I OVERVIEW

Australian trademark law is largely based on one key statute: the Trade Marks Act 1995 (Cth) (TMA). This legislative framework provides the foundations for general trademark protection in Australia, in addition to establishing certain specialised forms of trademark protection (such as certification marks).

Australian trademark law has also developed through judicial precedent, particularly in relation to passing off (a common law cause of action in Australia), and is further supplemented by consumer protection legislation (specifically, a cause of action for misleading and deceptive conduct). This chapter provides an overview of Australian trademark law and describes in detail the process for registering and enforcing a trademark in Australia in both a civil and a criminal context.

There have been a number of interesting trademark decisions in the Australian courts over the past 12 months, some of which are discussed in this chapter, including in relation to the control requirements for assessing trademark use in the context of intra-company arrangements, the role of reputation in assessing deceptive similarity, and the importance of intellectual property due diligence. In addition, a number of amendments to the TMA have now entered into force, relating to the grace periods for removal of trademarks for non-use and the parallel importation provisions. The immediate anticipated impacts on Australian trademark law are explored in the chapter.

In Australia, as in other jurisdictions, the emergence of new technologies and tools for analysing data are likely to have an increasing impact on IP-related policy and practice in the coming years.

II LEGAL FRAMEWORK

i Legislation

The statutory framework for trademarks in Australia is the TMA, which was enacted, among other things, to comply with Australia’s obligations under TRIPS2 and to address the findings of a government Working Party Report on trademark law reform.3

International trademark treaties do not have direct effect in Australian law. TRIPS and the Paris Convention4 form part of the trademark legislative framework only to the extent that they have been implemented by national legislation. Generally, implementation of international conventions has been effected through the TMA. For example, Section 29 of the TMA provides a right of priority in Australia for trademark applications that have been filed in another Paris Convention country within the past six months.

The other international convention of particular relevance to Australian trademark law is the Madrid Protocol.5 This created a centralised international trademark registration system, whereby an application for a trademark may be filed in one jurisdiction and then assessed by multiple national trademark offices (resulting, if successful, in a series of national trademarks).

ii Authorities

The Trade Marks Office, which is a division of IP Australia, is responsible for trademarks in Australia. IP Australia itself is a government agency within the Department of Innovation, Industry, Science, Research and Tertiary Education.

The Trade Marks Office is organised under the Registrar of Trade Marks, a role established by the TMA.6 The Registrar of Trade Marks receives, examines and reports on trademark applications made under the TMA and is responsible for assessing whether a trademark application complies with the TMA.7 Other functions include determining disputes as to the classification of goods and services, and overseeing proceedings for the removal of a trademark from the register. Pursuant to the TMA, the Registrar of Trade Marks also has powers to summon witnesses, receive evidence, require the production of documents, award costs in proceedings before the Registrar and notify any person of any matter that the Registrar considers should be brought to the person’s notice.8

iii Substantive law

The primary statutory framework for trademarks in Australia is the TMA. In addition to the general trademark protection offered under the TMA, there are legal frameworks creating certain special categories of trademarks.

Sections 168 to 183 of the TMA provide a framework for certification marks, which are a form of trademark used to distinguish goods or services that have been certified by the owner of the certification mark as having a certain quality or other characteristic.

Plant varieties may be protected under the Plant Breeder’s Rights Act 1994 (Cth). The Australian Grape and Wine Authority Act 2013 (Cth) and the Australian Grape and Wine Regulations 1981 (Cth) set out criteria for determining whether wines are protectable as geographical indications.

The registered trademark rights described above enjoy legal protection within statutory frameworks. There is no equivalent statutory framework to protect unregistered trademarks, and no specific law prohibiting unfair competition exists in Australia. However, the common law tort of passing off (which has its origins in English law) and the statutory cause of action of misleading and deceptive conduct found in Section 18 of the Australian Consumer Law9 (ACL) may provide relevant actions.

Business names may be registered on the Australian Business Names Register, which is administered by the Australian Securities and Investments Commission. The Business Names Registration Act 2011 (Cth) and the Business Names Registration Regulations 2011 (Cth) provide the legal framework for business name registrations in Australia. This does not afford any proprietary right over the registered business name but rather is a regulatory requirement.

Domain name policy in Australia is administered by .au Domain Administration Ltd (auDA) pursuant to a government appointment. Domain name registrations in Australia are subject to auDA’s policies rather than a legal framework. Licences in respect of domain names do not afford a proprietary right over the names unless those domain names are used as trademarks.

III REGISTRATION OF MARKS

Trademark applications in Australia are usually completed online and the government cost is calculated per class, ranging from around A$250 to A$480 per class (depending on the method chosen and the type of mark). As of October 2016, no separate fees are payable upon registration of a mark. Trademark registrations must be renewed every 10 years, at a government cost of around A$400 per class.

Applications are typically examined within three to four months (although it is possible to apply for an expedited examination). The examiner will consider the application to confirm that it meets the TMA registrability requirements and all relevant formalities. If accepted by the examiner, the trademark will be advertised and open for opposition for two months. If no oppositions are received, the mark will proceed to registration with the priority date being the date of the application. If the application receives an adverse examination report, the applicant has 15 months from the date of the report for the application to be accepted (that is, to respond to the examiner’s objections and have the examiner consider this response and reconsider the application in light of the response), with extensions of three or six months available upon payment of additional fees.

As Australia is a signatory to the Madrid Protocol, applicants for, or owners of, registered trademarks in Australia can use their applications or registrations as a basis to apply for international protection in any of the Madrid Protocol contracting countries. Applications are assessed by the relevant national offices and, if successful, marks are granted effectively the same protection in the chosen countries as they have in Australia. As with national marks, international trademark applications may be filed through IP Australia. Conversely, trademark owners overseas can designate Australia in their Madrid Protocol international trademark applications. These applications are assessed by the Trade Marks Office in Australia in the same way as national applications and, if granted, registration gives the overseas owner the same protection as if they had applied for a national mark in Australia. Use of the Madrid Protocol for international filings can be significantly cheaper and easier than applying for national trademarks in each country.

Australia is also a signatory to the Paris Convention, so that applications first filed in Australia can be filed in another Paris Convention country within six months, claiming the filing date from Australia. Foreign applicants can file in Australia in the same way. This means that no Australian application can progress to registration in less than six months to allow for priority claims.

i Inherent registrability

To be registrable under the TMA, a trademark must be a ‘sign used or intended to be used to distinguish the goods or services dealt with or provided in the course of trade by a person’ from the goods or services provided by another person.10

The definition of a ‘sign’ in the TMA is extremely broad. A sign can be any of, or any combination of, the following: letter, word, name, signature, numeral, device, brand heading, label, ticket, aspect of packaging, shape, colour, sound or scent.11

To be registrable, a trademark must therefore satisfy the requirement of being capable of distinguishing – either because it is inherently distinctive, or because it has acquired distinctiveness through use so that in practice it serves to distinguish the goods or services of the owner.

A note to Section 41(1) of the TMA provides that a trademark is not likely to be inherently distinctive if it consists wholly of a sign that is used to indicate characteristics of the goods or services or the time of production of the goods or rendering the services. This guidance is considered in the context of the goods and services for which registration is sought – a trademark that lacks distinctiveness for one class of registration may still be inherently distinctive in relation to another.

The examiner will object to an application if the trademark is considered to be descriptive or lacking distinctiveness.12 Applicants may be able to overcome this objection by demonstrating inherent distinctiveness or by providing evidence of use to demonstrate that the mark has acquired distinctiveness and now serves as an indicator of their organisation.13

It is possible to register a trademark for a domain name but to do so, the trademark owner would need to overcome the distinctiveness hurdles described above. Domain names are unlikely to be inherently distinctive and instead must acquire distinctiveness so as to distinguish the goods or services offered under that domain as originating from an organisation. Even if the composite parts of a domain name would otherwise be descriptive (such as ‘realestate.com.au’), if the domain name has acquired a secondary meaning so as to identify goods or services as originating from an organisation it has in fact acquired distinctiveness and may be registrable as a trademark.14

ii Prior rights

The examiner will also raise an objection if the trademark is considered substantially identical or deceptively similar to an earlier registered or pending trademark, and covers similar or closely related goods or services.15 Applicants may be able to overcome such objections by demonstrating honest concurrent use, prior use dating from before the priority date of the cited mark, or some other circumstances that satisfy the examiner that the mark should be registered.16

iii Inter partes proceedings

Once an application has been advertised, third parties can oppose the registration of a trademark on various grounds, including:

  1. the grounds for rejection of an application discussed in subsections i and ii, being a lack of distinctiveness or the existence of prior rights;
  2. that the applicant is not the rightful owner of the trademark, is not intending to use the mark or has made the application in bad faith; and
  3. that the trademark is similar to another (unregistered) mark that has acquired a reputation in Australia, such that the registration would be likely to cause confusion among consumers.17

Third parties may also write to the Registrar seeking revocation of acceptance of a trademark application if they consider that IP Australia has made an error in accepting an application, usually because of a prior right missed in IP Australia’s search. It is at IP Australia’s discretion whether to revoke acceptance, and such requests are rarely granted. Third parties can also apply to remove a registered mark if:

  1. the owner has not used the mark for a continuous period of three years prior to the date of the application;
  2. the owner did not have any intention to use the mark when it was registered; or
  3. the owner has not used the mark in good faith.18

If the owner of the mark wants to retain its registration, it must oppose the removal claim.

The inter partes proceedings described above (except revocation) are heard by a Hearing Officer from the Trade Marks Office, to whom both parties provide written submissions and evidence in advance of the hearing and verbal submissions on the day of the hearing, although it is possible to have an opposition decided based on written submissions alone. The Officer will provide a written decision and reasons within three months.

iv Appeals

Either party may appeal to the Federal Court of Australia (FCA) or the Federal Circuit Court (FCC) within 21 days of the decision. Appeal hearings are de novo, so that new evidence and arguments can be introduced.19

IV CIVIL LITIGATION

Common causes of action for civil litigation are trademark infringement under the TMA, the common law tort of passing off, and for misleading and deceptive conduct under the ACL.

i Forums

The FCA, FCC and supreme courts of the various states and territories can all hear claims regarding trademark infringement, passing off and misleading and deceptive conduct; however, in practice, these claims are typically brought in the FCA.20 Intellectual property is one of nine specialised national practice areas (NPAs) for the purposes of FCA hearings, and trademarks is a sub-area within the intellectual property NPA.

In July 2018, the FCC introduced a new practice direction to streamline the management of IP matters and increase the visibility of the FCC as a cheaper and more efficient alternative to the FCA. All IP proceedings in Australia are initially docketed to, and case managed by, a single IP specialist judge based in the Sydney Registry, who is supported by other specialist judges within the IP NPA of the FCC. The intention is that overall costs will be lower (especially due to the limited length of trials and the ability to make orders for capped costs) and that matters will proceed to hearing more quickly compared with the FCA; however, at this early stage, it remains to be seen whether this new option will be taken up enthusiastically by litigants.

ii Pre-action dispute resolution

Alternative dispute resolution (ADR), including mediation, arbitration and expert determination, is strongly encouraged as an alternative to litigation. It is a requirement prior to launching proceedings in the FCA or the FCC that proper attempts have been made to resolve the dispute between the parties.21

As one means of encouraging ADR, IP Australia offers an IP Mediation Referral Service, which aims to provide small and medium-sized enterprises (SMEs) with access to qualified, accredited specialist mediators to resolve their disputes out of court. There are currently over 25 trademark specialist mediators listed on the service, although it remains to be seen how widely this will be adopted by SMEs as an alternative to formal legal action.

iii Causes of action

The owner of a registered trademark can bring an infringement claim against another party if that other party uses as a trademark a sign that is either identical or deceptively similar to the owner’s registered trademark.22 There are, however, numerous defences to alleged infringement, including the use of a name or business location in good faith, descriptive use in good faith, use in comparative advertising, and prior and continuous use.23

Trademark infringement claims are often brought in conjunction with claims for passing off and misleading and deceptive conduct. These causes of action depend upon whether consumers have been, or are likely to be, misled or deceived as to the origin of the respondent’s goods or services, incorrectly believing that they come from or are affiliated with the applicant. Where the applicant has unregistered trademarks or suffers misuse of company, trade, business or domain name, the applicant will have to rely on these causes of action.

The leading authority on passing off requires a misrepresentation made in the course of trade (1) to prospective or actual customers of goods or services supplied by the injured party; (2) that is calculated to injure the business or goodwill of another trader; and (3) that causes actual damage to the business or goodwill of the claimant.24

The later English authority of Reckitt & Colman25 is also applied, in which the elements of passing off (often referred to as ‘the classic trinity’) were identified as (1) the existence of a reputation; (2) a misrepresentation leading or likely to lead the public to believe that the defendant’s goods are the plaintiff’s goods; and (3) damage suffered by the plaintiff as a result of that erroneous belief.

iv Conduct of proceedings

Court proceedings in Australia are similar to other common law systems with advocates (usually barristers) appearing in person before the courts.

For infringements requiring urgent restraint, the court has the power to order an interim injunction ordering that the alleged infringer ceases its action immediately, pending the outcome of the trial.

The court also has powers to require Anton Piller orders, which operate like a search warrant, allowing the applicant to search the alleged infringer’s property without notice and to seize evidence. Generally, these are only granted in serious cases where there is sufficient evidence that the subject of the order possesses important evidence and is likely to destroy it or otherwise cause it to be unavailable for use.

Substantive trademark infringement proceedings are commenced by a statement of claim. The alleged infringer then has the opportunity to reply to these claims. Following this, the parties provide each other with all relevant documents in their possession by way of discovery. Evidence in support of each aspect of the claim (including the quantum of damages) is then provided by the applicant, often by way of written statements, such as affidavits by relevant witnesses or experts, and evidence in answer is provided by the defendant. This evidence is likely to be tested by way of cross-examination of witnesses during a hearing, after which the judge will rule on the facts, apply relevant law to the case and issue a judgment. Court proceedings can be lengthy, and resolution of fully contested proceedings can take more than a year.

v Remedies

The court can grant an injunction to restrain further infringement, passing off or engagement in misleading or deceptive conduct, and at the option of the applicant, either damages or an account of profits.26 As a result of recent amendments, the court also has powers under the TMA to award additional punitive damages for trademark infringement if it considers it appropriate to do so, having regard to matters such as the flagrancy of the infringement, the need to deter others from similar conduct, the conduct of the infringer after the infringement (and, particularly, after being informed of the infringement) and any benefit the infringer has gained as a result of the infringement.27 This power has been used in recent cases where it has been difficult to establish actual loss or where infringement has continued following notice of the relevant trademark owner’s rights.28

V OTHER ENFORCEMENT PROCEEDINGS

The TMA and the ACL contain various criminal offences in relation to counterfeiting, which are brought by the Australian Federal Police or the Department of Public Prosecutions. In the case of the ACL, the Australian Competition and Consumer Commission has the power to commence proceedings. In Australia, it is a criminal offence to:

  1. falsify a registered trademark;
  2. falsely apply a registered trademark;
  3. alter or remove a trademark knowing it is a registered trademark;
  4. make a die, block, machine or instrument that can help in falsifying or removing a trademark;
  5. sell, possess, distribute or import a good, knowing that the trademark has been falsified or removed;29 and
  6. make certain false or misleading representations about goods or services, including in relation to the standard, history, value, place of origin, nature or characteristics of goods or services.30

The penalties for these criminal offences may include imprisonment or a fine. However, in practice, criminal proceedings are rarely brought and are typically confined to cases involving organised crime or public health and safety issues.

The TMA also contains a scheme allowing the Australian Customs Service (Customs) to seize imported shipments of goods suspected of infringing registered trademarks.31 Rights holders can lodge a notice of objection with Customs, listing the marks they would like to protect, and Customs then seizes goods imported into Australia bearing these marks if they are suspected of being counterfeit. The importer has a short time to provide grounds for releasing the goods, otherwise they are automatically forfeited to Customs and ultimately destroyed.

VI RECENT AND PENDING CASES

i Control requirements for assessing trademark use

The issue of the level of control required to establish whether a person is an ‘authorised user’ of a trademark in the context of non-use proceedings was considered by the Full Court of the FCA in the matter of Trident Seafoods Corporation v. Trident Foods Pty Ltd.32 Trident Seafoods brought non-use proceedings against Trident Foods in respect of TRIDENT-formative Australian trademark registrations, on the basis that the parent company was using the TRIDENT trademarks that were registered to its wholly owned Australian subsidiary.

The Full Court was required to consider whether the subsidiary had the requisite degree of control over the parent company’s trademark use. Relevantly, the companies had the same directors, registered address and principal place of business. The Full Court found that the two companies operated with a unity of purpose and that it was commercially unrealistic not to infer that the owner entity controlled the use of the marks by the parent entity, despite being its subsidiary. This was despite the fact that there was no evidence that the owner entity gave specific directions to the user entity about the use of the trademark, which is typically required in arm’s-length licence scenarios.

ii Relevance of reputation to ‘deceptive similarity’

A 2017 FCA decision33 regarding deceptively similar trademarks has been overturned on appeal by the Full Court of the FCA in the matter of Australian Meat Group Pty Ltd v. JBS Australia Pty Ltd.34 At first instance, the FCA found that the two marks, the AMH mark35 and the Australian Meat Group mark,36 while not being substantially identical, were deceptively similar, on the basis that both featured similar acronyms within a stylised map of Australia.

On appeal, the Full Court found that the primary judge had erred in considering the strong reputation of the AMH marks in his determination on deceptive similarity. Instead, the Full Court confirmed that the correct approach was to consider the combination of features making up each of the marks as a whole. These additional elements included the geometric ribbon element of the AMH mark and the lower case, cursive script, flowing map design and additional words ‘AUSTRALIAN MEAT GROUP’, as well as the differing last letters of each of the marks. As the trademarks were not deceptively similar, the Full Court held that there had been no trademark infringement.

This case emphasises that the reputation of a registered trademark is irrelevant to considerations of deceptive similarity, although, of course, it may be relevant to other causes of action, such as misleading and deceptive conduct or passing off (neither of which were ultimately advanced in this case).

iii Assignment of unregistered rights in get-up and trade dress

The decision in Kraft Foods Group Brands LLC v. Bega Cheese Limited (No. 8)37 provides an important reminder of the value in unregistered rights in get-up and trade dress, and how such rights can be assigned. In 2017, Kraft sold its Australian peanut butter business and various assets to Bega, which included a short-term licence to use various Kraft trademarks for a pre-defined period. Kraft intended that this licence was also to include its unregistered rights in its distinctive trade dress for its peanut butter products, which had been sold for decades with a recognisable bright yellow lid and a blue or red peanut device on the label.

When Bega continued to use the trade dress after the licence expired, Kraft sued Bega for breach of the licence agreement, contravention of the ACL and the tort of passing off. However, the judge confirmed the common law position that unregistered trademarks must stay and are intertwined with the goodwill of the business in respect of which they are used. Therefore, when it sold the Australian peanut butter business to Bega, Kraft had also in fact sold its rights in the peanut butter get-up and trade dress, and Bega was, therefore, entitled to continue using it.

VII OUTLOOK

i Amendments to the TMA

The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (Amending Act) was passed into law in August 2018.

From a trademarks perspective, the Amending Act contains an amendment to the TMA that came into force in February 2019, which amends the grace period before new trademark registrations can be challenged for non-use, from five years from the date of filing to three years from the date the registered trademark is entered onto the Register. This date is not the date the application is filed but the date when all issues have been resolved and all final fees have been paid. This is intended to assist with decluttering of the Trade Marks Register and, in most cases, will reduce the effective period before a trademark is vulnerable to removal (as most trademarks are registered within a year or less of application). In some instances, however, it could still be five years (or more) from the date of application before a mark is vulnerable to removal, if there are obstacles to registration that cause delay, such as an opposition to the registration.

The Amending Act also contains an amendment to the TMA, which clarifies that the parallel importation of marked goods does not constitute trademark infringement. ‘International exhaustion’ has been recognised by the Australian courts in recent cases and the amendment seeks to align the TMA with these court decisions and provide certainty for importers and trademark owners.

ii IP Australia Intellectual Property Data Platform

IP Australia has recently announced a new initiative called the Intellectual Property Data Platform, which contains all Australian IP data, as well as international data on patents and trademarks. It is intended for use by researchers and policymakers to review and analyse IP data to make decisions and create economic and policy insights. In April 2019, IP Australia released the TM-Link dataset onto the platform, which contains trademark data from Australia, Canada, the EU, New Zealand, the UK and the US, which users can link at the individual application level and compare against external datasets. The beta version is currently available for free trials, and is slated for release for general use by the end of 2019.


Footnotes

1 Frances Drummond is a partner and Isobel Taylor is an associate at Norton Rose Fulbright.

2 Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 UNTS 299, 33 ILM 1197 (1994).

3 Working Party to Review the Trade Marks Legislation, Recommended Changes to the Australian Trade Marks Legislation, Department of Science and Technology (Canberra, 1992).

4 Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979) 21 UST 1583, 828 UNTS 305.

5 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (as amended on 28 September 1979) 30 ILM 1455 (1991).

6 TMA, Section 201.

7 ibid., Section 31.

8 ibid., Section 202.

9 Competition and Consumer Act 2010 (Cth), Schedule 2 (Australian Consumer Law).

10 TMA, Section 17.

11 ibid., Section 6.

12 ibid., Section 41.

13 ibid.

14 REA Group Ltd v. Real Estate 1 Ltd [2013] FCA 559, Paragraphs 106 to 110.

15 TMA, Section 44.

16 ibid., Section 44.

17 ibid., Part 5, Division 2.

18 ibid., Section 92.

19 Registrar of Trade Marks v. Woolworths (1999) 45 IPR 411.

20 TMA, Section 190; Competition and Consumer Act 2010 (Cth), Sections 138, 138A, 138B.

21 Civil Dispute Resolution Act 2011 (Cth), Section 6.

22 TMA, Section 120.

23 ibid., Sections 122 and 124.

24 Erven Warnink BV v. J Townend & Sons (Hull) Ltd (No. 1) [1979] AC 731.

25 Reckitt & Colman Products Ltd v. Borden Inc (1990) 17 IPR 1.

26 TMA, Section 126; ACL, Sections 232 and 236.

27 TMA, Section 126.

28 See, for example, Halal Certification Authority Pty Limited v. Scadilone Pty Limited [2014] FCA 614 and Vertical Leisure Limited & Anor v. Skyrunner Pty Ltd & Anor [2014] FCCA 2033.

29 TMA, Part 14.

30 ACL, Chapter 4.

31 TMA, Part 13.

32 [2019] FCAFC 100.

33 [2017] FCA 1421.

34 [2018] FCAFC 207.

35 Australian trademark registration No. 515268 in class 29 in the name of JBS Australia Pty Ltd.

36 Australian trademark application No. 1616230 in classes 29, 35, 39 and 40 in the name of Australian Meat Group Pty Ltd.

37 [2019] FCA 593.