Patent & Trade Mark

Trade marks in Australia - 2009 roundup

Date: 03 December 2009
Author: Joanne Martin
It has been another interesting year for the Australian trade marks practitioner.  2009 has seen a couple of long running trade mark cases come to a final close, much media attention given to the new brand for a version of the iconic VEGEMITE product, guidance from the Courts on what constitutes a "shape" trade mark, and decisions of the Trade Marks Office in relation to the "bad faith" opposition provision of the Act.

Trade Marks Office Decisions

Deceptively Similar

The Trade Marks Office continues its current practice of allowing similar trade marks to co-exist on the Register, in part, in recognition of the modern consumer's ability to distinguish between similar brand names and as a practical response to its practice of registering quite 'descriptive' trade marks with rights that must therefore be interpreted very narrowly.

The following were held to be not deceptively similar trade marks:

The Trade Marks Office held the following trade marks to be deceptively similar:


Trade Marks Capable of Distinguishing

The Australian Trade Marks Office continues to register trade marks which contain non-distinctive elements such as descriptive words, geographical words or surnames, combined with a distinctive element, notwithstanding that the non-distinctive component may be a prominent feature of the mark, examples being:

The Hearing Officer concluded that trade mark 1154313 GOJI JUICE "has the barest scintilla or spark of inherent capacity to distinguish the applicant's goods from those of other traders." Freelife International Holdings LLC [2009] ATMO 45

For 1152390 HERVEY BAY INSURANCE LOGO, the Hearing Officer allowed registration of this trade mark notwithstanding HERVEY BAY being a well known geographical location in Australia, and opposition by another trader. Clive J Smith v Capital Insurance (Broking) Group Pty Ltd [2009] ATMO 66

Ground of Opposition: Application made in bad faith

2009 has provided three decisions which demonstrate the evolution of the official approach to the "application made in bad faith" ground.
  1. Hard Coffee PL v Hard Coffee Main Beach PL [2009] ATMO 26;
  2. Bombala Council v Peter Wilkshire [2009] ATMO 33;
  3. TBP Baking PL v Shane Hobbs [2009] ATMO 50;

In the first decision, the Hearing Officer determined that:

  • "Bad faith requires an element of intentional dishonesty or a deliberate attempt to mislead the Registrar"
  • "Bad faith is a serious allegation; not to be found lightly"
  • "Where bad faith is alleged, the conflicting trade marks need to be at least deceptively similar"

In the second decision, the Hearing Officer said:

  • "A reasonable person in the applicant's position would have been aware that she should not have applied for trade mark registration"
  • "Considered UK authorities indicate that bad faith does not require dishonesty" [emphasis added]

In the third decision, the Hearing Officer determined:

  • That no finding of dishonesty was necessary
  • The trade mark applicant had previously acknowledged that the trade mark was the property of another person and therefore bad faith was established.

It seems clear that applying to register a trade mark in bad faith does not require an element of dishonesty, but at least knowledge of the applicant that at the time of applying the trade mark is the property of another person.


Colour Trade Marks

THE COLOUR PURPLE: Cadbury's trade mark application 779336 for the colour PURPLE for chocolate was filed on 25 November 1998 and registered on 24 September 2009. In the intervening years there have been hearings, oppositions by Nestle and Darrell Lea, associated cases for passing off and under the Trade Practices Act which led to a decision of a single judge in April 2006 Cadbury v Darrell Lea (NO4) 69 IPR 23 that Cadbury did not have an exclusive reputation in the colour PURPLE for chocolate.

The registration of 779336 for chocolate contains the following endorsement: The trade mark consists of the colour PURPLE the said trade mark being adopted as a substantial colour of packaging used in relation to the nominated goods. The colour is the shades of purple corresponding to the following references in the 1997-1999 PANTONE Colour Formula Guide: 2607c; 2617c; 2627c; 268c; 269c; 2685c; 2695c and 2755c. For the avoidance of doubt this is a series trade mark.

Shape Trade Marks

THE SHAPE OF THINGS TO COME: During 2009 chocolate remained on the agenda before the Trade Marks Office and the Court in the Chocolaterie Guylian NV v Registrar of TMs [2009] FCA 89. In that case, the Registrar refused registration of the seahorse as a SHAPE trade mark on the basis that it was a common shape which other traders were entitled to use. On appeal, a single judge of the Federal Court maintained that the shape trade mark was unregistrable on the basis that:

  • The trade mark is clearly a seahorse, and other traders might want to depict a seahorse in a confusingly similar way for chocolate.
  • The trade mark is not inherently registrable.
  • Guylian's use of the shape on packaging is not trade mark use but merely an example of the contents of the box.
The second case on shape trade marks was Sebel Furniture Limited v Acoustic & Felts PL (2009) 80 IPR 244. Sebel sought to sue another party for infringement of trade mark registration 1054076 for its chair shape. The court provided the following commentary on shape trade marks:

1. A shape cannot operate as a trade mark if it is dictated by:

  • the nature of the goods, or
  • is merely the result of a technical or functional outcome

2. For a shape to function as a trade mark it must:

  • be something additional to the inherent form of the goods, and
  • and have something distinct which is an indicator of origin

3. A shape cannot be registered as a trade mark if other traders may need to use it because:

  • it is inherent to those goods, that is, it is their nature; or
  • it provides a technical or functional benefit

In this case, the Court concluded there was no infringement as all elements of the so-called infringing chair were the essence of the chair, there were no functional elements and therefore the alleged infringer was not using its chair shape as a trade mark.


During 2009 the High Court granted leave to appeal in relation to questions raised for two cases progressing under the current 1995 Trade Marks Act. This will be the first time the High Court will consider provisions under current Act. Special leave has been granted in:

  • E & J Gallo Winery v Lion Nathan (2009) 175 FCR 386 on the question of what constitutes use in Australia. In the full Federal Court decision in 2009, it was held that for a trade mark to be used in Australia the trade mark owner must "project" the goods into the Australian market place. The question for which special leave has been given is:

Whether a trade mark which is used on genuine goods sold in Australia, which goods were not "projected" into the Australian marketplace by the trade mark owner, is use by the trade mark owner? That is, it is sufficient to constitute 'use' if the trade mark owner sells his goods to a foreign party who re-sells them into Australia without the knowledge of the trade mark owner?

  • The second case is Health World Limited v Shin-Sun Australia (2008) 81 IPR 13. This case dealt with an opposition before the Trade Marks Office and an appeal before the full Federal Court on the question of similarity of HEALTHPLUS and INNER HEALTHPLUS. The grant of special leave to appeal to the High Court is on the question of a "person aggrieved".


In September 2009, Kraft's iSnack 2.0 hit the supermarket shelves promoted as "the next generation" Vegemite spread. "iSnack 2.0" was chosen after a naming competition but was much despised by the public and was promptly renamed CHEESYBITES. "The new name has simply not resonated with Australians, particularly the modern technical aspects associated with it" said Kraft's head of Corporate Affairs Simon Talbot. All advertising is good advertising?

While not strictly a trade mark matter, but quixotically Australian in its facts, the case of O'Keefe v Lloyd was in court and the media in October 2009. Mark O'Keefe, the plaintiff, claimed co-ownership of copyright in the pop song "Amazing" which became a hit for the Australian rock star Alex Lloyd, the defendant, in 2002 and continues to provide significant royalties for Lloyd.

O'Keefe claimed he part wrote the song on the back of beer coasters in a pub in 1991 after he and the 14 year old Alex Lloyd had played a gig, and that he gave the coasters to Lloyd to 'finish' the song. After five days in court O'Keefe withdrew his claim without explanation and the judge commented that this was "a very wise result". Presumably the recollections of O'Keefe about what actually occurred after a late night at the pub almost 20 years previously did not amount to strong evidence.

Please contact the trade marks team if you would like any additional information or any assistance with your trade mark matters.

This Newsletter is for the general information of our clients. Its contents are not a complete statement of the law on any subject. Professional advice should be sought before any course of action is pursued.

Tags:  Issues, court decisions, media, trade marks
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