Trademarks (also spelled trade marks) in Australia are governed by the Trade Marks Act 1995 (Cth) as well as the Trade Marks Regulations 1995 (Cth). The legislation guides IP Australia in regulating trademarks in Australia so as to make sure it is consistent with international practices.
What are trademarks?
Section 17 of the Act states that a trademark must be a sign:
- That is used or intended to be used; and
- That is distinguishable for goods and services.
Section 6 of the Trade Marks Act 1995 (Cth) provides that a sign includes any one or combination of the following:
- A letter;
- A name;
- A signature;
- A numeral;
- A device;
- Aspect of packaging;
- A word;
- Sound; or
The above can be grouped into large categories which include colours, sounds, and shapes.
This is a relatively simple category. It deals with trademarks as being particularly recognisable colours. For example, the colour classified as TM #779336 is Cadbury Chocolates’ deep purple colour which has been trademarked.
For sounds to be trademarked, the sounds must be able to described in graphical form in accordance with section 40 of the Act. This is usually done by providing the sheet music of the sound to be registered.
The shape of a trademark can take several different forms:
- The shape of goods;
- The shape of the container or packaging holding goods (for example, the iconic shape of Coca Cola bottles); or
- The three-dimensional shape used in connection with the goods (for example, a door handle).
The test applied by trademark examiners to shapes are according to the Trademark Manual Part 21, Paragraphs 3.2, 3.3 and 3.4, which asks the following of a shape to be trademarked:
- Is the shape an ordinary or common shape for the goods in question, or a minor variation of that shape?
- Is the shape essential for the use or purpose of the article?
- Is the shape needed to achieve a technical result?
- Is the shape one of which offers an engineering advantage, resulting in superior performance?
- Does the shape result from a cheap or simple manufacturing method?
- Does the shape facilitate the manufacture, distribution or storage of the goods?
If the answer to any of those questions is yes, it is likely to not be distinctive enough.
In the case of Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd  FCA 876, Remington introduced a triangle layout to an electric shaver and Philips did something similar. Remington claimed Philips’ design infringed their trademark of that shaver. The Federal Court held that the reproduction of a functional shape did not constitute use as a trademark.
The court also found that, ‘something extra [must be] added to distinguish the products of one trader from those of another.’
Used or intended to be used
Section 17 and 27(b) of the Act requires there to be use or intent to use the trademark before it can be registered. This is so as not to allow ‘squatting’ on certain trademarks. You cannot register a trademark if you cannot provide evidence of your use or intent to use the trademark.
To Distinguish Goods and Services
Under section 41(2) of the Act it is a requirement that a trademark must be sufficiently distinguishable. A trademark application must be refused if the trademark is not distinct enough. This means that the trademark must have the capability of distinguishing your goods or services from another’s.
Goods are defined in section 44(1) of the Act and services are defined under section 44(2).
A trademark may be applied to products such as perfume scents, labelling, and how the packaging is designed and displayed.
Who owns trademarks?
Once a trademark is registered, it is owned by a registered owner. A registered owner under section 6 of the Act is a person or body of persons, whether incorporated or not, whose name appears on the trademark registration. This definition of registered owner was also agreed to by the court in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd.
What’s protected when a person obtains a trademark?
Section 20 of the Trade Marks Act 1995 (Cth) gives the registered owner of a registered trademark the exclusive rights to:
- Use the trademark; and
- The ability to authorise the use of the trademark by others (such as licensing the trademark to be used by a separate company).
The exclusive rights commence from the date the trademark is registered.
The registered owner of a trademark also has the power under section 22 of the Trade Marks Act 1995 (Cth) to deal with the trademark as its absolute owner, and therefore a registered owner can use the trademark as they see fit.
The registered owner can also give authorisation for other entities or people to use the trademark in relation to the goods and/or services and obtain relief if there has been trademark infringement.
To read more about the process of obtaining a trademark, please read our article Registering Trademarks in Australia.