Trademark Law Issues - Article Example

Trademark Law Student Name Institution Introduction Section 27(1) of the Trademarks Act provides that any person has the leeway to submit an application to the Trade Marks Office (TMO) the registration of a trademark.1 The use of foreign words as trademarked names for products requires a consideration of various factors. For instance, as outlined in Clark Equipment Co v Registrar for Trade Marks,2 there is a general principle that requires the TMO to consider whether the chosen names presents the likelihood that other competitors might have the desire to use them. Such usage should however be devoid of any ill motive comparative to similar products and or services. Where such likelihood exists, then the inherent distinctiveness of the intended trademark becomes blurred and will not pass the distinctiveness trademark test. It is not sufficient to bank on the general public’s perceptions as to the meaning and connotation of those words, but rather the concern is on the ordinary meaning of those words in a particular context. Decision in the case and grounds of appeal by both parties The case of Cantarella Bros Pty Limited v Modena Trading Pty Limited3 is a classic case in Australian legal practice that deals with the question of the use of foreign words as trademarks. In its decision, the Federal Court of Australia ruled that Modena’s use of the French words ‘ORO’ and ‘CINQUE STELLE’ on its coffee packaging be an infringement of Cantarella’s registered trade-marks. Modena appealed because the judge in the first submission erred while applying s 41(3) of the Trade Marks Act 1995 (Cth). The error was ascribed to the fact that the French words ‘ORO’ and ‘CINQUE STELLE’ would be easily understand and had been used by other traders in relation to coffee products long before Cantarella trade-marked them. The Full Court overturned the first ruling since the words did not pass the distinctive test and granted Modena’s submission for the cancellation of the words from the trademarks register due to their descriptive nature under s 88(1)(a) of the Trade Marks Act 1995. Cantarella’s appeal of the Full Court’s ruling relied on their submissions that the Full Court materially misapplied the distinctiveness test in Clark Equipment Co v Registrar for Trade Marks. This misapplication is in regards the adaptation of the Italian words ‘ORO’ and ‘CINQUE STELLE’ as distinctive words as required under the Trademarks Act 1995. Cantarella’s appeal was also because Modena did not submit adequate evidence to prove that other Australian traders had used the French words ‘ORO’ and ‘CINQUE STELLE’ prior to their application for trade-marks. The Full Court’s ruling in 2013 indicates that the registration and use of foreign words as trademarks can be revoked. This revocation is where it is determined that those words bear a recognizable meaning albeit to a particular group or portion of the public.4 The decision is, however, the subject of an appeal whose determination the judges have reserved.5 The Trademarking of Colours in Australia Referring to Qualitex Co v Jacobson6, the judge in Philmac Pty Ltd v Registrar of Trade Marks7 noted that there is no legal rule that can prevent colours from being trademarked. However, the judge in Philmac cautioned that where colours are used to denote a meaning usually associated with goods, or is naturally occurring in particular products, that colour will not be trademarked. Similarly, where there is a competitive demand for the use of a particular colour, an application for registration of that colour as a trademark will fail. In addition, if that colour is often associated with the practical utility of the identified product or range of products, an application for registration of that colour as a trademark will fail. A company can apply for the registration of a trademark under two conditions. The first condition is a requirement on the part of the applicant to show that use of a particular colour has an inherent adaption to differentiate the company’s products and or services from those of competitors. The second condition underlies the requirement that the colour must have been used prior to application for registration as a trademark as set out in section 41(6). In Philmac, the Federal Court of Australia noted that the use of the colour terracotta in the connecting insert of polyethylene pipe fittings acted effectively as a distinction of Philmac’s pipe fittings. There are challenges in the use and protection of a particular color as a trademark in Australia.8 For a company to register and monopolize a particular color as its trademark, it must show evidence that that colour is part of the distinguishing aspects of its goods and services.9 As per the decision in Woolworths Ltd v BP Plc, 10 a company must present adequate evidence that demonstrates that a particular shade of color can distinguish its products and or services from those of competitors. Before applying for a trademark that comprises a color shade, a company must have used that particular before the application for registration. That use should be in a manner that sufficiently suggests that that colour has become distinctive with that company’s goods or services.11 As such inherent distinctiveness of the use of a particular colour should not be in dispute before applying for a trademark registration. This requirement has the implication that the company must show evidence that the prior use of a particular colour has enabled it to establish a recognizable reputation. Furthermore, it should show that use of an identical colour for similar goods or services may be misleading or deceptive. According to McLean, there are various pitfalls of defining colour and shape marks in certain ways in presenting applications for trademarks.12The decision in BP plc v Woolworths Limited highlights such pitfalls.13Making amendments to definitions of colour and or shape marks in applications for registration of trademarks contravenes s 65(2) and s 65(5) of the Trademarks Act 1995 Cth. However, such amendments must meet the threshold of causing a substantial effect on the marks ultimate identity as well as other particulars that extend the rights of the applicant.14 In order to obviate the possibility of contravening sections 65(2) and 65(5), the applicant should define the colour shade(s) more narrowly in its submissions for registration. A narrow definition will avoid the need for amendments of submissions and consequent pitfalls.15 The use of colour as a trademark lacks the requirement of causing inherent distinctiveness prior to registration of a trademark.16 In addition, sometimes it is difficult to show that a particular applicant stands out as the first, largest or only user as of a particular color to warrant its use as a trademark. Further still, there are challenges on the part of the applicant to show evidence that it has previously used a particular colour. This use should be with the intention of developing and sustaining a reputation for the colour’s use in its products and or services including product packaging. As was the case in Cadbury Schweppes v Darrell Lea Chocolate Shops, 17 a company should make efforts to avoid the possibility of other companies appropriating its trademarked colour in related goods. Such use can result in the weakening of the reputational association of a particular colour with a specific company’s products or services.18 Consequently, the continuous use of a company’s trademarked colour(s) by other competitors has the potential of allowing consumers not associate a particular trademarked colour with a particular company’s products. The lack of association may potentially reduce the distinctiveness requirement in trademark law. As the trial judge in Cadbury v Darrell Lea Chocolate Shops Pty Ltd posited, failure to enforce the trademark rights of a particular colour may be disadvantageous. The disadvantage arises since users may become habituated to the fact that other competing products may have similar colour packaging, thereby failure to pass the distinctiveness trademark test. Conclusion Monopolizing the use of foreign words as trademarks in cases where the words are descriptive in nature may not be allowed. Such prohibition is mainly possible where the chosen words induce a particular connotation among some consumers with the potential of linking those words with a particular class of products. In addition, where there is a high likelihood that some traders may have a desire to use certain descriptive foreign words, and then such words will not pass for registration as trademarks. The company should also avoid the use of previously used words by other traders as previous use prior to their registration as trademarks eliminates the distinctiveness element. The company should consider the use of certain French words without a descriptive meaning but which are capable of adequately distinguishing its products from those of its competitors. The company can then contemplate extensive marketing activities of its products to enable it achieve secondary adaptation of the words with its products. Regards the intended use of a particular colour shade of pink, the company should recognize that single colours are difficult to trademark and monopolize due to their functional nature that makes them fail to be inherently distinctive. Because the products are new, it will not be possible to persuade the (TO) that the consumers of its products and or services already regard the selected shade colour pink it wants to trademark. This impossibility arises because there will be no consumer survey evidence in support of the fact that consumers will associate a particular shade of colour with a certain product or company. Such impossibility further arises since it is possible that consumers might associate a distinct colour with a particular product or company, but fail to recognize it as that company’s trademark. Where a particular colour has no inherent meaning that one can associate with a particular product, it is a requirement to show that the company has developed a secondary meaning of that colour. The company can do this through the extensive use and reputation building via substantiated marketing campaigns. These factors require the company to introduce the products into the markets and extensively use their chosen shade of pink colour and carry out promotional activities that effectively cause consumers to associate it with its products. In addition, their attempts to monopolize the use of their chosen shade of pink colour should not restrict the use of that colour in other ways that have no capacity to cause interference of the furtherance of the rights of the holder of a particular trademark. As a result, they should recognize that other companies may use that colour in its general manner rather than as a trademark, thereby precluding the possible infringement of its trademark rights after trademarking it. Consequently, other companies can use a particular colour in circumstances where the functional nature of their products, or as per the technical need of that particular product. Thus, it is important for companies to differentiate the functional use as from the trademark use of a particular colour or colours to avoid inappropriate legal claims that are bound to fail in the courts of law. Bibliography A. Articles Alexandra Fone, ‘The use of foreign words as trademarks.’ (2013): 25(9) Intellectual Property Law Bulletin. http://www.griffithhack.com.au/Assets/2881/1/AustralianIPLawBulletin_ResearchAffi atesLLCvCommissionerofPatents_AprilMay2013.pdf Catherine Logan and Wen Liu ‘Louboutin v YSL — single-colour trade marks in the fashion industry: are there any lessons for us?’ (2012) 25(5). Intellectual Property Law Bulletin < http://www.hunthunt.com.au/news-and-publications/louboutin-v-ysl> Keating, Byron W., and Tim Coltman. "Marketing and the law: defending single color trademarks." Journal of the Academy of Marketing Science , 2008: 37 (3), pp. 375-380. http://mpra.ub.uniuenchen.de/40491/1/MPRA_paper_40491.pdf Lux, Sarah. "Evaluating Trade Mark Dilution from the Perspective on the Consumer." UNSWLJ 34 (2011): 1053 http://heinonline.org/HOL/LandingPage?handle=hein.journals/swales34&div=53&id=& age= McLean, Ross. “The impact of recent Australian case law on colour marks”, Baker & McKenzie, World Trademarks Review, 2007. http://www.worldtrademarkreview.com/Magazine/Issue/08/Country correspondents/Australia-Baker-McKenzie Piper, Alderman & Cheryl, Nemeth. “Cappucino per favore? High Court to reconsider foreign word trade mark.” Lexology. http://www.lexology.com/library/detail.aspx?g=882aaa1b-e54c-4744-8671 6ef3e56d0541> Sabiene Heind, ‘Colourful marks: a brief update on the role of colour in trade mark disputes,’ (2013) 26(3) Intellectual Property Law Bulletin. B. Cases Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8), 2008 F.C.A. 470 (2008) Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCATrans 157 Clark Equipment Co v Registrar for Trade Marks (1964) 111 CLR 511 Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110 Philmac Pty Ltd v. Registrar of Trade Marks, 126 F.C.R. 525 (2002 Qualitex Co v Jacobson Products Co 514 US 159 (1995) Woolworths Ltd v BP plc [2006] FCAFC 52 Woolworths Ltd v BP plc (no 2) [2006] FCAFC 132 C. Legislation Trademarks Act 1995 (Cth) Read More