Samantha Joseph provides a summary of some recent decisions in relation to the Australian trade mark system and an overview of proposed legislation which would amend the existing Trade Marks Act 1995 (Cth).
What is a trade mark?
The Trade Marks Act 1995 (Cth) (Act) defines a trade mark as a sign which distinguishes goods or services from any other person’s goods or services. A sign includes but is not limited to, a word, colour, or name.
Trade mark registration requires that the sign must be inherently capable of distinguishing one person’s goods or services from another. Where a trade mark is similar to another in trade then it is not distinctive and incapable of registration.
There are a number of ways that a trade mark can be opposed or deregistered. One way a trade mark can be deregistered is where it is not actively used. The following case is an example of where a registered trade mark was found to be inactive and as a result, was deregistered.
The deregistration of the trade mark term ‘ugh-boot’
In 1999, Deckers Outdoor Corporation (Deckers) registered the term ‘ugh-boots’ in Australia. Deckers began trading in Australia as Ugg Holdings Inc. This meant that as trade mark owners they had the right to prevent other companies from trading, advertising or otherwise using the term as a trade mark. A trade mark owner can bring a court action against someone who infringes these exclusive rights.
On 7 May 2004, a removal application was lodged by two Australian traders Bruce and Bronwyn McDougall (Applicants) under section 92 of the Act claiming the registered term ‘ugh-boots’ had been not been used or used in good faith by Deckers between 30 November 2000 and 30 November 2003. Deckers opposed the removal application.
Deckers tendered as evidence an advertisement which featured in the Sydney Morning Herald on 3 November 2003. The advertisement promoted their products by using the terms ‘ugh boots’ and ‘ugg Australia’ but did not use the registered term ‘ugh-boots’.
The Registrar concluded that the failure of Decker to include the hyphen or to misspell the term meant that the registered trade mark was not used. The identity of the trade mark was affected by the absence of the hyphen between ‘ugh’ and ‘boots’.
An applicant can also establish that a term is generic and therefore not capable of being a trade mark, by show that the word or phrase is or has come to be a common term associated with a particular category of goods or services to which it relates.
The question to be asked here is does the term ‘ugh-boot’ have the capacity to distinguish the goods of one ‘ugg’ boot producing company from another? Whilst there was no specific finding on whether the terms were or are generic, the registrar held that because ‘ugh’ had numerous variants, the trade mark was considerably weakened.
On 16 January 2006, the Registrar decided that the trade mark had not been used and made a direction that the trade mark be removed from the register. Costs were also awarded against Decker.
The case raises the critical and practical point of ensuring accurate usage of a trade mark at all times to prevent a trade mark being deregistered because of non use.
Two other removal applications are awaiting hearing in relation to Decker’s trade marks ‘ugh’ and ‘ugg Australia’ so watch this space…
Cadbury – is the colour purple distinctive?
The Cadbury cases were argued on numerous grounds including misleading and deceptive conduct under the Trade Practices Act 1974 (Cth), the common law tort of passing off (trading on the reputation of a well known person/organisation) and for the purposes of this article, an application made by Cadbury to register the colour purple in relation to the packaging of block chocolate and boxed chocolates. The company opposing the trade mark application for the colour purple (as a series of colours) was Darrell Lea Chocolate Shops Pty Ltd.
Whilst it is not relevant to discuss in detail the trade practices aspects of this case, it is important to note that Heerey J of the Federal Court, found that “Cadbury does not own the colour purple and does not have an exclusive reputation in purple in connection with chocolate” and “Darrell Lea is entitled to use purple”.
In separate proceedings in which Cadbury applied for a trade mark over the colour purple, a Delegate of the Registrar of Trade Marks (Registrar) determined that Cadbury was permitted to register the colour purple as a trade mark only so far as the colour be used for specific packaging of block chocolate and box chocolates.
Darrell Lee opposing the registration, argued that the colour purple is generic and therefore incapable of registration as it is not distinctive enough to distinguish Cadbury’s goods from other related goods.
Nevertheless, the Delegate of the Registrar found that the colour was eligible for registration as it was capable of distinguishing its block and boxed chocolates to other related products, but not capable of distinguishing itself from chocolates in general. The Delegate also would only permit registration of the trade mark if the application was restricted to one colour, not a series. Darrell Lea has appealed this decision so again, watch this space…
BP – is the colour green distinctive?
BP and Woolworths are retailers who use a distinctive shade of green as part of their branding. This case involves a dispute over the trade mark registration of the colour green.
A single judge of the Federal Court granted BP a trade mark for the colour green for their service station buildings and facilities. This decision was made after the Registrar had previously refused to register two applications made by BP for the colour green in relation to certain classes of goods and services.
The judge considered whether the colour green was capable of distinguishing itself from other related goods or services, to the extent that consumers would associate the colour with the brand. The judge found that despite BP’s get-up consisting of other features (ie. the colour yellow and shield) the colour green was capable of separating itself from the other components and was eligible for registration.
Woolworths opposed the trade mark registration claiming that the colour green is incapable of distinguishing BP’s goods from other related goods.
Woolworths was granted leave by the Federal Court to appeal to the full Federal Court.iii Before the issue of the registration of the colour green could be considered however, the full Federal Court first had to look at a number of substantive issues regarding the process for registration and rectification of a trade mark. Specifically the court had to consider whether a Registrar was required to register the trade marks once the Federal Court’s single judge decision was made and whether once the trade marks were registered, if the full Federal Court on appeal had the capacity to correct the register.
Obviously, the outcome of the above issues are essential in determining whether, in the event that Woolworths won the appeal, the court could then deregister the existing trade mark.
The majority of the court ruled that a Registrar is not required to register a trade mark until the appeal process is completely finished (ie. until after the final court decision is made). The majority also held that the full Federal Court on appeal possessed the power to rectify the Register by removing trade marks.
Now these procedural issues have been decided, we await the decision of the court on appeal as to whether BP’s colour green trade mark will remain registered.
Recently, the Intellectual Property Laws Amendment Bill (Cth) 2006 and the Trade Marks Amendment Bill (Cth) 2006 were introduced into Parliament.
A specific change included in the Intellectual Property Laws Amendment Bill (Cth) expands the powers of the Registrar in appropriate circumstances, to revoke the registration of a trade mark where registration had been permitted because of an administrative oversight or error.
The Trade Marks Amendment Bill proposes a significant number of changes which aim to strengthen trade mark rights and provide trade mark owners as well as the general public with greater certainty. Specific proposed changes will:
- allow series applications to be multi-classed;
- allow any person, aggrieved or not, to make an application to remove a trade mark from the register due to non-use; and
- allow the Registrar to initiate court action to amend or remove a trade mark from the register on the basis that it is in the public interest.
Sam Joseph is a solicitor at Arts Law
Trade Marks Act 1995 (Cth) s 6
Ibid s 17
Woolworths Ltd v BP PLC  FCAFC 52