Trade Mark Law

What is a trade mark:

“products are made in the factory but brands are made in the mind”
Walter Landor- Brand design legend, and founder of Landor Associates

It was once famously said that products are made in the factory but brands are made in the mind. In practise, this is very true. A brand injects identity and personality into your product or service.

In today’s market, the brand name can be a major differentiating factor between competing products and also protects your goodwill and reputation. A trade mark is essentially a “sign” that distinguishes your goods or services from those of other traders. It acts as a “badge of origin” or “badge of quality”.

When consumers see a particular trade mark they can assume that it comes from a particular source or quality and this can influence them to buy the product or use the service.

The laws in Australia allow you to protect your distinctive brands as trade marks.

This way you can prevent consumer confusion and your valuable goodwill and reputation.

“trade marks assist customers to identify with your goods and services. They allow you to maintain your goodwill and reputation improving your bottom line”

Benefits of trade mark registration
A trade mark registration essentially gives you the exclusive right to use the marks or marks in Australia for the goods or services for which you have registered it (subject to some exceptions such as someone else having had honest concurrent or prior continuous use). 

Once your trade mark becomes registered, you can ward off others from copying it by using the well known “®” symbol to show other traders your company owns the trade mark(s). Other benefits include:

• A trade mark is a valuable asset that can be licensed to others and sold;
• If another person infringes your trade mark then having a trade mark registration makes it much easier to enforce your rights against them; 
• Unlike a business name registration, registered trade mark rights are Australia-wide; and
• A trade mark registration can be renewed every ten years so is potentially perpetual.

Legally speaking, what makes a strong trade mark?
A trade mark can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or any combination of these.

Trade marks that can be very difficult to register include:

• Descriptive words - for example, trade marks that say something about the quality, quantity, purpose, value or geographical origin of the goods or services. The reason for this is that other traders might have a genuine need to use these words. Examples are the words: classic, less, budget, Victorian and health
• Suggestive marks that merely suggest some quality or characteristic of the services
• Common surnames and common symbols
• Generic words
• Common industry terms or colours

Examples of strong well known registered trade marks:
Invented words such as arbitrary or fanciful terms are a good start if you are developing a new trade mark and want to enhance your chances of registration as it is less likely that someone else might have them registered.

The more unusual and original the mark is, generally speaking the more distinctive it will be. Examples of well known distinctive that are registered in Australia include:

Words: Kodak, Vegemite, Solo, Prima, Twisties, Qantas, Berlei, Rexona, Pamolive, Bonds, Adidas, Sunsilk, Visa and Huggies

Logos: the Coca-Cola logo, the Nike swish tick and, of course, the “Golden Arches” McDonalds restaurant chain M which stands out

Colours: the colour orange for Veuve Clicquot sparkling wine and for telecommunications services. Cadbury has been trying to protect its special shade of purple that it uses for packaging for chocolate in Australia as a trade mark.

Photography courtesy of Simon Watts © 2008

Shapes: The prism shape of Toberlone chocolate and the shape of the curvaceous Coca-Cola bottle

Sounds: various advertising jingles

Taglines and slogans: Moments like these, Oh What a Feeling and Make it a Blockbuster Night are good examples

Aspects of packaging: The Toberlone triangular chocolate packaging, the blue Tiffany’s box and, a company has even registered the red wax tip of their bananas! (see picture below)

Restaurant fit out: Eagle Boys Pizza have registered the 'pink glow' for its restaurant lighting (described as “a pink glow created by a row of pink coloured lights extending along a fascia of a building or a pink glow created by pink coloured lights mounted on the exterior or interior walls of a building”)

Other novel trade mark registrations
the red stripe applied to the applied to the heel of a shoe registered by Prada since 2001

Surnames
Surnames can usually be registered as trade marks if they are not too common. This will largely depend on how many times the surname appears on the Australian electoral role or whether the surname has been used extensively over time. Examples of surnames registered in Australia are:

• Cadbury (for chocolate)
• Heinz (for soup)
• Smiths (for potato crisps)
• Kellogg (for breakfast cereal)
• Cristina Re (for stationery)

English words
Ordinary English words might also be capable of registration so long as they are not descriptive of the goods or services. Examples of registered marks in this category are:

• PICNIC (for chocolate bars)
• SOLO (for soft drink)
• SHELL (for petrol)
• APPLE (for computers)
• ROSELLA (for foodstuffs)
• FLAG (for accommodation services)
  

Consumers know to look for the red wax tip if they want to buy environmentally friendly Red Tip Eco Banana from North Queensland, Australia.

The trade mark registration process
Trade mark registration does not happen overnight. In fact, it takes at least 7 months before a trade mark application can be accepted in Australia. Once it is accepted by it is advertised as accepted and any person can oppose the mark during the three month “opposition period”. The grounds on which someone might oppose include:

• That the trade mark is not being used as a trade mark
• The mark is not distinctive
• The mark is scandalous
• The mark infringes someone’s copyright
• The mark is likely to deceive or cause confusion amongst the public
• The mark is too similar to another existing or pending trade mark registration

Examples:

McDonalds takes on McChina
Back in 2004, fast food chain, McDonalds Corporation, opposed registration of the mark McChina for restaurant services for Chinese food which the applicant (Lubowski) tried to register as a trade mark. One of the grounds was that the use of the mark McChina would be misleading, especially since McDonalds was in the practise of inventing trade marks for food and beverages services with the prefix “Mc” (examples are McFlurry, McChicken, McMuffin, McWraps, McChiller and McDippers to name a few). Given this, and that McDonalds had a history of extending it menu to ethnic style foods, the Registrar decided that the McChina mark could not be registered and McDonalds succeeded in its opposition.

Coca Cola takes on Sola Cola
In 1999 The Coca-Cola Company opposed the registration of the mark Sola Cola on the grounds that they were too similar to its trade marks Coca Cola and SOLO, which were registerd for similar goods. The Registrar agreed and the opposition was successful.

What does it mean to use something as a trade mark?
It is one thing to use a particular word or logo, but before considering trade mark registration it is important to ensure that you are using the word as a trade mark. This means that you are using it as a brand to show consumers that the goods are services are yours and not as, for example, a descriptor or something else.

Examples:
Kettle Cooked Chips
In 1996, The Kettle Chip Co was unsuccessful in suing another company for using the term “kettle cooked”. Even though The Kettle Chip Co owned the trade mark KETTLE for potato chips, the judge took the view that when the other company they sued used the phrase “THINS - Double Crunch Kettle Cooked Potato Chips”, they were not using it to describe where the chips were from (ie as a brand) but rather to describe the process in which the chips were cook. The Kettle Chip Co lost the case.

Vintage Cheese
In contrast to this case above,  1998, a New Zealand court had to decide whether Bonlac foods infringed Mainland Products’ trade mark for the words VINTAGE for cheese on its BEGA cheese products. The court took the view that VINTAGE was not a descriptive term as its normal meaning does not describe any characteristic of the cheese (compare to tasty or mild, and compare to wine where the word VINTAGE does have a particular meaning). Mainland’s opposition was therefore successful.

Searches are important 
When you choose a new trade mark you should always ensure that you obtain search of the trade marks office database and other goods and services existing in the market place to ensure that you won’t be infringing any existing trade marks.

Trade mark services we provide:

• Trade mark and brand protection including overseas
• Conducting thorough trade mark and marketplace searches
• Training your in-house marketing staff in relation to what makes a strong brand and what types of new brands they should steer away from
• Developing trade mark usage guidelines for your trade marks to ensure consistency of use by staff within your business and external contractors such as graphic design agencies and printers.
• Ensuring that you display proper symbols in conjunction with your trade marks
• Considering overseas protection as and when relevant

We can also file trade marks for overseas companies.

Copyright Law

What is Copyright?

Copyright is the right to prevent copying and no registration process is necessary to protect it.  It provides free and automatic protection for an author's original expression of ideas and information captured in a specific medium. The moment an idea is put down in a material form, such as on paper, recorded on tape or stored on a computer disk, it is automatically protected by copyright. Because copyright protection is automatic in Australia, there is no official registry or application process for copyright protection.

All that is required is that the material or work protected through copyright is original and the test for “originality” is not high.  In Australia, independent effort is sufficient.

Copyright protects various works including written works, visual images such as graphics and artistic works, music and moving images. Copyright laws in Australia protect the form or way an idea or information is expressed rather than the idea or information itself.

There is no such thing as the ten percent rule
While many people believe that you can change something by ten or twenty percent and they will not be liable for copyright infringement this is wrong. The actual test for infringement is whether there has been a “substantial reproduction” and the test is based on both the quality and quantity of what is taken. This means that copyright can be infringed even if an important part of the work is taken even if it is not substantial in terms of quality.
The other thing to bear in mind is that the work copied does not have to have any literary or artistic merit for copyright infringement to arise. The Australian courts have recently taken the view that Telstra could sue a software company for producing CD ROMs that reproduced information in Telstra’s telephone directories.

“The courts in Australia have often taken the view that what is worth copying is worth protecting”

Examples of copyright works: written material, databases, lists and tables, art works, graphics, logos, business documents and marketing material, packaging, crafts, sculpture, music, performances, films and ads.

Mass produced designs - While copyright provides protection for one off “original artistic works” such as drawings, jewellery and sculptures, it does not apply to designs which are mass-produced therefore design protection might be more appropriate to protect unauthorised copying of the design.

Services that we provide in this area include:

• Ensuring that your business owns the copyright in works created for use in connection with your business such as logos, photographs, advertising copy, brochures, websites and otherwise
• Drafting copyright deeds of assignment to transfer ownership of copyright of works created by independent contractors to your business
• Training your staff in relation to copyright issues and how to avoid infringing someone else’s copyright
• Advising on whether someone else’s use of your materials (eg graphics, written works or music) is infringement your copyright
• Advising whether your material might be infringing someone else’s copyright
• Assisting to obtain copyright permissions
• Moral rights matters including changing works and authorship issues
• Advising on the use of © notices and their effect
• Training your staff on the legalities of using third party material
• Understanding copyright law and using the appropriate copyright notices
• Understanding moral rights and how they might apply to you 
• Drafting copyright documents including copyright licences, permissions and assignments

Design Law

What are designs?
Designs are those features of shape, configuration, pattern or ornamentation which create the visual appearance of an article. A registered design can be a valuable commercial asset as it can prevent others from copying your design.

The Designs Act enables “new and distinctive” designs to be registered by their creators for up to ten years.
A design will be “new” if an identical design (or one very similar) has not been publicly used in Australia or published in a document within or outside Australia (including on the internet). It will be “distinctive” if it is not substantially identical in overall appearance to other designs already in the public domain. Therefore, it is important that you register your design as soon as possible once you have created it and keep it confidential so as not to risk your chances of obtaining a design registration.

A design will be infringed if another person makes, imports or sells a product that embodies a design which is neither new or distinctive when compared to the registered design.

The initial period of registration for your design lasts for five years from the date of filing and in most cases, can be renewed for a further five years. After ten years, you cannot renew the design again.

Examples of designs that might be registered include:
The shape and visual appearance of the iconic Speedo’s men’s bathers have, in the past, been registered as a design. Others include:

• An electrical jug for heating liquids
• The design of Ken Done bed linen
• A Dunlop tyre
• A folding chair
• A toy rocking kangaroo
• The shape of a  portable cooler
• The shape of the two door Holden Monaro car

Many designs of food, beverage and cosmetics packaging are also registered as designs which allows the owners of these businesses to gain a competitive edge over the appearance of the articles and secure returns. 

Services that we provide in this area include:

• Advising on whether a design might be registrable
• Applying for a design registration
• Disputes concerning designs
• Advising generally on how to maximise protection of a design
• Drafting confidentiality agreements in relation to the disclosure of designs

A patent basically protects the way things work. It is a right granted for any device, substance, method or process which is new, inventive and useful.

A patent gives the owner the exclusive right to commercially exploit the invention for the life of the patent.  The two types of patents in Australia are:

• standard patents, which give long-term protection over an invention for up to 20 years; and
•  an innovation patent, which lasts up to 8 years and is usually more suitable for simple innovations.

Here are some examples of Australian inventions that have been patented in the past:

• The Hills Hoist (rotary outdoor clothes hanger)
• Cochlear's Bionic Ear a device designed to help the hearing impaired and the profoundly deaf who are unable to benefit from traditional hearing aids
• The Victa lawn mower - a two-stroke petrol lawn mower is a light weight mower with sufficient power in its rotary-action blades to deal with long thick grass

Remember with patents that keeping your idea confidential is crucial. If you talk about your invention to others or display it in public before you file a patent application, you can lose the opportunity to patent it. Confidentiality agreements can be useful in this regard and we can provide you with legal advice on how best to handle this.

Product and marketing information is provided to consumers in various ways including on the product itself, on swing tags, labels, packaging and flyers, through the branding, in advertisements on websites and via marketing campaigns. Each of these forms of communication are governed by various laws and regulations.

The laws that impact on marketing and advertising practises include the Trade Practices Act (which prohibits misleading and deceptive conduct and the making of false representations and also regulates product safety through product liability provisions). The Fair Trading Act applies to individuals.

In addition to laws regulating marketing and advertising, there are hundreds of laws in Australia which prescribe specific labelling requirements for products, including for clothing, food, cosmetics, electrical items, toys and the list goes on. Specific laws also apply to weights and measurements labelling, name and address labelling, exporting and importing and pre-packed goods.

Services that we provide in this area include:

• Providing advertising copy review, including advising (for example, in relation to comparative advertising, misleading and deceptive advertising and unauthorised use of personalities and checking whether exaggerated claims might be taken to be misleading) 
• Labelling law advice including:
  • Country of origin labelling (phrases such as “Made in” and “Product of”)
  • Weights and measurements laws
  • Product specific laws such as food, cosmetics and electrical goods labelling requirements
  • Product liability issues – making sure goods are labelled in a manner that ensures consumer’s safety (for example the proper use of warnings and safety instructions and ingredients labelling or specific risks associated with the use of a particular product such as swallowing of small parts in toys)
  • Environmental or green claims
  • Price reduction claims
  • Therapeutic goods labelling and advertising claims

This list is by no means exhaustive.

IP Audits

Our firm also provides IP Audits (or legal “health checks”) to check that your intellectual property is being properly protected.

This involves:

• identifying what intellectual property you own;
• putting measures in place to ensure that it is properly protected (this could involve filing trade mark registrations, ensuring that you are using your trade marks in the right way; using correct IP symbols such as ©, ® and the ™; symbols and drafting copyright deeds of assignment to transfer ownership of copyright created by independent contractors to your business) and
• putting systems in place to ensure that IP is maintained.
  

Confidential Information

What is confidential information?
Information and trade secrets consists of information that is not in the public domain. Confidential information is not protected by law in the sense of being registered but by making sure that the information remains protected and confidential.  This is generally done by agreements.

Examples of Confidential Information include:

• Customer trading lists;
• Recipes and formulas;
• Processes;
• Business information;
• Marketing strategies; and 
• Marketing, branding and financial figures of a company.

Services that we provide in this area include:

• Identifying your business’s confidential information
• Ensuring that your staff understand their obligations in relation to confidentiality
• Drafting confidentiality agreements before you disclose an idea to a third party
• Advising on employee confidentiality issues and restraint of trade
• Advising on how to manage your company’s confidential information and what procedures to put in place to do this

Remember to that if you disclose an invention or design in the public domain before applying for a patent or design registration, this can invalidate your chances of obtaining registration hence confidentiality agreements are crucial if you need to disclose the information to make prototypes or enter into business discussions with other people.

Consumer Law

The images and content that you place on your packaging, website and other promotional and marketing materials is regulated under Australia’s consumer laws.

In Australia, this covers a very broad range of topics that might necessitate the following considerations when you create advertising, post material online and develop packaging for your products:

• Character merchandising laws (ie using the names, images and likenesses of other celebrities and famous characters in your marketing or advertising or in connection with your products)
  
• Use of endorsements and sponsorships
  
• Model releases when using images of other people in your company promotional materials
  
• Photography and the limits on photographing public places
  
• The laws of misleading and deceptive conduct which include:
  • product liability laws,
    
  • warning statements on packaging
    
  • bait advertising
    
  • price reductio
    
  • country of origin labelling
    
  • green labelling
    
  • Cosmetics labelling
    
• The fine line between exaggeration and false and misleading advertising
  
• Comparative advertising when is it legal and how far does the law allow you to go?
  
• The use of low fat claims and health claims
  
• Food laws
  
• The law of passing off which involves passing off the goodwill or reputation of another trader as your own
  
• Online marketing and domain name matters
  
• Cyber squatting and the use of metatags
  
• Copyright considerations - to what extent can you protect an idea or concept?
  
• The importance of compliance programs
• Name and address and weights and measurements labelling

and more…..

Our firm provides advice in all aspects of consumer law including online material, advertising copy and product labelling. We understand the need for your product to go to market quickly and can provide legal advice within tight deadlines.