mark Protection in Foreign Countries’ (below).

Divisional Trade Mark Applications

Where an application for a trade mark has been made in Australia (referred to as the parent application) and that application is still pending, a divisional application may be made for the same trade mark in respect of some of the goods and/or services covered by the parent application (s.45(1)).

A divisional application may be useful where, for example, the parent application is in order for acceptance in respect of some of the goods or services covered by the application but is facing difficulties in respect of other goods or services. In such a situation, a divisional application may be filed in respect of the problematical goods or services, whilst the parent application is amended so as to exclude these goods or services.

A divisional application is taken to have the same filing date as the parent application on which it is based. Also, if the parent application includes a claim for priority under the Paris Convention, the divisional application may maintain this claim and this must be specified in the divisional application.

When filing a divisional application, an applicant must also specify the goods and/or services that are to remain in the parent application.

A divisional application may be based on an application which is, itself, a divisional application (s.45(2)).

Non-standard Trade Mark Applications

In addition to standard trade mark applications, such as those described above, trade mark applications may also be filed in respect of certain non-standard trade marks. These non-standard trade marks are:

• Collective trade marks (Part 15 TM Act);
• Certification trade marks (Part 16 TM Act); and
• Defensive trade marks (Part 17 TM Act).

Applications for these types of trade marks are relatively uncommon and, therefore, only brief comments on these are provided below. More detailed information can be obtained from the Examiners’ Manual (see Parts 33, 34 and 35)

Collective Trade Marks

A collective trade mark is “a sign used, or intended to be used, in relation to goods or services dealt with or provided in the course of trade by members of an association to distinguish those goods or services from goods or services so dealt with or provided by persons who are not members of the association” (s.162). Unlike certification trade marks (see below), the use of collective trade marks is not required to be subject to rules.

An application for a collective trade mark registration must be made by the association to which the mark belongs (s.164). The body (i.e. applicant) applying for registration of a collective trade mark may be a body corporate or an unincorporated body.

Applications for registration of collective trade marks will generally be treated in the same way as applications for standard trade marks as collective trade marks are subject to substantially the same registrability criteria as standard trade mark applications. Similarly, a registration of a collective trade mark will generally be treated the same as a registration of a standard trade mark (s.163).

One very significant difference between a collective trade mark registration and a standard trade mark registration is that the former may not be assigned or transmitted (even if the assignment is intended to be from an unincorporated association to the association following incorporation) (s.166).

Certification Trade Marks

A certification trade mark is a sign used, or intended to be used, to distinguish goods or services:

• (a) dealt with or provided in the course of trade; and
• (b) certified by a person (being the owner of the certification trade mark), or by another person approved by that person, in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture;

from other goods or services dealt with or provided in the course of trade but not so certified (s.169).

The purpose of a certification trade mark is to "certify" that the goods or services in respect of which the mark is used are of a particular standard with regard to quality, accuracy or other characteristics. The goods or services certified may be those of any person, including the owner of the certification trade mark or any person approved by the owner for the purpose of certifying goods or services.

An application for the registration of a certification trade mark must include a copy of the rules governing the use of the trade mark (s.173(1)). These rules must be filed at the time of filing the application or as soon as practicable after filing (r.16.1).

The registered owner of a certification trade mark has the exclusive right to use, and to allow other persons to use, the certification trade mark. Use of a certification trade mark by the owner, or by an approved user, must be in accordance with the rules governing its use (ss.171, 172).

The rules governing the use of a certification trade mark must specify:

• the certification requirements that goods or services must meet for the certification trade mark to be applied to them; and
• the process for determining whether goods or services meet the certification requirements; and
• the attributes that a person must have to become an approved certifier, that is, a person approved to assess whether goods or services meet the certification requirements; and
• the requirements that the owner of the certification trade mark or an approved user must meet to use the certification trade mark in relation to goods or services; and
• other requirements about the use of the certification trade mark by the owner or an approved user; and
• the procedure for resolving a dispute about whether goods or services meet the certification requirements; and
• the procedure for resolving a dispute about any other issue relating to the certification trade mark.
  (s.173(2))

The rules must also include any other matter the Commission requires to be included and they may also include any other matter the Commission permits to be included (s.173(3),(4)). The references to ‘the Commission’ mean the Australian Competition and Consumer Commission (‘ACCC’) established under the Trade Practices Act 1974.

Following the lodgement of the rules with the Trade Marks Office, the rules must be assessed and approved by the Commission before the trade mark can be accepted for registration. The Commission must be satisfied that the attributes of the approved certifier, determined by the owner of the certification trade mark, are sufficient to enable competent assessment of the goods or services, that the rules are not detrimental to the public, and that they satisfy the prescribed criteria (see s.175(2) and r.16.6).

Certification trade mark applications and registrations can be assigned in the same way that standard trade marks may be assigned. However, the permission of the Commission must be granted before the assignment of a registered certification trade mark can be effected (s.180, 180A).

Defensive Trade Marks

Generally, a prerequisite of a trade mark application/registration is that the applicant intends to use the subject trade mark, or does actually use it, in relation to the goods or services covered by the application/registration.

However, the TM Act provides for ‘defensive’ trade mark registrations in respect of well-known trade marks even in respect of goods or services in respect of which there is no intention to use, or actual use of, the relevant trade mark.

Section 185 (1) of the TM Act provides:

If, because of the extent to which a registered trade mark has been used in relation to all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a defensive trade mark in respect of any or all of those other goods or services.

A defensive trade mark registration is only available in respect of a trade which is already registered (e.g. as a standard trade mark registration) by the owner in respect of other goods or services. Section 185(2) states that a defensive trade may be registered “even if the registered owner does not use or intend to use the trade mark” in relation to the specified goods or services.

A defensive trade mark registration is, therefore, a means of providing statutory protection to a trade mark, which is reasonably well recognised, in respect of goods or services for which the trade mark is not proposed to be used.

If, however, over time the registered owner does use, or intend to use, the subject trade mark in relation to the goods or services covered by a defensive registration, the owner may also apply for registration of the trade mark as a standard trade mark registration. That is, there is no prohibition on having both a standard registration and a defensive registration for a trade mark in respect of the same goods or services. There is however no provision for converting a defensive registration into a standard trade mark registration.

The infringement provisions of the TM Act (see s.120) apply equally to defensive trade mark registrations and standard trade mark registrations.

A major benefit of a defensive registration is that it cannot be challenged on the basis that the applicant did not intend to use, or has not in fact used, the registered trade mark in relation to the goods or services covered by the defensive registration.

Another benefit is that, with respect to infringement, the owner of a defensive registration will have a stronger case against a person who is using the same or a similar mark, on goods or services which are covered by the defensive registration, than would be the case if the owner had to rely on a standard trade mark registration covering goods or services which are quite different from those being provided by the other person.

Most of the provisions of the TM Act which apply to standard trade mark applications and registrations apply equally to defensive trade mark applications and registrations. However, s.186 states that the following sections and parts of the TM Act do not apply to defensive registrations:

• Subsection 20(1) – regarding the exclusive right to use or authorise other persons to use the trade mark;
• Paragraph 27(1)(b) - regarding the use or intention to use a trade mark (as there is no requirement to use a defensive trade mark);
• Section 41 – regarding the matters to be considered in deciding whether or not a trade mark is inherently capable of distinguishing;
• Section 59 - which provides for a ground of opposition on the basis of lack of intention to use the relevant trade mark;
• Section 121 – regarding infringement by breach of certain restrictions;
• Section 127 - which precludes payment of damages in an infringement action if the plaintiff’s mark has not been used;
• Part 9 – regarding the removal of a trade mark from the Register on the basis of non-use, and
• Part 16 – regarding Certification Trade Marks

A defensive trade mark application is filed in the same way as an application for a standard trade mark but there are two additional requirements. First, when filing the defensive trade mark application, the applicant must specify the registration number(s) of the registered trade mark(s) upon which the defensive application is based. The defensive registration may be based on more than one existing standard registration.

Secondly, evidence in support of the application must be filed, either at the time of filing the application or as soon as practicable after filing the application (reg. 17.1). This evidence must be sufficient to establish that the subject trade mark has been used to such an extent in relation to “all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark” (s.185(1)).

Such evidence is generally provided by way of a ‘leading’ statutory declaration on behalf of the applicant. In addition to the usual evidence relating to the history, nature and extent of use, the declaration should also explain the basis on which the applicant’s claim for defensive registration is made. For instance, this might include an explanation as to why potential consumers are likely to infer a connection with the applicant when the trade mark is used on different goods and the nature of that likely connection.

It may assist the defensive application if supporting declarations from members of the trade in question (that is, the trade related to the goods or services to be covered by the defensive registration) are also provided. These declarations should also provide confirmation of the likely inference of a connection between the applicant and the goods or services covered by the defensive application.

For the reasons set out above, a defensive trade mark registration is generally only likely to succeed in respect of a relatively well-known trade mark. Examples of defensive trade mark registrations include: VEGEMITE for vehicles (in class 12); COCA-COLA for iced confections and confectionery (in class 30); and NIKE for beer and non-alcoholic drinks (in class 32).

The Registrar will require an endorsement to be entered in respect of a defensive trade mark registration specifying the standard trade mark registration(s) on which it is based. The endorsement will typically read as follows:

“Registration of this trade mark as a defensive trade mark is based, as per subsection 185(1), on registered trade mark(s) XXXXXX”

Factors affecting the registrability of a trade mark as a defensive trade mark

(a) The nature of the goods/services

As previously noted, one of the prerequisites for a defensive registration of a trade mark is that the use of the (already registered) trade mark, in relation to goods or services other than those covered by the registration, will be taken to indicate that there is a connection between those goods or services and the registered owner of the trade mark. The likelihood of customers perceiving a connection between the relevant goods or services and the registered owner will, of course, be greater where the respective goods and services of the existing registration and the defensive application are closely related (e.g. see Ferodo Ltd’s Application (1945) 62 RPC 111, Chicopee Manufacturing Corp.’s Appn (1962) 32 AOJP 489 and Bingo Pty Ltd's Appn (1962) 32 AOJP 775).

However, where for example the trade mark is particularly well known or there is public awareness of the possible licensing, franchising or product extensions in respect of the trade mark, a defensive registration of the trade mark may be achievable even in relation to goods or services unrelated to those covered by the basic registration (e.g. see Re Applications by Mobil Oil Corporation 32 IPR 535).

(b) The range of goods/services on which the basic registered trade mark has been used

The prospects of achieving defensive registration of a trade mark will be greater if the trade mark has already been used on a wide range of goods/services covered by the existing basic registration. In such a situation, consumers are more likely to be aware of the trade mark owner’s use of the trade mark on a wide variety of goods or services and it would not be so much of a ‘leap’ for them to draw a connection between the owner and the goods or services covered by the defensive application. As Justice Evershed stated in the Ferodo case, “generally speaking the more special in character those goods are and the more limited the market, the less likely will be the inference required by the sub-section to be drawn in relation to goods of a very different kind”. The likelihood of the requisite inference being drawn is higher “if the mark has been registered and used in respect of a wide variety of goods required by the common man”.

(c) The trade mark itself

As a defensive trade mark application needs to be based upon a registered trade mark, it can generally be assumed that the trade mark has some capacity to distinguish the owner's goods or services from those of other traders.

Nevertheless, a trade mark is more likely to achieve registration as a defensive trade mark if the trade mark has a relatively high degree of inherent distinctiveness (e.g. it is quite unique or unusual). Therefore, an invented word (such as VEGEMITE) is more likely to be successful than a word or phrase which is somewhat descriptive of a character or quality of the relevant goods or services. As stated in the Examiner’s Manual, “a word or sign which other traders are likely to have a legitimate wish to use in respect of goods or services of the kind designated in the defensive application, is unlikely to be taken as indicating a connection with any particular trader unless there has been use in respect of those goods and services to establish that connection”.

Considerations for Foreign Trade Mark Applications

When filing a trade mark application, regard also needs to be had to the applicant’s interest (if any) in seeking corresponding trade mark protection in overseas countries (such as New Zealand, the USA etc). Typically, foreign trade mark protection will need to be considered in situations where the client is considering exporting products or services overseas or having products manufactured and branded overseas and then imported into Australia or other countries.

It is important that the filing date of the Australian trade mark application is noted and that the 6 month anniversary date of the application is diarised in an appropriate manner. This is because, under the abovementioned Paris Convention, any overseas applications which correspond with the Australian application and which are filed within 6 months of the Australian application, may be able to claim the benefit of the filing date of the earlier Australian application. This can be very advantageous in that it will give priority to the foreign application over a conflicting third party application (in the foreign country) filed in the period between the relevant Australian filing date and the filing date of the foreign application. This is discussed further below (see ‘Trade Mark Protection in Foreign Countries’).

Examination and Prosecution of Trade Mark Applications

Overview

Once a trade mark application has been filed with IP Australia, the Registrar is under an obligation to examine and report on whether the application: (a) has been made in accordance with the TM Act; and (b) whether there are any grounds under the Act for rejecting the application (s.31).

The Registrar will initially review the application to determine whether it meets the minimum filing requirements which allow it to be taken as filed (r. 4.2). For instance, if the identity of the applicant cannot be determined or the representation of the trade mark is inadequate, the Registrar is likely to issue a notice advising the applicant of these formality defects. A period of time (usually two months) is provided to enable the applicant to rectify the identified defects.

Substantive examination of a trade mark application will generally occur within 3 to 6 months of the filing of a trade mark application. Trade mark applications are generally examined in the order in which they are filed and the period of time between lodgement and examination will depend upon workloads and resources within the Trade Marks Office. Examination of an application can be expedited where circumstances exist which justify expedition (see ‘Expedited Examination’ below).

If, upon examination, the examiner can find no grounds for rejecting the application, it will be accepted for registration (see ‘Acceptance of Applications and Registration’ below). If, however, the examiner determines that a trade mark application has not been made in accordance with the TM Act or that there are grounds for rejecting the application, the examiner will issue an adverse written report, setting out the examiner’s objection(s), generally with his or her reasons in relation to them. (See ‘Substantive Examination’ below).

Period for Placing the Application in Order for Acceptance

If an adverse examination report does issue in relation to a trade mark application, the applicant will have a period of 15 months, from the date of the first report, within which to place the application in order for acceptance (s.37(1); r.4.12(1)(a)). It is important to note that, subject to any deferment of acceptance (see ‘Deferment of Acceptance’ below) or any extensions of time granted (see ‘Extensions of Time for Prosecution of Applications’ below), the application needs to be accepted within this 15 month period. The 15 month deadline is not, and should not be regarded as, the date by which a response to the adverse report needs to be filed.

Upon receipt of an examination report, it is important that the 15 month acceptance deadline (or any subsequent extension of this deadline) be diarised in an appropriate manner, so as to ensure that this deadline is not inadvertently missed. It is also prudent to include at least one earlier diary entry (at least 2 or 3 months before the deadline) as a reminder to chase the applicant for outstanding instructions in order to place the application in order for acceptance by the deadline.

The Trade Marks Office generally requires about 3 weeks to consider and act upon a response filed in relation to an examination report. Therefore, in order to enable an application to be accepted by the 15 month deadline, a response, which addresses all the objections, should be filed no later than 3 weeks before the deadline.

If the examiner is of the view that a response, filed on behalf of an applicant, does not adequately address all of the objections, the examiner may issue a further report maintaining some or all of the objections from the earlier report. Indeed, several such subsequent reports may issue from the examiner. If, however, the examiner is of the view, that there are no prospects that any further submissions or evidence filed in support of the application will change the examiner's position, the examiner will typically indicate to the applicant that a hearing should be requested and any further proposed submissions should be made at the hearing. Section 33(4) specifies that the Registrar may not reject an application without giving the applicant an opportunity of being heard (see 'Decisions and Hearings' below)

Extensions of Time for Prosecution of Applications

In some cases, an application may not be able to be placed in order for acceptance within the abovementioned 15 month period and some further time may be required. For the first 6 months following this period (i.e. up to 21 months from the initial adverse report), it is easy to obtain extensions of time. In this ‘easy’ 6 month period, extensions of up to 3 months at a time, are readily granted upon written request and the payment of the applicable official fee. The official fee is based upon the number of months (or part thereof) by which the period needs to be extended. No grounds or reasons need to be provided to justify the extension.

However, after 21 months from the date of the initial adverse report, extensions of time are much more difficult to obtain. After this time, the acceptance deadline may only be extended under the provisions of section 224 of the TM Act. Except for extensions available because of an error or omission by the Registrar, the applicant will need to show that the application could not be placed in order for extension because:

• of an error or omission (by the applicant or by his or her agent);
• of circumstances beyond the control of the person concerned; or
• special circumstances exist that justify an extension
  (s.224(2), (3))

An application for extension of time under s.224 requires: a written request in an approved form; payment of the relevant official fee; and a statutory declaration setting out the facts upon which the grounds specified in the application for an extension of time are based (r.21.25). This declaration will be considered by the Registrar, who has the discretion not to extend the time, if he or she does not consider the reasons for the application for extension of time to be sufficient.

Belated Applications for Extensions of Time

In order to obtain an extension of time for the ‘easy’ 6 month period, it is necessary that the application for the extension be filed (with the fee paid) before expiry of the 15 month acceptance period (or any previously granted extension of this period). Although s.224(4) provides that the date of acceptance for an application may be extended either before or after the time has expired, if the deadline is missed and the application is filed after expiry of the relevant period, the application for extension of time will need to be made under the more onerous requirements of s.224(2) or s.224(3). Such a belated application will require the provision of a statutory declaration setting out the reasons why the application was not filed within the relevant period. These reasons will need to show that there has been some error or omission or some ‘special circumstances’ (as required by subs.224(2) or (3)).

If an application for extension of time is filed belatedly (i.e. after expiry of the relevant period) seeking an extension of time beyond the ‘easy’ 6 month period (that is, beyond the 21 month date from the issue of the first report), the statutory declaration will need to:

• (a) provide reasons explaining why the application was not filed in time, so as to establish that there has been some error or omission or some ‘special circumstances’; and
• (b) provide reasons justifying why an extension of time beyond the ‘easy’ 6 months is justified.

Deferment of Acceptance

The acceptance of an application may be deferred in certain circumstances (s.36). The circumstances in which the acceptance of an application may be deferred are set out in r.4.13 of the TM Act. A common circumstance in which deferment is requested is where an earlier application has been cited against the subject application and the applicant is awaiting the outcome of the cited application. Deferment is also sometimes requested where an earlier application or registration has been cited against the subject application and the applicant is attempting to establish the registrability of the subject application on the basis of ‘honest concurrent use’ or ‘prior continuous use’. Another situation in which deferment is sometimes requested is where a registered trade mark has been cited as an obstacle to registration of an applicant’s trade mark and the applicant has commenced proceedings for removal of the cited registration on the basis of non-use (under s.92 of the TM Act). If the cited application does not proceed to registration or the cited registration is removed from the Register, the objections based on these would be withdrawn. Conversely, if the cited application proceeds to registration or the cited registration survives the removal action, the relevant objections will be maintained and will need to be addressed in appropriate ways.

An application for deferment must be made within the period before lapsing of an application, being the 15 month period after issue of the first examination report. An extension of time may be applied for under section 224 to extend that period for the purpose of requesting deferment.

The period of deferment will generally not be a fixed period and will depend on the ground for the deferment, as set out in r.4.14. For instance, if deferment is based on a cited pending application and the applicant (of the deferred application) is awaiting the outcome of the earlier application, the deferment period will terminate after the earlier application lapses, is withdrawn, is rejected or is registered. Where deferment is based on there being a cited registration in respect of which the applicant has brought a non-use removal action, the deferment period will end once the non-use removal action has been finalised.

The deferment will be terminated after the outcome of the cited application/registration is known. After termination of deferment, the amount of time that is left of the period for acceptance will be the amount of time that was left at the date the request for deferment of acceptance was filed. Therefore, if there are grounds on which an application may deferred, it will generally be prudent to request deferment at an early stage so that, following termination of deferment, there may still be ample time to deal with all remaining objections.

If deferment is obtained (for example due to any earlier pending application), an applicant may still respond to any of the examiner’s objections during the period of deferment. If, therefore, there are other objections, such as to the scope or classification of the statements of goods or services, these can be addressed so that, once deferment is terminated, the application can proceed to acceptance or, at least, less time will be required to address any remaining issues.

There are also some very limited situations in which the Registrar may, on his or her initiative, defer the acceptance of a trade mark (see r.4.13(2)) but these are rarely implemented.

Expedited Examination

If an applicant has good commercial reasons for requiring early examination of the application, expedited examination may be requested. For instance, expedited examination may be sought in situations where:

• the applicant is in real fear that its trade mark is being infringed or may be infringed by another trader; or
• the applicant has invested in advertising and/or manufacturing and requires registration of its trade mark at the earliest date possible so as to put its investment in as little risk as possible. (See Examiner’s Manual, Part 6.1)

Another sound reason may be that an applicant is proposing to use the subject trade mark application as a basis for a subsequent international trade mark application, under the Madrid Protocol (see below under ‘Foreign Trade Mark Protection’). The survival of a Madrid Protocol application/registration is (for the first 5 years of its existence) entirely dependant on the survival of the Australian application/registration on which it is based. Also, a Madrid Protocol application is able to claim the benefit of the Australian filing date (under the Paris Convention) if it is filed within 6 months of the corresponding Australian application. Therefore, before filing such an application (which can be relatively expensive), an applicant will often wish to have an indication from the Trade Marks Office that the Australian application on which it is based is acceptable for registration. If expedited examination is requested, it is possible for the applicant to receive any adverse report and respond to any objections, so as to place the application in order for acceptance, before expiry of this 6 month period.

There is no official fee for a request for expedited examination. However, such a request needs to be made in writing and must include a statutory declaration setting out the reasons for the request (r.4.18).

A request for expedited examination may be made at the time of filing the application or any time prior to examination.

Substantive Examination

Examination of a trade mark application involves an examiner of the Trade Marks Office considering whether the application has been made in accordance with the TM Act and whether there are any grounds under the Act for rejecting it (s.31). The grounds on which an application may be rejected are set out in Part 4, Division 2 of the TM Act.

There is a presumption in favour of registrability of a trade mark and, therefore, an application must be accepted unless the application has not been made in accordance with the TM Act or there are grounds for rejecting the application (s.32).

Examination generally occurs within 3 to 6 months of the filing of a trade mark application. As noted above, if there are sound commercial or legal reasons for having examination occur sooner, a request for expedited examination may be filed.

If the examiner determines that the application is fully compliant with the TM Act and there are no grounds for rejecting it, the application will be accepted (s.33). If however the examiner determines otherwise, an examination report will issue setting out the grounds on which the application may be rejected.

The various grounds for rejection (under Part 4, Division 2 of the TM Act) are set out and discussed below.

Trade mark containing etc. certain signs (s.39)

As noted above, certain signs are prohibited from registration, such as the words, ‘Patent’, ‘Copyright’, ‘Returned Soldier’ and ‘Olympic Champion’ and representations of the Arms, or of a flag or seal, of the Commonwealth or of a State or Territory (s.39(2); r.4.15 and Schedule 2 of the TM Regulations).

Trade mark that cannot be represented graphically (s.40)

A trade mark application for a sign which cannot be represented graphically must be rejected (s.40).

Trade mark not distinguishing applicant’s goods or services (s.41)

A trade mark application will be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services, in respect of which the trade mark is sought to be registered, from the goods or services of other persons (s.41(2)). Lack of distinctiveness or capacity to distinguish is a very common objection raised by the Trade Marks Office in relation to trade mark applications.

A trade mark’s capacity to distinguish (i.e. its distinctiveness) is a fundamental feature of a registrable trade mark. A trade mark which lacks any capacity to distinguish will generally not be registrable. A trade mark which has a strong capacity to distinguish (i.e. a mark which is inherently distinctive) will generally qualify for registration (under s.41). As a general rule, the greater a trade mark’s capacity to distinguish particular goods or services, the greater will be the prospects of the trade mark being registrable in respect of those goods or services (provided of course that all other applicable requirements are also satisfied).

Under s.41, the primary consideration involves an assessment of the extent to which the trade mark is inherently adapted to distinguish the applicant's goods and/or services from those of other traders (s.41(3)). Some trade marks, which are highly distinctive (or unusual) in relation to the relevant goods or services, are clearly prima facie adapted to distinguish and these will not attract any objection under s.41.

Some other trade marks have very little or no inherent capacity to distinguish a person’s goods or services (such as a mark which is entirely descriptive of the relevant goods or services). These trade marks may not be registrable or, at least, will be very difficult to register.

However, many trade marks will fall between these two extremes and will have some degree of inherent capacity to distinguish the goods or services of one trader from those of another, even though the trade mark may convey some meaning in relation to a characteristic or quality of the goods or services.

Other than applications for trade marks which are prima facie inherently adapted to distinguish, it will often be necessary to prove to the Trade Marks Office that, even though a trade mark may lack sufficient inherent distinctiveness to qualify for registration (on this basis), the trade mark has become distinctive and therefore does in fact distinguish the applicant’s goods or services. Such acquired distinctiveness may arise through substantial use of the trade mark sufficient for the mark to have developed a reputation in relation to the relevant goods or services.

The essential test for determining the registrability of a trade mark under s.41 is whether the subject trade mark is capable of distinguishing the applicant's goods or services from those of other persons (s.41(2)). When considering a trade mark's capacity to distinguish, the Registrar adopts a two step process (as is required by the TM Act). The first step involves a consideration of the trade mark's inherent capacity to distinguish the relevant goods or services (s.41(3)). The second step requires an assessment of the extent to which the trade mark does in fact distinguish the goods or services, for instance as a result of substantial use of the trade mark (i.e. acquired distinctiveness) (ss.41(5) and (6)). As will be appreciated, this second step can only be taken following the submission, by the applicant, of evidence of use of the trade mark (and other relevant circumstances).

Inherent Distinctiveness

If a trade mark is inherently adapted to distinguish the applicant's goods or services from those of other persons, then no ground of objection exists under s.41.

Examples of such trade marks include most invented words, words having no descriptive or laudatory connotations whatsoever in relation to the relevant goods or services, distinctive logos and words represented in a highly stylised fashion.

A trade mark's inherent capacity to distinguish is a quality which is inherent in the trade mark itself and not something which can be acquired (e.g. through use) (see Gibbs J in Clark Equipment Co. v. Registrar of Trade Marks (1964) 111 CLR 511). One of the earlier and often repeated tests for determining whether a trade mark has inherent capacity to distinguish (i.e. inherent distinctiveness) is set out in Registrar of Trade Marks v. W. and G. Du Cros Ltd (1913) AC 624 in which Lord Parker stated:

"The applicant's chance of success in this respect ... must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods."

This statement has been endorsed in many subsequent Australian cases, including Clark Equipment Co. v. Registrar of Trade Marks, F. H. Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537, and Blount Inc v Registrar of Trade Marks, (1998) 40 IPR 498. In F. H. Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd., Kitto J (of the High Court) summarised the relevant test as follows:

"The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods."

Acquired Distinctiveness

If, following a consideration of the trade mark's inherent capacity to distinguish the relevant goods or services, the Registrar is unable to determine whether the trade mark is capable of distinguishing, subsections 41(5) and (6) then apply.

Subsection 41(5) applies where the trade mark is regarded as being, to some extent, inherently adapted to distinguish the applicant's goods or services from those of other traders.

Subsection 41(6) applies where the trade mark is regarded as not being, to any extent, inherently adapted to distinguish the applicant’s goods or services. The note (Note 1) which appears in the TM Act following s.41(6) states that:

“trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate: a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of goods or services; or b) the time of production of goods or of the rendering of services”.

Examples of trade marks which may be regarded as totally lacking any inherent capacity to distinguish include: words which are entirely descriptive of the relevant goods or services (such as 'footwear' for shoes); common surnames (such as ‘Smith’, ‘Jones’); and geographical names of places which are large towns, cities or countries and/or which are locations from which the relevant goods (or services) are commonly sourced (e.g. 'Tasmania' for apples).

When s.41(5) applies, the next step is for the Registrar to consider whether, because of the combined effect of the following:

• (i) the extent to which the trade mark is inherently adapted to distinguish the applicant's goods or services;
• (ii) the use, or intended use, of the trade mark by the applicant;
• (iii) any other circumstances;

the trade mark does or will distinguish the applicant's goods or services as being those of the applicant.

If the Registrar is then satisfied that the trade mark does or will distinguish the applicant's goods or services, the trade mark will be taken to be capable of distinguishing the applicant's goods or services from those of other persons and no ground for rejection under s.41 will apply. If the Registrar is not so satisfied, the trade mark will be taken as not being capable of distinguishing the applicant's goods or services and a s.41 ground of rejection will apply.

When s.41(6) is applicable, the next step is for the Registrar to consider whether the applicant has been able to establish that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the applicant's goods or services as being those of the applicant. If the applicant is able to establish this, the trade mark will be taken to be capable of distinguishing the relevant goods or services and no ground for rejection will exist under s.41. Otherwise, the trade mark is taken not to be capable of distinguishing the applicant's goods or services and, therefore, the trade mark application will not meet the requirements of s.41.

In order to meet the requirements of s.41(5), the applicant will need to lodge evidence in relation to: the history, nature and extent of use of the relevant trade mark; the nature and extent of any proposed use of the trade mark (e.g. if not yet used); and any other circumstances which may be relevant to the mark's capacity to become distinctive of the relevant goods or services. Evidence of use of the trade mark subsequent to the filing date of the relevant trade mark application may be relied upon under s.41(5). If the applicant is able to establish that the trade mark does or will distinguish the applicant's goods or services from those of other traders, no ground for rejection will apply under s.41.

In relation to s.41(6), the evidence must relate to actual use of the trade mark and be sufficient to establish that, in the minds of members of the relevant purchasing public, the trade mark did distinguish the applicant’s goods or services as at the filing date of the application. Consequently, evidence of use of the trade mark which occurred before the filing date of the application will be necessary. Generally, evidence of extensive use of the trade mark will be required in order to overcome an objection under s.41(6). Also, it will often be necessary to submit independent corroborating evidence supporting the assertions made in the applicant’s own evidence. Such corroborating evidence may be from experienced persons in the relevant industry (e.g. experienced wholesalers or retailers, industry representatives, experts in the field etc.) confirming that, as a result of the applicant’s use of the trade mark, purchasers of the relevant goods or services generally associate the trade mark with the applicant. Also, the evidence should include (where available) relevant documentary evidence, such as copies of published advertisements, newspaper/magazine articles and the like. The ground for rejection under s.41(6) will be maintained unless the applicant establishes that, as a result of such extensive use, the trade mark does in fact distinguish the applicant's goods or services.

The burden of proof, under s.41, is upon the applicant to satisfy the Registrar that the trade mark does have sufficient capacity to distinguish the applicant's goods or services from those of other traders (see Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498). This burden of proof requires the applicant to satisfy the Registrar of the abovementioned matters 'on the balance of probabilities' (see Rejfek v McElroy (1965) 112 CLR 517; at 521).

The following discussion is included in order to provide some illustrations of the above principles (concerning s.41) in relation to various common categories of trade marks. Further information in relation to these (and other) categories of trade marks can be found in Part 22 of the Examiner’s Manual.

Letters and Numerals

Trade marks comprising letters and/or numerals are commonly used to indicate quantity, quality, model numbers, batch numbers, date of manufacture, size, classification or other features of goods or services. Accordingly, such letters and numerals may be the sorts of marks which other traders may wish to use, without any improper motive, in relation to their goods or services. The Trade Marks Office has established certain guidelines in relation to the registrability of these types of trade marks.

One Letter Marks

Trade marks consisting of a single letter are generally regarded as being incapable of distinguishing an applicant's goods or services and, therefore, unregistrable under s.41.

Two Letter Marks

Trade marks consisting of two letters will generally be regarded as having sufficient capacity to distinguish if there is no descriptive significance in the letters and any one of the following applies:

• the relevant goods or services are narrow in scope;
• the relevant goods or services are of a specialised nature;
• the combination comprising the mark is a comparatively unusual one (e.g. involving the letters X, Y, Z or U).

If a two letter combination is commonly used in a particular industry (e.g. IT in relation to computers and information technology), a trade mark consisting of this combination will generally be regarded as unregistrable in respect of any goods or services in the relevant industry. Similarly, if a two letter mark forms a word which has descriptive connotations in relation to the relevant goods or services, this may also impact upon the trade mark's capacity to distinguish.

Three (or more) Letter Marks

Trade marks consisting of three or more letters are generally regarded as inherently adapted to distinguish an applicant's goods or services. However, if the combination of letters forms a common abbreviation, acronym or word, which has descriptive or laudatory connotations in relation to the relevant goods or services (e.g. BYO in relation to restaurant services), the trade mark may be regarded as lacking inherent capacity to distinguish and a ground for rejection under s.41 may exist.

Numerals

Numerals and combinations of numerals generally do not have sufficient inherent capacity to distinguish goods or services so as to qualify for registration.

Combinations of Letters and Numerals

Trade marks which consist of a combination of letters and numerals will typically be regarded as inherently adapted to distinguish an applicant’s goods or services. If, however, the relevant combination has any descriptive or laudatory connotations or is otherwise likely to indicate size, date, quantity, time, power, speed, strength or other such characteristic, in relation to the relevant goods or services, a ground for rejection under s.41 is likely to arise. Examples of trade marks which may be objectionable on this basis include: 41R for shirts (being a size of clothing); 1600W for coffee machines (being a common wattage for such devices); or 10 GB for computer disks (being a memory size for such disks).

Foreign Language Words

Australia is becoming an increasingly cosmopolitan society with many people having immigrated from non-English speaking backgrounds. Therefore, amongst the purchasing public in Australia, there is a reasonable knowledge of a number of different foreign languages or, at least, there are significant numbers of people who are familiar with various foreign languages. Therefore, the same principles which apply in relation to English language word marks will often also apply in relation to trade marks in foreign languages. This is more likely to be the case in relation to languages which are relatively common, or commonly understood, in Australia than languages which are quite rare or obscure.

Therefore, in respect of a word mark in a relatively common or well-known foreign language (such as French or Vietnamese), if the mark would have given rise to an objection under s.41 if it had been in English, the objection is also likely to apply to the mark in the foreign language.

If, however, the trade mark is a word in a language which is not commonly understood in Australia, then it is less likely that a ground for rejection under s.41 will arise.

Geographical Names

Trade marks consisting of geographical names which are the names of large or well-known towns, cities or regions (particularly if these are areas from which the relevant goods or services are typically obtained) will generally not be inherently capable of distinguishing the relevant goods or services. For instance, the words, 'Paris', 'Sydney' and 'United Kingdom' would generally not have any capacity to distinguish an applicant's goods or services.

If there is likely to be a connection between the goods and the relevant geographical location, a trade mark application for the relevant geographical word will generally lack inherent distinctiveness and a ground of rejection under s.41 will apply. For instance, a term like 'Pokolbin' (a wine growing area in the Hunter Valley) would not be capable of distinguishing the wines of any one trader and a s.41 objection would arise, even though the particular area may not be particularly well known.

It will be apparent that some geographical words have no descriptive or laudatory connotations in relation to the relevant goods or services and no physical connection with them. Examples of such trade marks would include: Mt Everest (in relation to snorkling equipment); and 'South Pole' in relation to bananas. Such trade marks would be capable of distinguishing the relevant goods or services and no objection under s.41 should arise.

Surnames and Personal Names

Common surnames (e.g. 'Smith' or 'Jones') do not generally have any inherent capacity to distinguish an applicant's goods or services. On the other hand, rare or unusual surnames may have the requisite capacity to distinguish. The Trade Marks Office has established guidelines for determining whether or not a surname has sufficient capacity to distinguish based upon the number of times the particular name appears in the Search For Australian Surnames (SFAS) which is accessible through the website of IP Australia.

The official guidelines are summarised below:

• a surname which appears in the SFAS more than 750 times will generally give rise to an objection under s.41
• a surname which appears in the SFAS less than 750 times will generally not give rise to an objection under s.41

However, these are guidelines only and other factors may need to be considered. If, for instance, the name appears more than 750 times in the SFAS, but the goods or services covered by the application are unusual or expensive (e.g. locomotive engines), the trade mark may be regarded as capable of distinguishing the relevant goods or services. Also, if the name appears less than 750 times but the goods or services specified in the application are commonplace (e.g. T-shirts), a ground for rejection under s.41 may be raised.

The registrability of a surname, under s.41, will generally not be affected by representing the name in the possessive or plural form.

Some surnames are also English words having known meanings. If any such surname has a recognised meaning which is descriptive or laudatory of the relevant goods or services, a ground for rejection under s. 41 will generally be raised on this basis. An example of this may be the name 'Luck' in relation to gambling services.

A trade mark consisting of a combination of two surnames (even if they are common surnames or each surname is descriptive or laudatory of the goods or services) will generally be regarded as being inherently distinctive, as the likelihood of another trader wishing to use the same combination of surnames is relatively low.

A trade mark consisting of a common surname together with a common initial (e.g. J. Johnston) is likely to give rise to an objection under s.41. There is less likelihood of such an objection arising where the initial is uncommon (e.g. X. Davis; or Z. Hunt). Also, if the surname is accompanied by two initials, this is also less likely to prompt a s.41 objection than if only a single initial had been present.

Similarly, a trade mark which comprises a surname together with a given name is more likely to succeed than a trade mark comprising only the surname. Generally, the name of a person will be regarded as capable of distinguishing unless the name as a whole is common (e.g. Michael Jones) and the goods or services are commonplace (e.g. singlets).

Trade mark applications consisting only of a first name are considered in a somewhat similar way to surnames. Less common names will have greater prospects of achieving registration than names which are common. Also, the registrability prospects will be improved if the relevant goods of interest are uncommon and/or of very limited scope. If the name is quite common and the goods of the application are commonplace, then a s.41 objection is more likely to arise.

Where a trade mark consists of the name of a famous or well-known person (not being the applicant), this may give rise to some issues under s.41 (and s.43 - see below). For instance, if an author of a biography of a famous person sought to register the name of that person as a trade mark for books (in class 16), this would unfairly inhibit others from publishing books on that person under a title bearing the subject person's name. In such a situation, a s.41 objection is likely to arise.

The signature of an applicant will always be regarded as inherently capable of distinguishing the applicant's goods or services, as a signature is unique to each individual. The Registrar will generally require, in relation to an application for a signature mark, an endorsement such as: "the trade mark consists of the applicant's signature". If the relevant signature is not that of the applicant, but is the signature of a person who has licensed the applicant to use and register it, the Registrar will generally require an endorsement such as "the signature in this trade mark is that of [name] who has consented to its use as a trade mark".

Names of Pharmaceutical Preparations, Veterinary Preparations and Pesticides

Pharmaceutical substances are identified by a unique, universally recognizable name, known as an International Non-Proprietary Name (INN). The INN of a pharmaceutical substance is therefore a generic name for the substance and one which should be available for all interested persons to use in describing or referring to the substance. A search of the current INN list can be made via the Search for Pharmaceutical Names (SFPN) of the IP Australia website. Also, The INN system governs the use of common, descriptive name stems given to families of pharmacologically related substances (e.g. the stem or suffix "astine" for anti-histamine preparations). Accordingly, it would be inappropriate for any one trader to obtain trade mark rights in a name, which is an INN or which consists of an INN stem. The list of INN stems is given in Annex A2 of Part 29 of the Examiner's Manual Therefore, when assessing a trade mark relating to pharmaceutical preparations, the Registrar will have regard to the list of INN names and INN stems and, if the trade mark comprises one of these (or another word which is substantially identical), an objection under s.41 is likely to issue.

Shapes of Products

As noted above, the shape of a product may be registrable as a trade mark. If the trade mark is highly unusual, in relation to the relevant product (e.g. the shape of an insect for confectionery), then the shape may be registrable. If however the shape is relatively common or is dictated largely by functional considerations, the shape is unlikely to have sufficient inherent capacity to distinguish the relevant goods (see Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90; 48 IPR 257).

Trade mark scandalous or its use is contrary to law (s.42)

Section 42 of the TM Act reads as follows:

An application for the registration of a trade mark must be rejected if:

(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.

Scandalous trade marks

In determining what is ‘scandalous’, the Registrar will have regard to how the trade mark is likely to be perceived by the "ordinary" person. If the Registrar determines that a trade mark should be regarded as shameful, offensive or shocking, it is likely to be rejected. Trade marks which are merely in bad taste (but not actually offensive) are unlikely to be regarded as scandalous.

There is relatively little case law on what amounts to a scandalous trade mark and those cases which have dealt with this issue do not give the Registrar much helpful guidance in determining this issue.

In a UK case (Hallelujah Trade Mark [1976] RPC 605), which dealt with the question whether the relevant trade mark was "contrary to morality” (being the applicable test in the UK), the deciding officer stated (at 607):

I conclude that the phrase "contrary to morality" falls to be considered by the generally accepted standards of today and not by those of 1938. The difficulty is to be sure what those are, and more particularly, where the line is to be drawn between marks whose registration is prohibited by the section and those where it is not. When religious and moral standards are changing, sometimes quite rapidly, it seems to me that the Registrar should only follow where others have given a clear lead. While he must not remain isolated from the day-to-day world, frozen in an outmoded set of moral principles, he must equally not presume to set the standard. He must certainly not act as a censor or arbiter of morals, nor yet as a trendsetter. He must not lag so far behind the climate of the time that he appears to be out of touch with reality, but he must at the same time not be so insensitive to public opinion that he accepts for registration a mark which many people would consider offensive.

Similar considerations are relevant to the test whether a particular trade mark is scandalous.

The Trade Mark Examiner’s Manual (at Part 30.2.3) refers to two other decisions (one being a decision of the Australian Registrar of Trade Marks) which offer some further guidance in regard to what constitutes a scandalous trade mark.

The “Mecca” decision, (1955) 25 AOJP 938, states that, in considering this issue, the trade mark:

• should be evaluated in the context of the ordinary people it might offend, and
• only a proportion of Australians need to be offended for grounds for rejection to be raised under this section.

The “Quaker” decision, Ellis & Co’s Trade Mark, (1904) 21 RPC 617, suggests that:

• a “sentimental objection” is not enough for grounds for rejection to be raised under this section; and,
• the standards to be adopted when evaluating grounds for rejection are in how the ordinary person is going to react to the trade mark, whether that person is a Muslim, Christian, Quaker or any other religion, race, or persuasion.

The Examiner’s Manual further states that:

“…the ordinary person should not be credited with either a very thick or very thin skin. But neither should the ordinary person be subjected to gross obscenity or profanity. The Registrar's decision is one which must be made on the merits of each case, taking into account the words or images applied for, the intended market for the goods/services involved and the level of acceptance of the terms within the general population.”

The relevance of the ‘intended market’ helps to explain the acceptance of the trade mark, “FUCKERWARE” in relation to ‘direct marketing and selling of adult products and sex toys via parties’.

The Examiner’s Manual (Part 30.2.6 to 30.2.12) also provides guidance in relation to various categories of trade marks which may be regarded as scandalous. Some examples are given below.

Trade marks which contain obscene and very course language will generally be refused. For instance, trade marks such as FUK M, FUCT or F CK, would be regarded as objectionable, whereas marks such as PHAR QUE, FAR KEW or DR PHUQ may be permissible because the significant differences in spelling (compared to the offensive word) are significant and add an element of humour to the mark. It is also noted that the trade mark, FCUK, in the name of French Connection Limited (of the UK) is registered in Australia (and other countries).

Trade marks which may be regarded as profane or likely to be offensive to a particular religious group, such as a mark appearing to denigrate a religious image, are also likely to be refused.

Trade marks which contain words, images or other elements which appear to condone and/or promote violence, racism, terrorism or sociopathic behaviour will generally be regarded as "scandalous". Trade marks promoting racial vilification, religious intolerance and personal abuse of an individual will generally be regarded in the same way.

An interesting article on ‘scandalous’ trade marks, entitled ‘The Registration of Scandalous Trade Marks’, can be found in the IPSANZ Journal, ‘Intellectual Property Forum’, Issue 72 (pp. 20-31).

Contrary to law

Under s.42, a trade mark will be rejected if the use of the mark would be contrary to law. As the Registrar’s function is administrative, not judicial, the Registrar will generally only raise an objection on this basis in the following situations:

1. where the use of the trade mark will breach one or more statutory provisions of any applicable legislation; or
2. where a court decision has issued on the particular trade mark which establishes the illegality of its use.

In the absence of a court decision on the point, the Registrar will not, for example, have regard to any ‘common law’ rights of another person which might be breached by the use of the relevant trade mark.

Part 30, Annexure A1 of the Examiner’s Manual gives a non-exhaustive list of Australian legislation which contain provisions prohibiting the use of words and signs as trade marks. This list of legislation includes the following:

• Advance Australia Logo Protection Act 1984, section 11
• Australian and Overseas Telecommunications Corporation Act 1991 s15
• ANL Act 1956 s 52
• Australian Wine and Brandy Corporation Act, 1980
• Banking Act 1959, ss 66 and 66A
• Copyright Act 1968
• Defence Act 1903, section 83
• Defence (Prohibited Words and Letters) Regulations 1958, section 2
• Environment Protection and Biodiversity Conservation Act 1999 (Regulation 12.38)
• Flags Act 1953 , section 6
• Geneva Conventions Act 1957, section 15
• International Organizations (Privileges and Immunities) Act 1963 section 12
• National Occupational Health and Safety Commission Act 1985
• National Occupational Health and Safety Commission Regulations, sections 7 & 8
• Olympic Insignia Protection Act 1987, section 19
• Plant Breeder's Rights Act 1994, section 53
• Scout Association Act 1924, sections 2 and 4
• Telecommunications Act 1997, section 417
• Telstra Corporation Act 1991, s15
• Trade Practices Act 1974
• War Precautions Repeal Act 1920 section 22 and Protection of Word 'ANZAC' Regulations, reg 2

Trade mark practitioners should have regard to the above legislation so as to be able to advise clients as to whether a trade mark of interest may breach any provisions of this legislation.

For example, practitioners should be aware that the Geneva Conventions Act 1957 prohibits the use of the terms, ‘Red Cross’, ‘Geneva Cross’ or ‘Red Crescent’. It further prohibits use of the corresponding emblems.

In order to attempt to ensure that members of the public are not misled by unauthorised entities, in the financial services industry, using certain terms to describe themselves, the Banking Act 1959 (see sections 66 and 66A) restricts the use of the following words, letters or expressions in trade marks covering any financial services (in class 36):

• ADI
• AUTHORISED DEPOSIT-TAKING INSTITUTION
• BANK
• BANKER
• BANKING
• BUILDING SOCIETY
• CREDIT SOCIETY
• CREDIT UNION
• FRIENDLY SOCIETY (in relation to the conduct of a financial business)
• Any other word or expression (whether or not in English) that is of like import to a word or expression covered above.

Such words, letters or expressions can generally only be used by entities that have been authorised by the Australian Prudential Regulatory Authority (APRA). Therefore, an application for a trade mark which incorporates any of the above wording will generally need to provide the Registrar with written confirmation demonstrating that it has the consent of APRA to use the relevant wording.

Similarly, there are prohibitions on the use and registration of the term, ANZAC (under the War Precautions Repeal Act 1920) and various ‘defence emblems’ (under the Defence Act 1903).

It may be difficult or impractical for a trade mark examiner to have regard to all potentially relevant law when examining a trade mark application for the purposes of section 42. For example, the use of a particular trade mark may perhaps breach s.52 of the Trade Practices Act 1974, in that it may be likely to mislead or deceive members of the public because of the ‘common law’ reputation of another similar trade mark. An examiner may not be aware of the other trade mark and would not have the information or resources (or the training) to determine whether a breach of s.52 would result from use of the particular trade mark. However, in opposition proceedings, following the lodgement of evidence, the Registrar may be in a position to make a determination in this regard.

Further information in relation to trade marks the use of which would be contrary to law can be found in Part 30.3 of the Examiner’s Manual.

Trade mark likely to deceive or cause confusion (s.43)

Section 43 of the TM Act reads as follows:

"An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion."

The word connotation is taken to refer to the meaning of the trade mark or something which is implicit in the trade mark. The relevant connotation must be something inherent in the trade mark itself and not one which may arise as a result of a comparison with another (similar) earlier registered trade mark in which a reputation may reside (see Big Country Developments Pty Ltd v TGI Friday's Inc 48 IPR 513). Comparisons with other trade marks, which are the subject of earlier applications or registrations, are dealt with under s.44 (see below).

Consequently, the type of deception or confusion contemplated by s.43 is not that which may arise by virtue of the existence of another similar trade mark of another person. Section 43 is concerned with deception or confusion which may, for instance, relate to:

• the character of the goods and/or services including their composition, nature or other properties
• the quality or quantity of the goods and/or services
• the geographical origin of the goods and/or services
• the intended use or purpose of the goods and/or services
• the connection in the mind of the buying public with a person or organisation.
  (see Part 29.3 of the Examiner's Manual)

For s.43 to be invoked, the connotation must be 'likely to deceive or cause confusion'. A mere possibility of confusion will not be sufficient. It has been held that, for there to be a likelihood of deception or confusion, there must be a real and obvious danger of the buying public being deceived and/or confused by the use of the trade mark and that it will be sufficient if the result of the user of the mark will be that a number of persons will be 'caused to wonder' or to 'entertain a reasonable doubt' (see Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which was referred to with approval by French J in Registrar of Trade Marks v Woolworths 45 IPR 411).

Situations in which a s.43 objection may be invoked against a trade mark application would include: where the trade mark connotes that the goods are sourced from a particular location whereas the goods do not in fact emanate from that location; where the trade mark connotes that the goods or services have a particular attribute which they do not in fact possess; or where the trade mark incorporates the name or likeness of a well-known identity whereas that identity has no association with the relevant goods or services.

Objections under s.43 are quite uncommon during the examination stage of a trade mark application. They are more commonly raised in opposition proceedings.

Identical etc. trade marks (s.44)

Section 44 of the TM Act requires that, when assessing the registrability of a trade mark in relation to particular goods or services, the Registrar must have regard to whether the subject trade mark is similar to any other trade marks, which are the subject of earlier trade mark registrations or applications covering similar goods or services. Section 44(1) of the TM Act states that, subject to subsections (3) and (4), an application for the registration of a trade mark, in respect of the applicant's goods or services, must be rejected if:

• (a) the applicant's trade mark is substantially identical with, or deceptively similar to:
  • (i) a trade mark registered by another person in respect of similar goods or closely related services; or
  • (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
• (b) the priority date for the registration of the applicant's trade mark, in respect of the applicant's goods, is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Section 44(2) is in substantially identical terms but it relates to the applicant's services (instead of goods).

Section 44(3) and section 44(4) provide limited exceptions to the above and permit coexisting registrations of similar trade marks (covering similar goods or services). For example, coexisting registrations (under s.44(4) may be permissible where the trade mark of a later filed application has enjoyed a certain degree of uninterrupted use since before the application to register the cited trade mark was filed. (See ‘s.44(3) – Honest Concurrent Use’ and ‘s.44(4) – Prior Continuous Use’ below).

An existing application or registration can only be cited against a trade mark application (under s.44(1) or (2)) if it has an earlier priority than, or the same priority date as, the subject trade mark application.

Existing trade mark registrations which have not been renewed, but are within a six month period following expiry of the renewal deadline, may also be cited as obstacles to registration under s.44. This is because, the TM Act gives the registered owner of an expired trade mark registration the right to restore the registration, provided that the request for restoration is submitted (and the relevant fees paid) within six months of the renewal deadline (s.79). If however the cited (expired) registration is not restored during this period, any objection based upon it will be withdrawn.

It is clear from the wording of s.44(1) and s.44(2), that when considering whether an existing trade mark application or registration constitutes a ground for rejecting a trade mark application (under s.44), there are two comparisons that need to be made, namely:

• (a) a comparison of the respective trade marks; and
• (b) a comparison of the respective goods and/or services.

It is only if, after applying both comparisons, the respective trade marks and the respective goods and/or services are determined to be too similar that a s.44 objection should be raised. Therefore, even if the respective trade marks are identical, if the respective goods and/or services are unrelated (e.g. motor vehicles and confectionery), no s.44 objection should be raised.

Some brief comments in relation to the above two tests are provided below.

Comparison of Trade Marks

A s.44 objection may only be raised if the subject trade mark and the trade mark of an existing application or registration are ‘substantially identical’ or ‘deceptively similar’. These are separate requirements and need to be considered independently.

The TM Act does not provide any definition of the term, ‘substantially identical’. The TM Act does however provide a definition of ‘deceptively similar’ (see s.6 and s.10). According to this definition, a trade mark is ‘deceptively similar’ to another trade mark “if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion” (s.10).

The different tests to apply when determining whether two trade marks are ‘substantially identical’ or ‘deceptively similar’ were set out by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415.

In relation to ‘substantial identity', Winderyer J. stated:

“In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.”

In relation ‘deceptive similarity’, his Honour stated:

“On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity…. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [use of the trade mark].”

In determining whether two trade marks are ‘deceptively similar’ further guidance is provided by the judgement of Mr Justice Parker in Pianotist Co.'s Application (23 RPC 774, at 777) where, in relation to a comparison of two word marks (‘Pianola’ and ‘Neola’) the relevant principles were summarised as follows:

“You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case.”

The above tests still form the basis of any comparison of trade marks under s.44.

Therefore, the analysis can be regarded as a two-step process. Firstly, regard is had to whether the trade marks are substantially identical. If they are, it may not be necessary to consider whether they are ‘deceptively similar’. (It is apparent that if two trade marks are substantially identical, then they will, almost certainly, also be deceptively similar). If the respective trade marks are not substantially identical, then it will be necessary to consider whether they are deceptively similar.

In practice, it is generally appropriate just to consider this latter question of ‘deceptive similarity’ without any separate consideration of whether the respective trade marks are deceptively similar. This is because, if two trade marks are deceptively similar, it is then unnecessary to consider whether they also meet the tougher standard of being substantially identical.

In Shell v Esso, Windeyer J stated that, when considering whether trade marks are deceptively similar, the trade marks are not compared side by side. The test essentially comes down to the impression (or recollection) left by the marks in the minds of the purchasing public. In determining the likely impression of the respective trade marks, regard needs to be had to: the similarity of the marks (in sound and/or appearance); the goods or services in respect of which the marks may be used; the nature and kind of customers of these goods or services; and other surrounding circumstances (per Pianotist Co’s Application).

Subsequent case law has expanded on the relevant considerations which need to be applied when determining whether two trade marks are deceptively similar.

A helpful summary of the principles of comparison of trade marks, for the purposes of considering ‘deceptive similarity’ (particularly in relation to word marks) was set out, in bullet point form, in the decision of Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901, as follows:

• The two words are considered by look and by sound but not side by side. An attempt must be made to estimate the effect or impression produced on and retained by customers and potential customers (Shell at 415; Woollen Mills at 658).
• What is to be compared with one mark is the impression based on recollection of the other mark that persons of ordinary intelligence and memory would have (Shell at 415; MID Sydney Pty Ltd v Australian Tourism Co Limited (1998) 90 FCR 236 (`MID Sydney') at 245).
• Consideration is given to the goods to which the marks are to be applied and the nature of the customer, as well as all the surrounding circumstances when the marks are used in a normal way as a trade mark (Pianotist at 777).
• In considering the look and sound of the marks, the goods, the customers and all the surrounding circumstances, it is also important to look at the whole of the marks (Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 395).
• If a mark in fact or by its nature is likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected (Woollen Mills at 658).
• The question is whether there will be confusion in the mind of the public which will lead to confusion in the goods (Pianotist at 777); 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 (Southern Cross at 595 and 608). This involves estimating the effect or impression produced on the mind of potential customers (Woollen Mills at 658).
• Deceptiveness must result from similarity; a likelihood of deception is judged by the effect of the similarity in all of the circumstances (Shell at 416).
• It is not necessary to prove actual probability of deception leading to a passing off but mere possibility of confusion is not enough; there must be a real, tangible danger of it occurring (Southern Cross at 595). The court would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration (Woolworths at 381).
• When the sounds of two words are being compared, it is generally a matter of first impression, because a person familiar with the two words will be neither deceived nor confused. It is not a question of meticulous comparison and allowance must be made for imperfect recollection and bad or careless pronunciation (Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467 (`Aristoc') at 472).
• In making an aural comparison, one has regard to what appears to be the natural and ordinary pronunciation, although evidence is admissible to establish a pronunciation that departs from the normal fashion, such as evidence of those in the trade or consumers (Wingate Marketing Pty Ltd v Levi Strauss (1994) 49 FCR 89 at 129 per Gummow J; Pacific Publications Pty Ltd v IPC Media Pty Ltd (2003) 57 IPR 28 at 56).
• The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them and a proprietor of a mark is not entitled to a complete monopoly of all words conveying the same idea as that mark (Cooper Engineering at 539). This fact can, however, be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive (Cooper Engineering at 539). The presence of a common idea may be a determining factor because the idea is more likely to be recalled than the precise details of the mark (Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 (`Jafferjee') at 121-2) but the suggestion of differing ideas may serve to reduce the risk of confusion (Johnson & Johnson v Kalnin (1993) 26 IPR 435 (`Johnson & Johnson') at 440). The idea that is relevant is the idea that the mark will naturally suggest to the mind of one who sees it (Jafferjee at 121).
• Where an element of a trade mark has a degree of notoriety or familiarity, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. The question of resemblance is about how the mark is perceived (Woolworths at 386).
• It is sufficient if persons who only know one of the marks and have perhaps an imperfect recollection of it are likely to be deceived (Cooper Engineering at 538; Aristoc at 472).
• Consideration must be given to all goods or classes of goods in respect of which registration is desired (Pianotist at 777-778).
• The comparison is between marks, not uses of marks, although use is not irrelevant as a circumstance. The consideration is not only actual use but also the extent of the statutory monopoly by reference to the full extent of the goods or services in respect of which the mark is registered (MID Sydney at 245).
• Onus of proving that there is or is not a reasonable probability of deception may be a deciding factor (eg Aristoc).

The Examiner’s Manual (in Part 26.6) also provides helpful guidelines in respect of some of the different considerations to apply when comparing trade marks for the purposes of s.44. A brief summary of these considerations is provided below.

• (a) Sound and appearance
  It has been said that the first syllable in a word mark is generally the most important and carries the most emphasis (see the judgement of Sargant LJ in the “Tripcastroid” case, 42 RPC 264 at page 279, line 30). Although this may still be a relevant factor in relation to products or services which are procured over the phone or pursuant to oral communications, modern purchasing habits tend to focus more on the visual appearance of brands, for instance, when shopping in a supermarket or when purchasing clothes (see the Hearing Officer’s decision in Giorgio Armani S.p.A v Tiawan Yamani, 17 IPR 92).
• (b) Imperfect recollection
  The importance of the impression left by the respective trade marks was highlighted in Shell v Esso (see above). Therefore, the recollection (which will often be imperfect) of a person seeing the relevant trade marks will be very important. For instance, in Aristoc Ltd v Rysta Ltd, the House of Lords stated:
  “…obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.” (see, 60 RPC 87 at page 108)
  However, in the same case it was noted that:
  “The doctrine of imperfect recollection must not be carried too far. In considering its application not only must the class of person likely to be affected be considered, but no more than ordinary possibilities of bad elocution, careless hearing or defective memory ought to be assumed.” (see, 60 RPC 87 at page 105)
• (c) The ‘idea’ (or concept) of the mark
  Even though two trade marks may have several distinguishing features, if they convey the same or a similar idea or concept, it might be this idea or concept which fixes in the recollection of consumers. In such a situation, the distinguishing features may not be sufficient to avoid the risk of deception or confusion. See: Jafferjee v. Scarlett, 57 CLR 115; and Dial An Angel Pty Ltd v Sagitaur Services Systems Pty Ltd (1990) AIPC 90-687.
• (d) Marks which contain another mark
  Where a trade mark application is for a mark which includes an element which is already separately registered (or the subject of an earlier application), this may give rise to a risk of deception or confusion. For instance, a person familiar with a particular brand (e.g. ZEBRA in relation to clothing) may perceive a trade mark which includes this mark (e.g. JUNIOR ZEBRA) as an extension of this brand onto children’s clothing.
  
  See also the cases of Enoch’s Application, (1947) 64 RPC 11 and Darwin’s Application, (1946) 63 RPC 1. In Enoch’s Application, the respective marks, VIVICILLIN and CYLLIN were held not to be deceptively similar. A similar result was achieved in Darwin’s Application which involved the marks MOREX and REX.
• (e) Marks with a degree of notoriety or familiarity
  Where a trade mark includes an element which is so closely associated with an applicant that most members of the purchasing public will unquestionably associate this element with the applicant, then even if the applicant’s trade mark incorporates another element which may be the same as or very similar to an earlier cited trade mark, the applicant’s mark may still be able to proceed to registration. For instance, in Registrar of Trade Marks v Woolworths Limited, 45 IPR 411, where the marks under comparison were, METRO (being the earlier registered mark) and WOOLWORTHS METRO, it was held that there was no real likelihood of deception or confusion because of the inclusion of the word WOOLWORTHS in the applicant’s trade mark.
• (f) Invented words
  It has been held that consumers are less likely to be confused between two known English words than is the case where the respective words are both invented words (see “Erectiko” case, 52 RPC 136 at p. 153)
• (g) Descriptiveness of the relevant words
  If a trade mark contains descriptive (or other non-distinctive) elements, consumers are less likely to regard these elements as having any ‘trade mark’ function. Therefore, if the only differences between two trade marks are elements which can be considered descriptive (or otherwise non-distinctive), these elements should generally be discounted when comparing the two trade marks.
• (h) Nature and type of customers
  In determining whether there is a likelihood of deception or confusion, regard should be had to the target customers. In Australian Woollen Mills Ltd v F. S. Walton & Co Ltd, 58 CLR 641 at 658, Dixon and McTiernan JJ made the following observations in this regard:
• “The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.
• (i) Nature and type of goods and/or services
  The nature and type of goods (or services) is a very relevant factor when considering the likelihood of deception or confusion. For instance, in respect of goods or services which are specialised or expensive, consumers can be expected to take more care in selecting those goods or services than is the case in respect of more commonplace and/or cheap goods or services, such as those typically purchased off supermarket shelves. (See: The “Andramine” case, AOJP Vol 31, No 36, p 2218; Pears Ltd v. The Pearson Soap Co. Ltd, 37 CLR 340; Lever Bros v. Abrams, 8 CLR 609; and Jafferjee v. Scarlett, 57 CLR 115).
• (j) Trade marks in a foreign language
  Where the two trade marks under comparison are either two foreign language trade marks or an English and a non-English mark, the applicable tests for determining whether the marks are deceptively similar are the same as those set out above. This is the case regardless of whether the trade marks are represented in Roman characters or some other form of script. However, the Examiner’s Manual notes that:
  
  ‘in general, except where the words are visually or aurally similar, the English equivalent of a foreign language trade mark will not be cited as the basis for rejecting an application under section 44. For example, RED MAN will not be cited against ROUGE HOMME or the Chinese or Arabic characters meaning “red man”’.

Comparison of Goods/Services

As noted above, s.44 requires comparisons to be made of respective trade marks (see above) and respective goods/services. Where the subject trade mark is substantially identical with or deceptively similar to the trade mark of an existing registration or application, a s.44 objection is only warranted where the goods and/or services of the respective trade marks are similar or closely related.

The determining factor is whether the respective goods or services covered by the two trade marks under consideration include goods which are similar, services which are similar or goods and services which are closely related.

Similar goods; similar services

The TM Act contains definitions of the terms ‘similar goods’ and ‘similar services’. These definitions are set out below (see s.6; s.14). Section 14(1) states that:

• “goods are similar to other goods:
• (a) if they are the same as the other goods; or
• (b) if they are of the same description as that of the other goods."

Section 14(2), is substantially identical but in respect of services, stating that:

• “services are similar to other services:
• (a) if they are the same as the other services; or
• (b) if they are of the same description as that of the other services."

There is no definition of the terms, ‘closely related goods’ or ‘closely related services’ (which also appear in s.44).

The criteria to apply when determining whether an applicant’s goods (or services) are similar to other goods (or services) have been provided in a number of cases. The basic criteria to consider were set out as follows by Romer J in Jellinek's Application, 63 RPC 59:

• the nature of the goods;
• the respective uses of the goods;
• the trade channels through which the goods are respectively bought and sold.

This list of criteria is not conclusive and other factors may also be relevant. For instance, it was stated, in Beck, Koller & Company's Application, 64 RPC 76 (at 78), that the relevant criteria to consider are:

• the nature and characteristics of the goods;
• the origin of the goods;
• the purpose of the goods;
• whether the goods are usually produced by one and the same manufacturer;
• whether the goods are distributed by the same wholesale houses;
• whether the goods are sold in the same shops, over the same counter, during the same season and to the same class or classes of customer;
• whether those engaged in the manufacture and distribution of the goods are regarded as belonging to the same trade.

The above lists of relevant criteria to consider in determining whether goods are similar have been approved and adopted in many subsequent cases, including: John Crowther & Sons (Milnsbridge) Ltd's Appln (1948) 65 RPC 369 at 372; Southern Cross Refrigerating Co. v Toowoomba Foundry Ltd (1954) 91 CLR 592 (at 606); and Reckitt & Coleman (Aust) Ltd v Boden (1945)70 CLR 84 (at 94)

By way of example, and adopting the above criteria, sports clothing will generally be regarded as similar to sports footwear because it has become common for the providers of sports footwear also to provide sports clothing (e.g. Nike, Adidas etc). However, casual shoes and evening gowns are not likely to be regarded as similar. Wines would be likely to be regarded as similar to ports but beer may not be considered similar to wine.

Although the abovementioned cases, in which the relevant criteria were established, related to trade marks covering goods, it is accepted in Australia that substantially the same criteria apply in relation to services (see the Examiner’s Manual, Part 26.4.2).

Closely related goods (or services)

As noted above, the TM Act does not provide any definition of when services are ‘closely related’ to goods (and vice versa). Also, there is not a great deal of case law in which the meaning or scope of the term ‘closely related services’ (or ‘closely related goods’) has been considered. Nevertheless, some guidance can be found in a small number of relatively recent cases.

For instance, in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 1 IPR 265, the following observations were made by the Federal Court in relation to certain types of goods and services which might be regarded as being closely related:

“Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.”

In a more recent decision, Registrar of Trade Marks v. Woolworths (1999) 93 FCR 365 at 378 (the ‘Metro’ case), French J stated in relation to the relationship between goods and services:

“The relationship may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them.”

As a general guide, services and goods may be considered closely related if the services are performed upon or by means of the goods (see Trade Marks Examiners’ Manual, Part 26.4.5). Accordingly, television repair services are likely to be regarded as being closely related to televisions. Similarly, boat building services and boats are likely to be regarded as closely related.

Sometimes, but not always, certain goods and retail (or wholesale) services in respect of those goods will be regarded as closely related. Some guidance in this regard is provided in the Trade Marks Examiners’ Manual (see Part 26.4.4). For instance, the Manual includes the following comments:

“It is now considered that while there may be an overlap at some points between retailing services and goods sold in a retail outlet the overlap is not significant enough to warrant raising section 44 grounds for rejection in most situations. Examiners should not routinely cite similar marks merely because one mark covers goods and the other mark could be viewed as covering the retail of those goods.”

“… deception and confusion is likely to occur in relation to some goods included in classes 12, 14 and 25 (such as motor vehicles, jewellery and clothing) and specific claims for retailing or wholesaling of those goods. This is because consumers have come to expect that in these cases the goods themselves and their retail or wholesale typically originate from the same source. … . For example, retailing of motor vehicles is considered to overlap with motor vehicles.

“Where the claim for retailing or wholesaling is broad, examiners will consider whether the particular trader in services is commonly known to trade in the relevant goods, and whether there is a strong rationale for concluding that the specified goods will be a particular focus of the services… For example, in the case of a claim for retail store services and a claim for clothing it can be expected that a significant risk exists since retail stores in general would reasonably include the retail of clothing.”

“Conversely in those cases where the comparison was between [non-specific] retail store services and motor vehicles, there may be less likelihood of the same relationship existing and giving rise to a ground for rejection.

In a decision of the delegate of the Registrar in the “Sizzler” case (AIPC 91.90-746), it has been held that food and restaurant services (not being take-away services) are not closely related. The decision contains the following comments:

“The trade channels through which the goods, as opposed to the services, pass are the primary producer, the manufacturer, the wholesaler, (perhaps an importer) and then the various retail outlets. Restaurant services, excluding take away restaurant services, are not available through these outlets. They are available at establishments dedicated to the services of preparing and serving meals. Conversely, the restaurant services specified in the subject application are not available from food outlets. They are available only at establishments whose sole business is the preparation and serving of meals in situ. Such restaurants are not outlets where class 30 food products may be purchased.”

“Considering the surrounding circumstances of trade, it is a matter of fact that numerous restaurants do provide ancillary catering services and in addition, sell goods, often indeed the restaurant specialities, from the premises. However, all those activities are excluded from the present application. Here there is simply a restaurant service, and it is not normal trade practice for restaurants to manufacture class 30 food products and then sell them through the normal food retail outlets…. I come to the final conclusion that the services nominated in the present application are not closely related to the goods of [the cited trade mark]”

When comparing the goods and/or services of the subject application against those of a cited application or registration, it must be assumed that the trade marks will be used normally and fairly in respect of all or any of the goods or services for which they are registered or for which registration is being sought. The actual goods or services on which the respective trade marks are, in fact, used in the marketplace is generally not a particularly relevant consideration under s.44.

Consequently, when responding to an examination report, submissions to the effect that the applicant is only using the trade mark on particular goods (or services) which are not similar to the goods (or services) of the cited trade mark, will generally not be of much assistance if the subject application actually specifies goods (or services) which overlap with, or are similar to, some of those covered by the cited mark.

In light of the above, any existing trade mark application or registration, having an earlier priority date than (or the same priority date as) the application under consideration, which is for a similar trade mark and which covers similar goods or services, is likely to constitute a significant obstacle to the registration of the subject trade mark. Any such obstacles will be raised as citation objections during the examination process of a trade mark application.

In citing earlier, similar trade mark applications or registrations, the focus is on avoiding the likelihood of confusion of the public. Clearly, if similar trade marks are used in relation to similar goods or services, there is substantial potential for confusion amongst consumers.

This does not necessarily mean that an application to register a trade mark will always be unsuccessful if any citation objections are raised during examination of the application. For instance, there may be grounds upon which the citation objections can be overcome. One such ground might be that, in spite of the examiner’s view, there are sufficient differences between the respective trade marks or between the respective goods or services so that s.44 does not properly apply and the trade marks can coexist on the Register. In such a case, one would generally submit a written response to the examiner, with submissions detailing the relevant differences and, if helpful, citing relevant case law. If the same trade marks co-exist on other trade mark registers in foreign countries (e.g. the US, the UK or New Zealand), providing the examiner with evidence of this may lend some persuasive weight to any such submissions.

Also, if the subject trade mark has been used to a significant extent, prior to the filing date of the application, it may be possible to overcome a citation objection by submitting evidence of such use.

The strategy for overcoming any citation objections will depend upon the circumstances of each case, including the merits (or otherwise) of any objection raised by the examiner.

Citation objections and infringement

Because the statutory tests for registrability of a trade mark under s.44 are very similar to the tests for trade mark infringement under s120, practitioners should always be aware that any serious citation objections raised in an examiner’s report indicate that the use of the subject trade mark may give rise to some risks of infringing the cited trade mark(s). This issue will need to be considered and, when reporting the examination report to the client, advice should be given in relation to both the infringement risks and the registrability prospects in light of the citation(s). The issue of possible trade mark infringement will typically be a more serious one for the client than whether or not the trade mark may be registrable.

Examination in relation to Plants, Wines etc

Examination of trade mark applications which relate to plants and plant materials (in class 31), wines (in class 33) and certain other similar products involve special considerations, owing to separate legislation regarding such products, namely:

• the Plant Breeder's Rights Act 1994; and
• the Australian Wine and Brandy Corporation Act 1980.

Information in relation to these special considerations is provided in Parts 32A and 32B of the Examiner’s Manual.

Responding to an Examiner’s Report

An applicant is entitled to respond in writing to any examination report which issues in relation to a trade mark application.

The response may include:

• arguments and submissions contesting the views, opinions and conclusions reached by the examiner;
• documents, such as statutory declarations (with exhibits and/or annexures), providing evidence of use of the trade mark;
• other documents in support of any arguments or submissions made in the response;
• a request for amendment of the trade mark application (e.g. the statement of goods or services).

The applicant’s response needs to be filed within sufficient time so as to allow any outstanding issues to be addressed and the application accepted by the examiner before the expiry of the abovementioned 15 month acceptance period (or any extension of this time limit). If a response is filed within the last 3 weeks of this period, it is likely that an extension of time will need to be requested.

The examiner may issue a further report (or a number of further reports) until satisfied that the relevant grounds for rejection have been overcome or are unlikely to be overcome.

If the grounds for rejection are overcome, the application will be accepted and will, shortly afterwards, be advertised as accepted.

If the grounds for rejection cannot be overcome, the applicant will have an opportunity to have the matter taken to a hearing before a hearing officer of the Trade Marks Office (being a delegate of the Registrar).

If further time is required to place an application in order for acceptance (beyond the initial 15 month acceptance period), the onus is on the applicant to request any required extensions of time - and these should be requested before expiry of the relevant period. (See 'Extensions of Time for Prosecution of Applications' (above))

Honest Concurrent Use, Prior Continuous Use, or Other Circumstances

Subsections 44(1) and (2), discussed above, are both subject to subsections 44(3) and (4). These latter subsections specify, in effect, that in spite of a justified citation objection having been raised (under s.44(1) or s.44(2)) by an examiner in respect of a trade mark application, if the subject trade mark has been used by the applicant, the trade mark may be acceptable for registration, in the circumstances contemplated by s.44(3) or s.44(4) of the TM Act.

In order to attempt to overcome an objection (under s.44(1) or (2)) on the basis of either honest concurrent use (s.44(3)) or prior continuous use (s.44(4)), an applicant will need to submit evidence of use of the trade mark in an attempt to satisfy the Registrar that it is appropriate to accept the trade mark for registration. The type of evidence required under each subsection is not the same and is discussed further below.

s.44(3)(a),(b) – Honest Concurrent Use and Other Circumstances

Section 44(3) of the TM Act provides that:

• “If the Registrar in either case [being the cases specified in s.44(1) or (2)] is satisfied:
  • (a) that there has been honest concurrent use of the 2 trade marks; or
  • (b) that, because of other circumstances, it is proper to do so;
• the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.”

Honest Concurrent Use – subsection (3)(a)

Subsection 44(3)(a) is intended to provide for situations in which a trader has adopted a trade mark in good faith and has then proceeded to use the trade mark, without there being any intention to obtain any benefit from the trade mark of another person, even though the other person has an earlier trade mark registration or application for his or her trade mark.

In order to succeed on the basis of ‘honest concurrent use’ an applicant will need to establish both: (a) ‘honesty’ in the adoption and use of the trade mark; and (b) use of the trade mark which is ‘concurrent’ with the use of the cited trade mark.

There are a number of factors to be taken into account by the Registrar when deciding how to exercise his or her discretion under s.44(3). These factors, as set out in Alexander Pirie & Sons Ltd’s Application (1933) 50 RPC 147, are:

1. the honesty of the concurrent use;
2. the extent of the use in time, geographic area and volume of sales;
3. the degree of confusion likely to ensue;
4. whether any instances of confusion have in fact occurred;
5. the balance of inconvenience in allowing or refusing application as between the relevant parties, subject to any necessary conditions or limitations.

Honesty of the concurrent use

It has been said that the honesty requirement is perhaps the most important of the above factors (see In the Matter of Trade Mark Application No. B370430, ((1988) AIPC 90-466). The honesty requirement does not necessarily mean that the applicant needs to have had no knowledge of the cited trade mark when adopting the subject mark. The more relevant question is whether or not the applicant believed that its use of the subject trade mark would be deceptive or confusing.

The relevant standard of honesty is “commercial honesty” which has been said not to differ from “common honesty” (Parkington & Co Ltd’s Appn (1946) 63 RPC).

It is possible that, even though the initial adoption of a trade mark by an applicant may have been honest, the applicant’s subsequent dealings have involved an element of dishonesty, such as an intention to gain an unfair advantage due to some similarity of the trade mark with an earlier registered trade mark. In such a case, the requirement of honesty will not have been met (see Burcombe & Co Ltd’s Appn (1948) 65 RPC).

The extent of the use

The extent of use required to support the requirement of ‘concurrent use’ will vary and will depend on the circumstances. For instance, in situations where the likelihood of confusion between the respective marks is relatively high, the extent of use required will be greater than where the respective marks are less likely to be confused. For example, where the trade marks are the same (or very similar), they are used on the same goods or services, and they are provided in the same geographical regions, then the extent of use (in terms of duration, area and volume) would need to be very substantial.

Generally, an applicant will need to establish a substantial period of use of the subject trade mark or a relatively high level of use over a shorter period. It has been stated that the evidence of honest concurrent use will need to show that the mark has been used in respect of the same or similar goods or services, for a satisfactory term, over a satisfactory area and to a satisfactory level (see Re GE Trade Mark [1973] RPC 297 (HL), and Granada Trade Mark, 1979 RPC 303).

There is authority for the proposition that a finding of honest concurrent use (under s.44(3)) cannot be made unless there has, in fact, been concurrent use of both the subject trade mark and the cited trade mark (see “L’amy” Trade Mark (1983) RPC).

As the registrability of the subject trade mark is to be determined as at the date of filing the application, the applicant’s relevant ‘honest concurrent use’ must have occurred before the filing of the application. If all use occurred after the filing date of the application, it will not be possible for an applicant to rely on honest concurrent use.

The Examiner’s Manual (in Part 28.3.4) sets out the following guidelines in relation to the nature and type of evidence required to establish ‘honest concurrent use’:

1. The history of the adoption of the trade mark and an explanation of why it was selected. Ideally, the history will include a statement indicating whether or not, at the time of adopting the current trade mark, the applicant had any knowledge of the cited trade mark.
2. An account of the use of the trade mark in relation to the goods or services in respect of which the trade mark has been used prior to application; examples of the trade mark in use (as per brochures or other advertising material); the volume of sales of those goods or services; and an account of the extent of use in the states in which those sales have taken place.
3. An account of the advertising that has been undertaken including the outlay on advertising and, if available, particulars and samples of the publications in which advertisements have appeared.

Other Circumstances – subsection (3)(b)

Subsection 44(3)(b) provides the Registrar with the discretion to accept a trade mark application, in spite of a citation objection based on s.44(1) or (2), where ‘it is proper to do so’ because of the existence of ‘other circumstances’.

Situations in which such ‘other circumstances’ may apply include the following:

• the owner of the cited trade mark is a company which has been deregistered (particularly if deregistration occurred several years ago);
• the applicant’s goods or services, and those of the owner of the cited trade mark, are specialised or will be purchased by different groups of customers, so that confusion is unlikely;
• where the applicant and the owner of the cited trade mark are both companies within the same corporate group and controlled by the same corporate entity; and
• the owner of the cited trade mark provides a letter of consent in relation to the registration of the applicant’s trade mark in relation to the specified goods or services.

In relation to this last point, it is worth noting that, contrary to the previous practice of the Trade Marks Office, the Office now generally regards a letter of consent from the owner of a cited trade mark as sufficient to overcome a s.44 objection based on that cited trade mark.

Conditions or Limitations

The Registrar has the discretion, under s.44(3), to accept the application “subject to any conditions or limitations that the Registrar thinks fit”. If, therefore, an applicant can only show substantial use of the subject trade mark in respect of a narrow range of goods or services or in a localised geographical area, it would be appropriate for the Registrar to require the application to be limited to those particular goods or services or to include a geographical endorsement, such as, “Registration of this trade mark is limited to the [specified geographical area]”.

s.44(4) – Prior Continuous Use

Section 44(4) of the TM Act provides that:

If the Registrar in either case [being the cases specified in s.44(1) or (2)] is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

• (a) beginning before the priority date for the registration of the other trade mark in respect of:
  • (i) the similar goods or closely related services; or
  • (ii) the similar services or closely related goods; and
• (b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Therefore, according to s.44(4), if the applicant is able to establish that it commenced using the subject trade mark, in relation to the relevant goods or services, before the priority date of the cited registration/application and has been using the trade mark continuously since then, up until the priority date of the applicant’s own application, then the Registrar cannot reject the application (on the ground of s.44(1) or (2)) in relation to those goods or services. Therefore, unlike for s.44(3), the Registrar has no discretion under s.44(4).

Unlike for ‘honest concurrent use’ (under s.44(3), the extent of the applicant’s use is not a relevant factor under subsection 44(4) and there is no benefit in providing evidence in relation to the extent of use. It will be sufficient if the applicant can show that its use of the trade mark has been continuous from a date which precedes the priority date of the cited registration/application up until, at least, the priority date of the subject application.

Evidence of Use under s.44(3) or (4)

The evidence required under s.44(3) or (4) needs to be provided by way of one or more statutory declarations. A very helpful and comprehensive summary of the information which should be included in such statutory declarations is provided in Annex A1 of Part 28 of the Examiner’s Manual.

Notification to Owner of Cited Trade Mark

If an application is accepted under either s.44(3) or (4), the Trade Marks Office will notify the owner of each cited trade mark. (However, this does not generally apply in relation to International Registrations Designating Australia (IRDA) made, by foreign applicants, under the Madrid Protocol).

After such notification, the owner of any cited trade mark will then have the opportunity to oppose registration of the accepted trade mark.

Even though an application proceeds to acceptance under s.44(3) or (4), it is still possible that the owner of an earlier cited trade mark may have grounds on which the subject application may be able to be successfully opposed. For instance, grounds on which an owner of an earlier registration (or application) may oppose the subject application could include (amongst others):

• that the applicant is not the ‘owner’ of the subject trade mark in relation to the relevant goods or services, in the sense that the applicant was not the first person to use or to apply for registration of the relevant trade mark in respect of these goods or services (s.58); and
• that the owner of the cited trade mark has developed a reputation in the relevant trade mark and the use of the subject trade mark by the applicant is likely to deceive or cause confusion (s.60).

It is again worth noting (see ‘Citations objections and infringement’ above) that any cited trade mark registration (or application) may constitute an actual (or potential) infringement risk in relation to an applicant’s use or proposed use of the subject trade mark. A notification from the Trade Marks Office will therefore bring the applicant’s trade mark application to the attention of the owner of each cited trade mark. This may expose an applicant to an infringement action brought by the owner of a cited trade mark.

Decisions and Hearings

The trade mark examiner and the applicant may engage in multiple communications in relation to the examiner’s objections. For instance, if an adverse report issues from the examiner and an applicant’s response is insufficient to persuade the examiner to withdraw the objections, then the examiner may issue a further report. The applicant is, of course, entitled to respond to this further report (e.g. with further written submissions and/or evidence of use.) This process may occur several times and multiple adverse reports may issue.

Decisions on the Written Record

If an applicant is unable to persuade the examiner to withdraw any objection and is of the view that the examiner’s position is wrong, the applicant may request a decision on the written record. This is done by filing an ‘Application for a Hearing or Decision on the Written Record’ ( Form TM00015). An official fee is payable for such a request (see fee item 20 of Schedule 9 of the TM Regulations).

Following the lodgement of such an application, the matter is referred to the Deputy Registrar, Hearings, who is required to consider whether the grounds for rejection are, prima facie, sustainable. If it is determined that the relevant grounds are not sustainable, the Deputy Registrar will arrange for a review of the application to be carried out. If the grounds for rejection are found to be, prima facie, sustainable, the matter will generally be referred to a Hearing Officer to consider the matter and prepare a decision, taking into account the material on file and any written representations filed by the applicant.

If the Hearing Officer decides to reject the application, or to accept it subject to certain conditions, a written decision is prepared and sent to the applicant. Where a written decision is issued, the applicant then has an opportunity to lodge an appeal with the Federal Court of Australia. The period for lodging an appeal is 21 days from the date of the decision.

If the Hearing Officer determines that the trade mark is acceptable without any conditions or limitations, the application is accepted and the applicant is notified accordingly. The usual procedures for acceptance and registration then apply.

Hearings Before the Registrar

If, during the prosecution process, the examiner forms the view that an impasse has been reached and no further written communications are likely to overcome the remaining objections, the examiner will generally inform the applicant that he or she intends to reject the application. The applicant then has a right either to request a decision on the written record (as mentioned above) or to request a hearing of the matter. The Registrar may not reject a trade mark application without giving the applicant an opportunity to be heard ((s33(4)).

To request a hearing, an applicant is required to submit an ‘Application for a Hearing or Decision on the Written Record’ (see r.21.15(2) and Form TM00015).

An official fee is payable request to request a hearing (see fee item 15 of Schedule 9 of the TM Regulations).

The Registrar will set a time and place for the hearing. The locations for hearings are generally the various State offices of IP Australia (or the Canberra office). The applicant will be able to specify the location which is most convenient to the applicant. The applicant will be notified, at least 10 days in advance, of the time, date and place of the hearing (r.21.15(3)(b)).

The applicant (or the applicant’s representative) will be entitled to attend the hearing in person or by way of a telephone conference connection (or a video conference link-up where the applicant has access to such facilities) (r.21.15(5)).

An applicant may make written submissions to the Registrar prior to (or during) a hearing (r.21.15(6)).

The Registrar is not bound by the normal rules of evidence and a hearing before the Registrar is conducted ‘with as little formality and technicality, and with as much expedition’ as is allowed under the TM Act and TM Regulations (r.21.15(7) and (8)).

Section 202 of the TM Act sets out the Registrar’s powers, which are exercisable in relation to the conduct of hearings, including the power to summon witnesses and require the production of documents. These powers are unlikely to be exercised in relation to ex-parte hearings requested by an applicant. Such powers are more likely to be exercised in opposition proceedings (or other contested hearings) before the Registrar.

Following the hearing, the Registrar’s delegate will make a decision on the registrability of the trade mark. If the decision is adverse to the applicant, the applicant is given the reasons for the decision in written form. If the decision is in favour of the applicant, then it is not usual for a written decision to be issued.

Appeal Against Adverse Decision of Registrar

If, following a hearing, the application is rejected, or is only accepted subject to certain conditions, the applicant then has the right to appeal to the Federal Court of Australia (under s.35). The deadline for lodging an appeal is generally 21 days from the date of the relevant decision. Further information in relation to such an appeal is provided in Part 53.4.5 of the Examiner’s Manual.

Acceptance of Applications and Registration

If the examiner determines that an application complies with the TM Act and there are no grounds of objection, or any grounds of objection have been overcome, the application will be accepted (s.33(1)).

The applicant will receive a notification of acceptance from the Trade Marks Office (s.34(a)) and, shortly afterwards, the acceptance will be advertised (i.e. published) in the Official Journal of Trade Marks (s.34(b)). The Official Journal is published on a weekly basis (every Thursday).

The notification of acceptance will specify the date on which the advertisement of acceptance will be published in the Official Journal. This date of advertisement is a very important date as two critical deadlines are determined by reference to this date, namely:

• the deadline for other persons to oppose the registration of the trade mark; and
• the deadline for paying the official registration fee.

Accordingly, upon receipt of a notification of acceptance, it is important that the above deadlines are diarised, particularly the deadline for payment of the registration fee. The notification of acceptance should be checked for accuracy. The notification of acceptance should then be forwarded to the client with advice in relation to the abovementioned deadlines. A precedent letter is provided here - Letter to client advising issue of Notice of Acceptance.

Following the advertisement of acceptance of an application, any person who may wish to object to the registration of the trade mark will have a period of 3 months, from the date of advertisement, within which to file a Notice of Opposition (see ‘Opposition to Registration’ below).

The earliest that the Trade Marks Office will grant a registration in respect of a person’s trade mark application (other than a divisional application or an application claiming Convention priority) is about seven and a half months from the filing date. This is so as to ensure that, in the event that there is any subsequent application by another person claiming an earlier priority date (based on a corresponding foreign application filed up to 6 months earlier) under the Paris Convention, the other person has an opportunity to oppose the first mentioned trade mark application.

After a trade mark application has been accepted (and unless the application has been successfully opposed), a registration fee is payable before the trade mark can proceed to registration. The period within which the registration fee must be paid is 6 months from the date of advertisement of acceptance (see s.68(1) and r.7.1(a)(i)). If the registration fee is not paid by this date, the application will lapse. It is usual to pay the registration fee shortly before or shortly after expiry of the opposition period so that (provided the application is not opposed) the application can proceed to registration as soon as possible.

The registration fee is based on the number of classes included in the application and this fee can be determined by reference to item 9 of Schedule 9 of the TM Regulations.

The registration fee can be paid in a number of ways. Generally, the most convenient means for paying the registration fee are:

• forwarding a cheque for the registration fee by post to IP Australia with a ‘ Payment Form for Credit Cards, Cheques and Money Orders’;
• forwarding a ‘Payment Form for Credit Cards, Cheques and Money Orders’ (see above link) with credit card details, by facsimile (or post) to IP Australia;
• by visiting the on-line trade mark registration payment page of the IP Australia website.

The on-line payment option is the simplest and most convenient way for paying the registration fee and it avoids the possibility of a posted or faxed payment request going astray. The on-line payment process also automatically calculates the registration fee payable. Upon payment, an electronic receipt is immediately issued by IP Australia.

When the Trade Marks Office grants the registration of a trade mark, it enters all of the required details into the Register of Trade Marks (s.69). The Registrar is also required to advertise the registration in the Official Journal and to issue to the registered owner a Certificate of Registration.

Upon receipt of a Certificate of Registration, all of the registration details set out in the Certificate should be checked for accuracy (as errors do occasionally occur). The Certificate of Registration can then be forwarded to the client for safekeeping. A precedent letter is provided here - Letter to client confirming registration and enclosing Certificate of Registration.

Upon receipt of the Certificate of Registration, it is important to ensure that the renewal deadline (in most cases, being 10 years from the filing date of the application) is diarised in an appropriate manner. The period of registration (and therefore the renewal deadline) will be stated on the Certificate of Registration. The renewal deadline can also be confirmed by checking the details of registration on the ATMOSS database. The relevant diary entries should include a reminder, several months before the renewal deadline, to notify the client of the renewal deadline and to seek instructions as to whether the registration is to be renewed for another 10 year period.

Once a trade mark has proceeded to registration, the owner of the trade mark (or a licensee) is entitled to use the registration symbol ® in association with the trade mark. This symbol indicates that the trade mark is a registered mark. Up until registration, or in respect of a trade mark whose registration has not been sought, it is only permissible to use the trade mark symbol ™ in relation to the relevant mark. The symbol ™ simply indicates that the relevant mark is being used as a trade mark (as opposed to a descriptive term). It is an offence under the TM Act (s.151) to represent falsely that a trade mark is registered (e.g. by using the ® symbol). Such a false representation may also breach applicable fair trading legislation (such as s.52 of the Trade Practices Act).

Revocation of Acceptance

The Registrar has the power to revoke acceptance in certain situations. Section 38 of the TM Act states:

• (1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
  • (a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
  • (b) it is reasonable to revoke the acceptance, taking account of all the circumstances.
• (2) If the Registrar revokes the acceptance:
  • (a) the application is taken to have never been accepted; and
  • (b) the Registrar must examine, and report on, the application as necessary under section 31; and
  • (c) sections 33 and 34 again apply in relation to the application.

Revocation of acceptance is rarely initiated by the Registrar following acceptance of a trade mark. More commonly, another party who would be aggrieved by the acceptance of the application will notify the Registrar of an apparent error by the examiner and request that the acceptance be revoked. If the Registrar agrees, the acceptance of the application will be revoked and the Registrar will issue an adverse examination report. The applicant will then be given further time to address the objection(s) raised in the examination report.

Term of Registration

The term of registration is 10 years from the filing date of the application for registration (s. 72(3)), unless the registration has been cancelled or removed.

Generally, the determination of the relevant 10 year registration period will be straightforward. However, it is worth noting the following points in relation to certain types of trade mark applications which have a priority date which is different from the date on which the application was filed (e.g. divisional applications or applications made under the Paris Convention).

Divisional applications - The ‘filing date’ of a divisional applications is not dependant upon the date that the divisional application was filed but is dependant upon the date on which the parent application was filed (see part (b) of the definition of ‘filing date’ in s.6). If the parent application is itself a divisional application of an earlier parent application, then the filing date of the most recent divisional application will still be taken to be the filing date of the earlier parent application. Therefore, the 10 year registration term dates from the filing date of the parent application (or the earliest parent application if there has been a chain of valid divisional applications).

Convention Applications – Under subsection 72(2), the registration of a trade mark is taken to have had effect, where a convention claim applies in respect of particular goods and/or services, from (and including) the day on which the application in the Convention country was made in respect of those particular goods and/or services. Although the registration ‘is taken to have had effect’ from the date on which the original application was made in the Convention country, this does not mean the 10 year registration period in Australia commences on this date. The relevant 10 registration period for a Convention application/registration is the same as that for a normal trade mark application/registration, being 10 years from the filing date of the relevant application in Australia (s.72(3)).

Renewal of Trade Mark Registrations

A trade mark registration is renewable indefinitely (unlike other forms of intellectual property, such as patents and registered designs, which have absolute terms beyond which protection ceases).

As mentioned above, the initial period of registration of a trade mark is 10 years from the filing date. Similarly, a registered trade mark can be renewed for subsequent periods of 10 years (s.77(1)) upon payment of the applicable renewal fee. Like the application fee and the registration fee, the renewal fee is also based on the number of classes covered by the registration. This fee can be determined by reference to item 10 of Schedule 9 of the TM Regulations.

A renewal fee may be paid any time in the 12 month period preceding the renewal deadline (s.75; r.7.3). If the renewal fee has not been paid by a date 2 months before the renewal deadline, the Registrar is obliged to send a notice to the registered owner advising that renewal of the registration is due (s.76; r.7.4).

The renewal of a trade mark registration is a relatively straight-forward exercise and can be done in a number of ways. Generally, the most convenient means for paying the renewal fee are:

• forwarding a cheque by post to IP Australia with a ‘ Payment Form for Credit Cards, Cheques and Money Orders’ (in which the trade mark registration/s being renewed is/are identified);
• forwarding a ‘ Payment Form for Credit Cards, Cheques and Money Orders’ (in which the trade mark registration/s being renewed is/are identified) with credit card details, by facsimile (or post) to IP Australia; also
• by visiting the on-line trade mark renewal payment page of the IP Australia website.

The on-line payment option is generally the simplest and most convenient way for paying the renewal fee and it avoids the possibility of a posted or faxed payment request going astray. The on-line payment process also automatically calculates the renewal fee payable. Upon payment, an electronic receipt is immediately issued by IP Australia.

Upon payment of the renewal fee, the Registrar will renew the registration for a further term of 10 years (s.77(1)) and will give the registered owner notice of the renewal (s.77(2)).

Of course, once a trade mark registration has been renewed, the next renewal deadline should be diarised with a reminder to seek instructions from the client well in advance of the due deadline.

If the registration of a trade mark is not renewed by the renewal deadline, it will expire (s.78(a)). Six months after the expiry of the registration, the Registrar will remove the trade mark from the Register (s.78(b)).

However, there is a 6 month grace period during which, if the registered owner belatedly seeks renewal of the registration, and pays the applicable fees, the Registrar is obliged to renew the registration (s.79). This is effectively a right to have an expired registration restored. In order to effect a belated renewal under s.79, the registered owner will need to pay both the relevant renewal fee and the applicable monthly extension fee (based on the number of months (or part thereof) between the renewal deadline and the date on which the renewal fee is paid).

Because of this right of a registered owner to restore an expired registration (during the 6 month period following expiry), such expired registrations may still be cited by an examiner in relation to a later conflicting application for similar goods or services. However, if the cited registration is not renewed during the relevant 6 month grace period, the citation objection should be withdrawn.

Trade Mark Protection in Foreign Countries

Australian trade mark applicants will often wish to obtain trade mark protection in overseas countries which corresponds with the protection which has been sought and/or obtained in Australia.

For instance, if a local trader has its products manufactured and branded overseas (e.g. in China, Taiwan, Vietnam etc), it should ensure that the branding of the products in the foreign country does not infringe the rights of any other traders in that country. Also, the local trader should consider seeking trade mark registration of its trade mark in the relevant overseas country.

Similarly, local traders which export, or propose to export, products to overseas markets should (before doing so) ensure that the sale of the products in each foreign country of interest will not infringe the rights of any traders. Trade mark protection should also seriously be considered in each export market.

In some countries (including several significant Asian countries), legal rights in a trade mark protection can only be acquired by virtue of a trade mark registration. That is, there are several Asian countries which do not recognise ‘common law’ rights based on use and reputation of a trade mark.

Foreign trade mark protection can be sought at any time. However, there are benefits in seeking corresponding foreign trade mark protection soon after seeking trade mark protection in Australia.

Under the Paris Convention, any foreign trade mark application, filed in a foreign country within 6 months of the relevant Australian trade mark application, will generally be able to claim the benefit of the filing date of the earlier Australian trade mark application – provided the Australian trade mark application was the very first application for the subject trade mark covering the goods or services in respect of which Convention priority is claimed.

Such a claim to Convention priority is very beneficial in that it will enable the foreign trade mark application to take priority over any conflicting application of another person which is filed between the date of the Australian application and the date on which the corresponding foreign application is flied.

Foreign trade mark applications can be made in a number of different ways and the most appropriate strategy will depend largely on the relevant countries of interest and the respective costs of the different options available.

The main means by which foreign applications may be filed are:

• direct filings in the foreign countries, via attorneys in the relevant countries; and
• an international trade mark application, under the Madrid Protocol (the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks), for countries which are members of the Madrid Protocol.

Some brief comments on these means for effecting foreign trade mark applications are provided below.

Direct Foreign Filings

Historically, the primary way of seeking trade mark registration in foreign countries has been the direct filing of a trade mark application in each country of interest. Such foreign applications generally need to be filed using the services of a firm of attorneys in each country. Most countries require a local address for service for a trade mark application and appointing a firm of attorneys to represent an applicant in the relevant country will satisfy this requirement.

When appointing a foreign firm to assist with the filing and prosecution of a trade mark application in a foreign country, care needs to be taken to ensure that the selected firm is experienced in trade mark law and practice in that country.

Australian firms which are regularly involved in trade mark applications on behalf of clients are likely to have a panel of reliable firms in each foreign country that they regularly use.

If it is necessary to find a suitable firm in a foreign country, this information may be able to be obtained from relevant directories. For instance, the websites of various IP industry bodies sometimes have lists of patent attorney firms in different countries. It is however prudent to obtain a referral of a reliable foreign firm from an experienced Australian practitioner as the quality of service (and cost structures) can vary significantly between firms in overseas countries. Some industry websites from which foreign attorney firms (typically patent/trade mark attorney firms) can be identified are:

• UK attorneys: http://www.itma.org.uk/; http://www.cipa.org.uk/members/directory/default.asp?m=f&dir=1
• US attorneys: https://oedci.uspto.gov/OEDCI/GeoRegion.jsp
• European attorneys: http://www.epo.org/patents/Grant-procedure/representatives.html
• NZ attorneys: http://www.iponz.govt.nz/cms/iponz/patent-attorney-information/the-patent-attorney-register/

A handy single source of links to foreign patent and trade mark attorney firms is located on the website: www.ipmenu.com (at http://www.ipmenu.com/ipfirms/ipfirms.htm ).

A number of Australian patent attorneys, trade mark attorneys and lawyers are authorised to practise in New Zealand (pursuant to the Trans-Tasman Mutual recognition Arrangement (1998). These professionals may file trade mark applications directly with the Intellectual Property Office of New Zealand ('IPONZ'), provided they have a local address for service in New Zealand.

Madrid Protocol Applications

Australia became an effective member of the Madrid Protocol back in 2001. Since that time, many local businesses have found the Madrid Protocol to be a very efficient and cost-effective way of obtaining trade mark protection in a large number of overseas countries.

Under the Madrid Protocol, Australian entities are able to seek 'international' trade mark protection by the filing of a single application covering a large number of foreign countries that are members of the Protocol. At the time of filing, the applicant designates the countries which are of interest to the applicant. The filing fee for an international application is dependent upon: the number of classes included in the application; the number of countries designated; and the identities of the designated countries.

An international registration has additional benefits, such as only having to lodge a single request to renew the registration or to record an assignment of the registration in all the countries of interest.

There are currently over seventy member states of the Madrid Protocol, many of which are amongst Australia’s major trading partners (including the US, Japan, China, Korea Vietnam, the UK and the European Community) and, as time goes by, it is likely that several more countries will also join the Protocol. A list of current members of the Madrid Protocol can be obtained via the website of the World Intellectual Property Organisation (WIPO) – Contracting Parties.

Some of the main features of the Madrid Protocol system, insofar as it relates to Australian applicants, are set out below.

• A Madrid Protocol application must be based upon at least one existing Australian application or registration (the basic application(s)/registration(s)) and must not include any goods or services not covered by the basic application(s)/registration(s);
• A Madrid Protocol application is filed with IP Australia;
• A Madrid Protocol application or registration is dependant on the continued survival of the basic Australian application(s)/registration(s) for the first five years of its existence.

As noted above, a rather unusual feature of the Madrid Protocol system is that, before an international application for a trade mark can be filed, at least one earlier 'basic' application/registration for the same trade mark must exist covering the goods or services which are to be covered by the international application.

Further, the international application/registration remains dependent upon the continued existence of the 'basic' application(s)/registration(s) for a period of five years from the date of the international registration. After this initial five year period, the international registration is no longer dependent upon the basic registration(s).

Because of this five year dependency upon the Australian basic application(s)/registration(s), it is very unwise to base a Madrid Protocol application upon a trade mark application which may have significant difficulties in achieving registration, such as a trade mark which consists of non-distinctive elements (e.g. descriptive terms, common surnames and geographical names) or a trade mark which is likely to face significant citation objections based on earlier conflicting applications or registrations). In order to reduce the risks of a Madrid Protocol application failing on this basis, an applicant may prefer to wait until the Australian application has survived the application and opposition phases and achieved registration in Australia. Although this does not guarantee that the Australian registration will remain validly registered for the relevant five year period, it forms a much stronger foundation than does a pending application, particularly one which has not yet even been examined by the Trade Marks Office.

Where an international application under the Madrid Protocol is based upon an Australian application filed within the previous six months, Convention Priority (under the Paris Convention) can be claimed. Therefore, it is quite common for Australian applicants to file an international application based on such an Australian application. It is generally not possible for an Australian trade mark application to proceed to registration within six months of filing. Therefore, in order to minimise the risks of an international application being based on a trade mark application which proves to be unsuccessful, the applicant may wish to seek expedited examination of the Australian application (see ‘Expedited Examination’ above). Expedited examination generally occurs within 4 or 5 weeks of lodging the request for expedition and this will, therefore, at least ensure that the Australian application is examined well before expiry of the six month Convention period. If no objections are raised against the Australian application (or any such objections are overcome), an applicant will have more confidence relying upon this application, as a basis for an international application, than would otherwise be the case.

If the Australian application for the trade mark of interest is unsuccessful, it will not be able to form the basis of a Madrid Protocol application for the trade mark. In such a situation, it may be more appropriate to seek foreign registration of the trade mark by way of a direct foreign filing in each foreign country of interest. Although, prior to doing this, consideration should be given to whether the problems which have prevented the trade mark proceeding to registration in Australia may also arise in the relevant foreign countries.

Opposition to Trade Mark Applications

Overview

Following the acceptance of a trade mark application, and before the application proceeds to registration, other persons have an opportunity to oppose the registration of the trade mark (s.52).

Typically, an opposition is filed by a person who has rights in the same or a similar trade mark, either under the TM Act or under the common law. However, an opposition may be filed by any person (s.52(1)) and it is not necessary to show that this person would be particularly aggrieved by the subject trade mark proceeding to registration.

As previously explained, once a trade mark application has been accepted by the Trade Marks Office, the applicant will receive a notification of acceptance from the Office (s.34(a)) and, shortly afterwards, the acceptance will be advertised (i.e. published) in the Official Journal of Trade Marks (s.34(b)).

The notification of acceptance will specify the date on which the advertisement of acceptance will be published in the Official Journal. Following the advertisement of acceptance of an application, any person who may wish to object to the registration of the trade mark will have a period of 3 months, from the date of advertisement, within which to file a Notice of Opposition (s.52(2); r.5.1). (See ‘Notice of Opposition’ below). This 3 month period may, in certain limited circumstances, be extended (see ‘Extensions of Time in Opposition Matters’ below).

Following the filing of a Notice of Opposition, the opponent then has 3 months from the filing date within which to prepare and serve (upon the applicant) a copy of its evidence-in-support in respect of the opposition (r.5.7(1)). As soon as reasonably practicable after the evidence has been served upon the applicant, the opponent needs to file in the Trade Marks Office:

• the original evidence-in-support (r.5.7(2)(a)); and
• a statement setting out the date, place and manner of service of the copy of the evidence on the applicant (r.5.7(2)(b)).

In rare situations, an opponent may choose not to file any evidence-in-support. If so, the opponent must, within 3 months from the filing date of the opposition, serve on the applicant a copy of a notice stating that the opponent does not intend to rely on evidence-in-support of the opposition (r.5.8(1)). The opponent must ‘as soon as practicable’ thereafter file the original of this notice in the Trade Marks Office with a statement as to the date, place and manner of service on the applicant (r.5.8(2)(a) and (b)).

Following receipt of service of either the opponent’s evidence-in-support or a notice stating that the opponent does not intend to rely on evidence-in-support, the applicant then has a 3 month period within which to prepare and serve (upon the opponent) a copy of its evidence-in-answer (r.5.10(1)). The evidence-in-answer similarly needs to be filed in the Trade Marks Office, together with a statement setting out the date, place and manner of service of the copy of the evidence on the opponent, as soon as reasonably practicable after the evidence has been served upon the opponent (r.5.9(2)(a) and (b)).

If the applicant chooses not to rely on any evidence-in-answer, the applicant must, within the period for service of a copy of the evidence-in-answer, serve on the opponent a copy of a notice stating that the applicant does not intend to rely on any evidence-in-answer (r.5.11(1)). The applicant must ‘as soon as practicable’ thereafter file the original of this notice in the Trade Marks Office with a statement as to the date, place and manner of service on the opponent (r.5.11(2)(a) and (b)).

In the unusual circumstance that the opponent fails either: to serve evidence-in-support upon the applicant; or to serve a notice on the applicant stating that it does not intend to rely on any evidence-in-support, within the relevant 3 month period, the Registrar will specify a date on which the period for serving the evidence-in-answer is to begin and the parties will be notified of this (r.5.10(2)(b)).

If the applicant does serve evidence-in-answer upon the opponent, the opponent then has an opportunity to prepare and serve (upon the applicant) a copy of any evidence-in-reply upon which it may wish to rely. The copy of the evidence-in-reply is to be served upon the applicant within 3 months from the date on which the evidence-in-answer is served upon the opponent. The original evidence-in-reply also needs to be filed in the Trade Marks Office, with a statement as to the date, place and manner of service on the applicant as soon as reasonably practicable after the evidence has been served upon the applicant (r.5.12(2)(a) and (b)).

If the opponent chooses not to file any evidence-in-reply, the opponent must, within 3 months from the date of service of the evidence-in-answer, serve on the applicant a copy of a notice stating that the opponent does not intend to rely on evidence-in-reply (r.5.13(1)). The opponent must ‘as soon as practicable’ thereafter file the original of this notice in the Trade Marks Office with a statement as to the date, place and manner of service on the applicant (r.5.13(2)(a) and (b)).

The applicant can then apply for special leave to file further evidence if the applicant feels that this is warranted.

The above deadlines may be extended when the relevant circumstances apply (see ‘Extensions of Time in Opposition Matters’ below).

It is extremely important to note that each of the abovementioned 3 month periods relates to the date by which a copy of the relevant evidence must be served on the other party. It is not the date by which the evidence is to be filed in the Trade Marks Office. Filing of the evidence can occur later, although it is usual to file the evidence on the same day that it is served upon the other party.

The Registrar is under an obligation to give both the opponent and the applicant an opportunity of being heard in the opposition (s.54(1)). The parties are typically provided an opportunity to attend a hearing of the opposition once the parties have submitted all of their evidence (or indicated that they will not be providing such evidence). A hearing does not occur as a matter of course in opposition proceedings. An opposition is only set down for a hearing if either or both of the parties request a hearing and the relevant official fee for the hearing is paid – see fee item 14 in Schedule 9.

If a party does wish to appear at the hearing, an attendance fee is payable (see item 16 in Schedule 9). However, the party who requests the hearing (and pays the hearing fee) is entitled to appear at the hearing (as the appearance fee is incorporated in the hearing fee – assuming the hearing goes for no more than one day). If the other party also wishes to appear at the hearing, this party needs to pay an appearance fee. An appearance fee is payable even if the party only proposes to ‘attend’ via a telephone conference link-up. There is however no obligation on a party to appear at the hearing.

There is no obligation on the parties to request or attend a hearing. If no hearing is requested (and provided the matter is not settled by the parties and the opposition withdrawn), the Registrar will rely on the evidence which has been filed by the parties in respect of the opposition.

The Registrar must then reach a decision, either to refuse the application or to register the trade mark (with or without conditions) (s.55(1)). The Registrar will provide each party with a copy of the decision reached.

An appeal against the decision of the Registrar lies to the Federal Court of Australia (s.56).

Notice of Opposition

An opposition is commenced by the preparation and lodgement (in the Trade Marks Office) of a Notice of Opposition in an approved form (s.52(2)). The Notice of Opposition should set out all of the grounds on which the opponent intends to rely in opposing the application (see ‘Grounds of Opposition’ below).

The Trade Marks Office has prepared an approved ‘Notice of Opposition’ ( Form TM00003), which can be used by an opponent. It is not mandatory for an opponent to use the abovementioned Form TM00003. However, any independently created Notice of Opposition should contain all of the relevant information set out in this form.

A copy of the Notice of Opposition needs to be served upon the trade mark applicant (s.52(3)). This is typically done at about the same time as lodging the Notice.

Grounds of Opposition

The available grounds of opposition are set out in Part 5, Division 2 of the TM Act (see ss.57-62A). The grounds of opposition include:

• any of the grounds on which an application for the registration of a trade mark may be rejected under the TM Act (s.57). These grounds are those set out in Part 4, Division 2 of the TM Act (see ss.39-44);
• the applicant is not the owner of the trade mark (s.58);
• the owner of an earlier trade mark registration (or application), for a similar trade mark, first used the similar trade mark, in respect of similar goods or services, before the applicant first used the subject trade mark and has continuously used the similar trade mark in respect of those goods or services since that time (s.58A);
• the applicant does not intend to use, or authorise the use of, the trade mark in Australia in relation to the goods/services specified in the application (s.59(a));
• another trade mark had, before the priority date of the application, acquired a reputation in Australia in respect of the goods or services covered by the application and, because of that reputation, the use of the subject trade mark would be likely to deceive or cause confusion (s.60);
• the trade mark includes a sign that is a geographical indication for goods originating in a country other than the country in which the relevant goods originated (s.61(1)(a));
• the trade mark application, or a document filed in support of the application, was amended contrary to the TM Act (s.62); and
• the trade mark application was made in bad faith (s.62A).

As noted above, registration of a trade mark may be opposed on any ground on which an application for the registration of a trade mark may be rejected under the TM Act, being the grounds set out in ss.39-44 of the TM Act. These grounds have been discussed above, under ‘Substantive Examination’.

The procedures for dealing with a trade mark opposition, including the filing and service of evidence, are set out in the TM Regulations (see Part 5, regs 5.7 - 5.17). Many of these have been discussed above. Some further comments on these regulations are provided below.

Extensions of Time in Opposition Matters

As outlined above, there are a number of important deadlines that need to be met during the different stages of opposition proceedings. It is critical that these deadlines are diarised and diligently monitored. It is also important that adequate time is allowed to complete the relevant tasks, such as preparing evidence, prior to the applicable deadline.

There will however be occasions where further time is required in order to complete the relevant tasks or where an applicable deadline is inadvertently missed. The TM Regulations allow for extensions of time to be obtained in certain circumstances (see rr.5.2, 5.3 and 5.15).

Extension of Time for Filing Notice of Opposition

The period within which a Notice of Opposition is to be filed is 3 months from the date of the advertisement of acceptance of the relevant trade mark application (r.5.1). An extension of time to lodge a Notice of Opposition may be sought under regulation 5.2(1) in the circumstances contemplated in regulation 5.2(2). Regulation 5.2 states as follows:

• (1) A person may apply to the Registrar for an extension of time in which to file a notice of opposition.
• (2) An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:
  • (a) an error or omission by an employee;
  • (b) an error or omission by the person applying for the extension of time, or by the person's agent;
  • (c) circumstances beyond the control of the person applying for the extension of time;
  • (d) the conduct of genuine negotiations between that person and the applicant for registration;
  • (e) the undertaking of genuine research to decide:
    • (i) whether opposition is justified; or
    • (ii) on the grounds of opposition.
• (3) If the period for filing a notice of opposition has ended, an application for extension of time may be made at any time before the trade mark is registered on 1, or more than 1, of the grounds set out in paragraph (2) (a), (b) or (c) and on no other ground.

An application for extension of time to file a Notice of Opposition must be accompanied by the applicable official fee (see fee item 6 of Schedule 9).

It is important to note that, if the application for extension of time is filed within the initial 3 month opposition period, any of the grounds specified in regulation 5.2(2) may be relied upon. If, however, the application for extension of time is filed belatedly (i.e. after expiry of the initial 3 month period), the only grounds available are those specified in sub-regulations 5.2(2)(a) to (c).

An application for extension of time, which is lodged within the initial 3 month opposition period must be accompanied by a declaration stating the facts on which the grounds specified in the application are based (r.5.3(b)(i)). If, the application for extension of time is filed belatedly, the statutory declaration must also include the reasons why the application was not made within the initial 3 month period ((r.5.3(b)(ii)).

Once it is realised that the 3 month opposition period has expired (without the intended opposition having been filed), urgent action needs to be taken to request an extension of time. The opponent should immediately prepare and file an application for extension of time and the supporting statutory declaration. It is also generally advisable to file the Notice of Opposition at the same time (or very shortly afterwards).

A copy of the application for extension of time and the supporting statutory declaration need to be served upon the trade mark applicant (r.5.4(2)). As stated previously, the Notice of Opposition also needs to be served upon the applicant.

An extension of time sought under regulation 5.2(2)(d) or (e) may be for a period not exceeding 3 months (r.5.4(5)(b)). In respect of applications for extension of time under other available grounds, the extension may be granted for a period which the Registrar believes is reasonable (r.5.4(5)(a)).

It is important to note that only one extension of time is available under r.5.2 for the filing of a Notice of Opposition (see also Chiron Corp v Registrar of Trade Marks (1998) 85 FCR 480). Therefore, even though a 3 month extension may be available, if a potential opponent only seeks a 1 or 2 month extension and then decides that further time is required, it will not be possible to seek such a further extension of time. Therefore, it is often prudent to seek a 3 month etensions even where it is expected that a shorter period will suffice.

In spite of the availability of an extension of time, a potential opponent should carefully consider whether seeking an extension of time (during the initial 3 month opposition period) is preferable to lodging a Notice of Opposition. There is no guarantee that the extension will be granted by the Registrar as the Registrar needs to be “reasonably satisfied as to the grounds set out in an application” before the application will be allowed (r.5.4(1)). Also, the trade mark applicant has an opportunity to object to the requested extension of time (r.5.4(2)(b)) and, in doing so, has the right to request a hearing concerning the application (r.5.4(3)). Also, generally, the costs for seeking an extension of time (of 3 months) will not be significantly less than the costs of preparing and filing a Notice of Opposition.

Before the Registrar refuses an application for extension of time, the person who sought the extension (and the trade mark applicant) will be given an opportunity of being heard in respect of the application.

When preparing a statutory declaration in support of such an application for extension of time, a full disclosure of the circumstances supporting the available ground for extension should be provided. For instance, when the ground relied upon is the conduct of negotiations between the parties (r.5.2(2)(d)), a detailed description of the history and current status of the negotiations should be provided (without of course disclosing any confidential details of the negotiations).

If the statutory declaration relates to an extension application filed outside of the initial 3 month opposition period, the declaration should also clearly explain the relevant error or omission (or force majeure) which resulted in the failure to lodge the Notice of Opposition within the 3 month opposition period. The declaration should also identify the causal connection between the error or omission (or force majeure) and the failure to lodge the Notice of Opposition within the opposition period.

Extension of Time for Serving Evidence in Opposition Proceedings

It is possible to obtain extensions of time for serving evidence in opposition proceedings and such extensions are often sought. Such extensions of time are governed by regulation 5.15 which is set out in full below:

• (1) A party to the opposition proceedings may apply to the Registrar:
  • (a) for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or
  • (b) for permission to serve a copy of further evidence on the other party.
• (2) The Registrar may grant an application on reasonable terms specified by the Registrar.
• (3) The Registrar must not grant an application unless the Registrar:
  • (a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
  • (b) has given the parties a reasonable opportunity to make representations concerning the application; and
  • (c) is reasonably satisfied that:
    • (i) in the case of an application to which paragraph (1) (a) applies -- the extension of the period for serving a copy of the evidence; and
    • (ii) in the case of an application to which paragraph (1) (b) applies -- permission to serve a copy of further evidence;
• is appropriate.
• (4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
• (5) If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.
• (6) Subregulations (2), (3) and (4) apply to an application under subregulation (5).

An application for extension of time to serve evidence must be accompanied by the applicable official fee (see fee item 6 of Schedule 9).

An application for extension of time must also be accompanied by reasons justifying the extension (r.5.15(3)). Extensions of time, for evidence-in-support and evidence-in-answer, totalling 6 months (e.g. two requests of 3 months each) may be obtained simply by the provision of written reasons.

However, under current practice of the Trade Marks Office, after 6 months of extensions have been obtained, it is significantly more difficult to obtain extensions of time. For instance, the Registrar will only consider further extensions of time upon reasons set out in a statutory declaration and these reasons need to be quite compelling. These reasons should clearly set out: the steps which have been taken to date in collating and preparing the evidence; any further steps which need to be taken; an explanation of the delays which have occurred in finalising the evidence; an indication of the time likely to be required to complete the evidence; and any other relevant information (such as ongoing settlement negotiations between the parties).

For evidence-in-reply, an extension of time of 3 months may be sought simply by the provision of written reasons. Any further application for an extension of time will need to be supported by reasons set out in a statutory declaration. Again, these reasons will need to be quite compelling.

If a further extension of time is sought, after 6 months of extensions have already been granted, on the basis that the parties are engaged in ongoing settlement negotiations, the prospects of obtaining the further extension will be enhanced if the other party provides the Trade Marks Office with its written consent to the further extension of time.

If the application for extension of time is filed belatedly (i.e. after the end of the time as so far allowed), a supporting declaration is required in all cases. This should set out the reasons for the failure to file the request within time together with reasons why further time is required.

A copy of any application for extension of time under r.5.15 must be served upon the other party together with any documents (e.g. any supporting declaration) accompanying the application (r.5.15(3)(a)).

Further Assistance

The Helpdesk of IP Australia (1300 651 010) is often a helpful resource for information and guidance in relation to the steps and requirements for various processes concerning Australian trade mark applications and registrations, including: the filing and prosecution of procedural trade mark applications; trade mark oppositions; the renewal of trade mark registrations and various administrative matters concerning such applications and registrations.

All Australian firms of patent attorneys have registered patent attorneys and trade mark attorneys who are qualified to advise and provide assistance in relation to all aspects of trade mark law and practice concerning the registration of trade marks in Australia. A list of Australian patent and trade mark attorney law firms is located in the website of the Institute of Patent & Trade Mark Attorneys of Australia (IPTA) (see under 'Find an Attorney').