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Trade Mark Law (Australia)

Running Head: Trade Mark Law (Australia)

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A trade mark refers to a symbol, phrase, letter, number, picture, logo or an aspect of packaging or a combination of the aforementioned. Its relevance is to distinguish goods or services provided by one trader from those of another. In Australia, a registered trademark awards you the legal opportunity to license, sell or use it within the Australian jurisdiction for the goods and services registered under it (Phillips, 2006).A trademark is a valuable marketing tool as the public is able to identify with the quality and image of goods and services bearing that specific trademark. When introducing a certain product in the market, a distinctive trademark would be essential. All trademarks can be registered according to the Australian Law.

Trade Mark Registration: Difficulties

In order to successfully obtain a trademark, it is essential to search from trademark records before using one and before filing an application to register it. This would save the money and trouble incurred from legal action related to infringement as the records disclose existing trademarks similar to the one an individual is planning to use (Retrieved from http://www.ipaustralia.gov.au/trademarks/index.shtml ).However, for a trade mark to be registered; it should be able to distinguish the goods and services provided for by one trader from those provided for by another trader in the marketplace. Secondly, it should not conflict a trademark registered earlier, neither should it mislead the public about the nature of goods and/ or services (Gillies & Selvadurai, 2008).

Thirdly, the registration of a trademark may be opposed in circumstances where the person registering it is not the owner of the trademark. A trademark can only be registered by a party who declares ownership of it. Fourthly, in case the applicant of a trademark does not intend to; use, authorise its use in Australia, or assign the trademark to a body corporate in Australia for use, then its prone to rejection (Gillies & Selvadurai, 2008).

In addition, a trademark containing or consisting of a false geographical indication may also be rejected from registration. This is in respect to: particular relevant goods which contain or consist a sign that geographically indicates designated goods originating in a country, region or locality in a country other than the country in which the relevant goods originated, or a region or locality in the country in which the relevant goods originated other than the region in which the relevant goods originated if those goods are similar to the designated goods (Retrieved from HYPERLINK “http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/”http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/).

If an application, or document filed in support of the application is country to the provisions of the Trade Marks Act of 1995, or the registrar accepted the application for registration based on evidence provided which were declared as false in material particulars, the registration of the trade mark may be rejected on grounds of inappropriate or defective application. Lastly, an application made in bad faith would result in opposition for its registration.

Infringement related difficulties

Even after successful registration, serious obstacles related to infringement exist. Defendants who adopt the shape registered as a mark as their own shape may be the source of such obstacles. This is contained in Section 128 of the Trade Marks Act 1995. This section makes provision for circumstances under which an infringement action may not be brought. First of all, if the registration of a trade mark expires and is renewed within six months, an action may not be brought in respect of an act that infringed the trademark or was done after the registration had expired and before its renewal Retrieved from (HYPERLINK “http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/”http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/).

Secondly, if the registration of a trade mark is renewed within ten months after the end of the prescribed period, an action may not be brought in respect of an act that infringed the trade mark or was done the end of the prescribed period and before the registration was renewed (Latimer & CCH Australia Ltd, 2009).

In furtherance of this, section 122 makes provisions that a trade mark is not infringed in situations where a person: uses in good faith his name or the name of his business, the name of the predecessor in business or the predecessor’s place of business; uses the trade mark in good faith to indicate the intended purpose of goods or services; uses the trade mark for comparative advertising purpose; the court is of the opinion that the person would obtain registration of the trade ark in his or her name if they were to apply for it ,or both the person uses a trade mark which is substantially identical with, or similar to the first mentioned trade mark and the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if they were to apply for it; in using a sign does not infringe the exclusive right of the registered owner to use thee trade mark. As stated in section 120 of the Act, where a disclaimer exists pertaining to a part of a registered trade mark, a person is declared not to have infringed the trade mark by using that part of it (Phillips, 2006).

Trade marks are vital business tools as they encompass a creative way of attracting and retaining clients. The procedure for their registration despite not being mandatory may equally be tedious and exoensive to undertake owing to the legality and originality of the trde mark. Successful registration however does not secure the trademark from infringement which may be difficult to prove and bring action against those who carry out this infringement as their actions may be within the jurisdiction of the Australian Law as discussed above in this document.

References

Gillies, P., & Selvadurai, N. (2008). Marketing Law. UK: Federation Press.

Latimer, P., & CCH Austaraliia Ltd. (2009). Australian Business Law. 28th edn. Australia: CCH Australia Ltd.

Phillips, J. (2006). Trade Marks at the Limit. UK: Edward Elgar Publishing.

The Trade Mark Act. (2010). Retrieved on 11 April 2010 from

HYPERLINK “http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/”http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/.

Trade Marks. (2010). Retrieved on

11 April 2010 from HYPERLINK “http://www.ipaustralia.gov.au/trademarks/index.shtml” http://www.ipaustralia.gov.au/trademarks/index.shtml.

.

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Running Head: Trade Mark Law (Australia)

Name:

Institution:

Course:

Tutor:

Date:

A trade mark refers to a symbol, phrase, letter, number, picture, logo or an aspect of packaging or a combination of the aforementioned. Its relevance is to distinguish goods or services provided by one trader from those of another. In Australia, a registered trademark awards you the legal opportunity to license, sell or use it within the Australian jurisdiction for the goods and services registered under it (Phillips, 2006).A trademark is a valuable marketing tool as the public is able to identify with the quality and image of goods and services bearing that specific trademark. When introducing a certain product in the market, a distinctive trademark would be essential. All trademarks can be registered according to the Australian Law.

Trade Mark Registration: Difficulties

In order to successfully obtain a trademark, it is essential to search from trademark records before using one and before filing an application to register it. This would save the money and trouble incurred from legal action related to infringement as the records disclose existing trademarks similar to the one an individual is planning to use (Retrieved from http://www.ipaustralia.gov.au/trademarks/index.shtml ).However, for a trade mark to be registered; it should be able to distinguish the goods and services provided for by one trader from those provided for by another trader in the marketplace. Secondly, it should not conflict a trademark registered earlier, neither should it mislead the public about the nature of goods and/ or services (Gillies & Selvadurai, 2008).

Thirdly, the registration of a trademark may be opposed in circumstances where the person registering it is not the owner of the trademark. A trademark can only be registered by a party who declares ownership of it. Fourthly, in case the applicant of a trademark does not intend to; use, authorise its use in Australia, or assign the trademark to a body corporate in Australia for use, then its prone to rejection (Gillies & Selvadurai, 2008).

In addition, a trademark containing or consisting of a false geographical indication may also be rejected from registration. This is in respect to: particular relevant goods which contain or consist a sign that geographically indicates designated goods originating in a country, region or locality in a country other than the country in which the relevant goods originated, or a region or locality in the country in which the relevant goods originated other than the region in which the relevant goods originated if those goods are similar to the designated goods (Retrieved from HYPERLINK “http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/”http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/).

If an application, or document filed in support of the application is country to the provisions of the Trade Marks Act of 1995, or the registrar accepted the application for registration based on evidence provided which were declared as false in material particulars, the registration of the trade mark may be rejected on grounds of inappropriate or defective application. Lastly, an application made in bad faith would result in opposition for its registration.

Infringement related difficulties

Even after successful registration, serious obstacles related to infringement exist. Defendants who adopt the shape registered as a mark as their own shape may be the source of such obstacles. This is contained in Section 128 of the Trade Marks Act 1995. This section makes provision for circumstances under which an infringement action may not be brought. First of all, if the registration of a trade mark expires and is renewed within six months, an action may not be brought in respect of an act that infringed the trademark or was done after the registration had expired and before its renewal Retrieved from (HYPERLINK “http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/”http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/).

Secondly, if the registration of a trade mark is renewed within ten months after the end of the prescribed period, an action may not be brought in respect of an act that infringed the trade mark or was done the end of the prescribed period and before the registration was renewed (Latimer & CCH Australia Ltd, 2009).

In furtherance of this, section 122 makes provisions that a trade mark is not infringed in situations where a person: uses in good faith his name or the name of his business, the name of the predecessor in business or the predecessor’s place of business; uses the trade mark in good faith to indicate the intended purpose of goods or services; uses the trade mark for comparative advertising purpose; the court is of the opinion that the person would obtain registration of the trade ark in his or her name if they were to apply for it ,or both the person uses a trade mark which is substantially identical with, or similar to the first mentioned trade mark and the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if they were to apply for it; in using a sign does not infringe the exclusive right of the registered owner to use thee trade mark. As stated in section 120 of the Act, where a disclaimer exists pertaining to a part of a registered trade mark, a person is declared not to have infringed the trade mark by using that part of it (Phillips, 2006).

Trade marks are vital business tools as they encompass a creative way of attracting and retaining clients. The procedure for their registration despite not being mandatory may equally be tedious and exoensive to undertake owing to the legality and originality of the trde mark. Successful registration however does not secure the trademark from infringement which may be difficult to prove and bring action against those who carry out this infringement as their actions may be within the jurisdiction of the Australian Law as discussed above in this document.

References

Gillies, P., & Selvadurai, N. (2008). Marketing Law. UK: Federation Press.

Latimer, P., & CCH Austaraliia Ltd. (2009). Australian Business Law. 28th edn. Australia: CCH Australia Ltd.

Phillips, J. (2006). Trade Marks at the Limit. UK: Edward Elgar Publishing.

The Trade Mark Act. (2010). Retrieved on 11 April 2010 from

HYPERLINK “http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/”http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/.

Trade Marks. (2010). Retrieved on

11 April 2010 from HYPERLINK “http://www.ipaustralia.gov.au/trademarks/index.shtml” http://www.ipaustralia.gov.au/trademarks/index.shtml.

.

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