Commercial Litigation News

Searching for tag: IP

IP Australia – changes to trade mark fees

New fees will be payable to IP Australia for any new trade mark applications filed from 10 October 2016.

Trade mark applications

Most notably, IP Australia has removed the need to pay a registration fee for Australian trade mark applications (previously $300 per class). Whilst increased application fees are payable, the overall effect of these changes is a reduction of fees for the trade mark application process.
 

Description – application fees Old fee  New fee
Headstart (pre-application service) new request - per class   $120 $200
Headstart (pre-application service) new representation - per class   $120 $150
Headstart (pre-application service) additional class fee - per class  $120  $200
Headstart (pre-application service) Part 2 fee - per class   $80 $130
Trade mark application - with picklist per class   $120 $250
Trade mark application - without picklist per class  $200  $330
Series trade mark application -with picklist per class                                         $270 $400
Series trade mark application - without picklist per class   $350 $480
Trade mark application (not using online services) - per class   $220 $350
Series trade mark application (not using online services) - per class   $370 $500
Madrid import application – per class   $420 $350
Description – registration fees Old fee New fee
 Trade mark registration   $300 No fee

 Trade mark renewals

The renewal costs payable each time a trade mark owner wishes to extend their trade mark for a further 10 years has increased by $100 to partially offset the reduced costs in the application process.

 

Description – renewal fees Old fee New fee
Trade mark renewal (online services fee) - per class  $300 $400
Trade mark renewal (fee by other means) - per class $350 $450 $350 $450
Madrid import renewal – per class $300 $400

 

Note: Any fees payable to IP Australia are GST free.

The information contained in this article is general in nature only and should not be relied on. You should always seek legal advice about your individual circumstances.

Posted in: Commercial Litigation News at 13 October 16

Trade Mark Infringement

 When is a registered trade mark infringed?

In accordance with section 120 of the Trade Marks Act 1995 (Cth), a person infringes a registered trade mark if they use as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark:

  1. in relation to goods or services in respect of which the trade mark is registered;
  2. in relation to goods of the same description as those in respect of which the trade mark is registered, or services that are closely related to those goods; or
  3. in relation to services of the same description as those in respect of which the trade mark is registered, or goods that are closely related to those services.

This article does not deal with infringement of an unregistered trade mark.

Use as a trade mark

A trade mark is a sign that is used or is intended to be used, to distinguish a particular trader’s goods or services from the goods or services of another person. The purpose of a trade mark is for it to be used as a ‘badge of origin’, or more specifically a sign that indicates the commercial origin of the goods or services.

The registration of a trade mark provides the owner with the exclusive right to use the trade mark in Australia in relation to the particular goods or services for which the mark is registered. For another trader to infringe that exclusive right, they must have used the registered mark as a trade mark.

Where the registered trade mark has not been used in a way that constitutes use as a trade mark, for example it has been used descriptively rather than in an attempt to indicate the commercial origin of the goods, there will be no infringement of the registered trade mark.

Substantially identical

To determine whether an allegedly infringing trade mark is substantially identical to a registered trade mark will involve a side-by-side comparison of the two trade marks.

This is a high threshold to meet and will require an extremely high degree of similarity between the two trade marks. It therefore usually has limited application except in cases of blatant infringement, with most cases instead dealing with the issue of deceptive similarity.

Deceptively similar

A trade mark will be deceptively similar to a registered trade mark if it so nearly resembles the other trade mark that it is likely to deceive or cause confusion.

The test that has been applied by Courts when assessing deceptive similarity involves consideration of the imperfect recollection of the two trade marks. This is a much less precise test than determining whether two marks are substantially identical, as it does not involve a side-by-side comparison.

Defences to trade mark infringement

A person will not infringe a trade mark in certain circumstances, for example:

1. they use their name, the name of their place of business, the name of their business’s predecessor or the name of the predecessor’s place of business, where that use is in good faith;

2. they use the sign in good faith to indicate:

a. the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services
b. the time of production of goods or of the rendering of services;
c. the intended purpose of goods or services;

3. for the purposes of comparative advertising;

4. where the Court considers that the alleged infringer would be entitled to obtain its own registration for the allegedly infringing trade mark if they were to apply for it (eg. where the alleged infringer can establish prior concurrent use, that is use prior to the priority date of the registered trade mark they are alleged to have infringed).

Remedies for infringement

Where infringement has been established and no defences have been successfully raised, the Court may:

  1. grant an injunction to prevent continued infringement;
  2. award damages or an account of profits.

Depending on the circumstances such as the flagrancy of the infringement and the conduct of the infringer, the Court may also add an additional amount to the assessment of damages.

Tips for trade mark owners:

  • Applying for and obtaining a registered trade mark will provide much stronger protection than attempting to rely on an unregistered trade mark. The Australian trade mark system operates on a first to file basis, so seeking protection as soon as possible is advisable.
  • A trade mark owner should always exercise caution when accusing third parties of infringing their trade mark as the recipient of such a demand may be entitled to apply to the Court for a declaration that the demand constitutes a groundless threat.
  • The owner of a trade mark may have other causes of action against an alleged infringer even if they do not have a trade mark registered under the Trade Marks Act 1995, for example passing off or misleading and deceptive conduct. These actions will be discussed in a separate article.
  • Trade mark owners must ensure they protect their registered trade mark or it may become vulnerable to removal.
  • Whilst there is no obligation to do so, owners of registered trade marks may display the ® symbol next to the trade mark to signify that the trade mark has been registered. It is an offence for a person to represent that a trade mark is registered in Australia when they know or have reasonable grounds to believe that it is not.

The information contained in this article is general in nature only and should not be relied on. You should always seek legal advice about your individual circumstances.

Posted in: Commercial Litigation News at 27 June 16

Trade Mark Application Process

The purpose of a trade mark is for it to be used as a ‘badge of origin’, a sign that links the goods or services to the trader who supplies them.

Prior to filing any trade mark application, you should first give consideration to what trade marks should be registered, as well as which goods and/or services will be relevant. Prior to investing time and money in developing, applying for and marketing a trade mark, it is also advisable to carry out investigations to determine whether any other traders are already using a similar mark that may pose difficulties for your intended use.

Trade mark application

Once a proposed trade mark has been selected, the trade mark application process is commenced by filing an Application to Register a Trade Mark. The application can be submitted in hard copy or by using the IP Australia eServices facility. The official fee payable to IP Australia on filing ranges between $120.00 and $200.00 per class, depending on how the application is lodged and what goods and services are selected.

Once filed, the trade mark application will be indexed, allocated an application number and be published in the Australian Official Journal of Trade Marks (“Official Journal”)1. The application details will also be publically assessable on the Australian Trade Mark On-line Search System (ATMOSS) website.

The trade mark application will then be examined by the Registrar of Trade Marks (“Registrar”).

Examination

Once the trade mark application has been examined, the Registrar will issue an examination report. We typically see trade mark examination reports issued within three to five months of the application filing date. If there are circumstances justifying early examination, it is possible to request an expedited examination which, if accepted, will usually see the examination report issued within one month.

The examination report can either be a clear report (where the Registrar considers the application in order to proceed to acceptance) or be subject to citations (where the Registrar has identified issues it considers presently prevent acceptance).

Common citations include where the trade mark that has been applied for is not distinctive, or where it is substantially identical with or deceptively similar to a trade mark with an earlier priority date (ie. a trade mark that was filed before the subject application).

Other grounds for rejection may include situations where:

  1. the trade mark contains certain protected symbols (for example the Olympic rings);
  2. the trade mark is unable to be represented graphically;
  3. where the trade mark would be scandalous or contrary to law.

If citations are raised, an applicant may be able to amend the application or take certain steps for consideration for the Registrar, which may allow for the trade mark to proceed to acceptance. The applicant has fifteen (15) months from the date of the first examination report for the application to be accepted. If the trade mark is not accepted within that period, or an extension obtained, the trade mark application will lapse.

Once a clear examination report has been issued, the application will sit in abeyance for five to six months from the application date, as required by international convention obligations. Once this time has passed, the Registrar will advertise acceptance of the trade mark application in the Official Journal.

Opposition period

The Registrar’s publication of the notice of acceptance starts a two (2) month period for any interested third parties to lodge an opposition to the trade mark application. Potential grounds for opposition and the opposition process are not dealt with in this article.

If no oppositions are lodged and the opposition period expires, the trade mark can then proceed to registration.

Registration

On payment of the applicable registration fee (presently $300.00 per class), the Registrar will register the trade mark on the Australian Trade Marks Register. Importantly, whilst a trade mark will provide no protection until it is registered, once registered, protection will be granted from the filing date (or an earlier convention priority date, if applicable).

Note: Any fees payable to IP Australia are GST free.

 1.  http://pericles.ipaustralia.gov.au/ols/epublish/content/olsTrademarkPDFs.jsp

The information contained in this article is general in nature only and should not be relied on. You should always seek legal advice about your individual circumstances.

Posted in: Commercial Litigation News at 27 May 16