PART A: Trademarks

Intellectual property includes the rights that relate to creations of the mind such as literacy works, art, scientific inventions and musical works. Intellectual property rights can either arise automatically upon creation of the item for instance in copyright or arises after completion of an application and registration of the right, especially for trademarks and patents.[1] Intellectual property gives rights that are negative in nature such that the owner of the intellectual property has the right to prevent other persons from carrying out specified acts about the subject matter without their consent. A person who deals with an intellectual property of another person in a manner that is inconsistent with the rights of the rights holder is said to infringe that other person’s right. Intellectual property rights can, however, be assigned, licensed or mortgaged.

Trademark refers to unique signs that are used by manufactures so as to distinguish their products with those that are already in existence in the market. The logo on the bottle of fragrance that Freddie intends to register and protect is a trademark[2]. Under section 17 of the Trademarks Act 1995, a trademark refers to a sign that is used or the person has the intention to use it to distinguish goods or services dealt with or provided during trade by a person from those goods or services by other persons. Section 8 of the Trademarks Act 1995 further defines a sign as any sign that includes letters, words, name, numeral, brand, device, signature, and label, an aspect of packaging, ticket, color, shape, scent or sound. Therefore, the logo, shape of the bottle and the smell of the fragrance that Freddie wants to protect are signs that are together referred to as trademark.

For protection and registration, trademarks must satisfy certain elements; the marks must be in use or intended to be used, and their purpose should be to distinguish goods or services from the ones produced or supplied by other persons and that the said mark is used during the trade. In the case of Clark Equipment Co v Registrar of Trademarks[3], the court stated that a mark intended to distinguish should be tested about any likelihood that any other persons, who trade in goods of the same nature with proper motives would see the words and attempt to use it in connection with other similar goods would infringe the trademark granted to it.

Protection and Registration of Trademarks

A mark is registered and protected under intellectual property if the said mark is substantially identical or deceptively similar to other signs used by another trader in the course of business. Registration is to the effect that the owner of the trademark is given or accorded exclusive right to use the said signs and can claim infringement when other persons use marks that are identical or similar to the ones protected. In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[4], it was held that a comparison of the marks used by the two companies to market their products when compared side by side, consideration on the similarities and differences found out that the marks had substantial similarities and therefore the defendant was held to have breached trademark.

Intellectual property, therefore, offers protection so that other persons do not produce and market goods or services that are similar to those of the registered trademark holder or are closely related closely related. Freddie can, therefore, protect the shape of the bottle, the logo, as well as the smell since a combination, forms a sign that is capable of registration as a trademark under the Trademarks Act 1995. In the case of Kenman Kandy Australia Pty Ltd v Registrar of Trademarks[5], it was held by the court that registration of the bug shape as a trademark would not operate to give the appellant any monopoly over all the bug shapes but only the particular shape that is registered or a substantially deceptive or similar shape to the one registered.

Registration of trademarks is done by the registrar who has powers to among other things the acceptance or rejection of applications for registration of trademarks, registration, cancellation and correcting the trademarks register. Registration of a trademark can be done for any product that is already in use or which is intended to be used. However, time is of the essence, and the party seeking registration of a mark or any shape has to specify the time he or she intends to use the said mark and reference to any time in the future would not suffice. This was the holding of the court in the case of Aston v Harlee Manufacturing Co.[6] Freddie, therefore, has the right to register the Bohemian Queen (BQ) its non-use notwithstanding.

Registration of trademarks in Australia can be done to offer and guarantee protection both nationally and geographically. Australia is a signatory to the WTO’s Agreement on Trade –Related Aspects of Intellectual Property (TRIPS Agreement). Australia is also a member of the Trans-Pacific Partnership (TTP) which has established common rules on the intellectual property protection and enforcement in the TPP region. The rules are intended to streamline the transactions of intellectual property, increase the transparency in dealings and to facilitate business in the region.

International Intellectual Property Agreements and Treaties

There are additional treaties that Australian Government has ratified that offer protection to intellectual property. They include; Patent Cooperation Treaty 1979, Paris Convention for the Protection of Literary and Artistic Works, World Intellectual Property Organization (WIPO), Copyright Treaty 1996 and Performances and Phonograms Treaty 1996. All these international treaties and agreements relating to intellectual property ensure registration and protection of intellectual property rights of the member states to the international agreements. 

The registration of a trademark would be for a term of ten years in which the owner of the right enjoys exclusive use or marketing and sale of goods or services. The term is renewable for a further term of ten years, and after the elapse of the period, other persons are free to develop and market any similar products without the infringement of trademark rights. Since Australia has ratified these international instruments and is a party, Freddie can, therefore, register the BQ both in Australia and internationally and his intellectual property rights would be protected and guaranteed in the circumstances.[7]

Registration of trademarks is done by the registrar as provided under section 3 of the Trademarks Act 1999. Any other officer may be appointed under section 3 (2) to discharge the duties of the register under his direction and superintendence. The registration of the BQ is done by application for registration to the Registrar in the prescribed form. Application for registration of a trademark can be made by any person who has claims of being a proprietor of the trademark that is in use or is intended to be used by him in the prescribed form.[8] Any person in this regards extends to a body corporate, society, and group of persons, partnerships, trusts or the government. The form for registration should contain the details of the mark or sign whose registration is sought and the duration for which such registration is required to be in force.

The registrar upon receipt of an application for registration should publish the details of such application for any person objecting such registration to tender such objection. There is, however, a presumption of registerability that is often based on a balance of probabilities. It is to the effect that a trademark is always regarded as being registerable except when there is a tendered objection to such registration. The term of every registered trademark lasts for a fixed term of ten years and is subject to renewal for an indefinite period as the intellectual property holder may elect. Register of Trademarks can be maintained, according to section 6, in a single register or computer floppies and diskettes and any other electronic form or device which is subject to control measures. The process of registration of a trademark is systematic. It begins with a name search to ascertain whether the desired name, mark or symbol is already in use by other intellectual property rights holders. This is done to ensure that the intended registration is not denied because third parties might be using the trademark already.[9]

Trademark Registration Procedure in Australia

Section 40 – 44 of the Trademarks Act, however, provides grounds upon which registration of a trademark can be rejected by the registrar. For instance, a trademark cannot be represented in the form of graphics. Where the trademark consists of certain that cannot be used as a trademark, the Registrar would reject such application for registration. Secondly, where the mark or sign that the applicant seeks to have registered is deceptively similar or same as an already existing mark or sign, the registrar would refuse registration. The other ground for rejection of an application is in circumstances where the trademark is likely to be used to propagate a scandal or any act which is contrary to law; such application would not be registered.[10]

The registrar can refuse such registration where he or she is of the opinion that such application falls within the grounds for rejection stated above. The register may also act on the complaints lodged by a third party stating that the person seeking registration is not the owner of the trademark, he or she has no intention to use the trademark, the mark or sign is similar to those marks that are already in use in the market, the applicant has provided false evidence and that the person seeking such registration is doing so in bad faith. Under section 18 of the Australian Consumer Act 2010, individuals are cautioned against engaging in conduct that is likely to mislead or deceives.

Design is defined under section 5 of the Industrial Designs Act 2003. In relation to any product, a design refers to the overall appearance of any product that results from one or more features of a product that are visual in nature. The owner of a registered right during the term when the design is registered has exclusive right to make or offer a product, to import the product for business purposes, to sell, dispose or hire the product or to keep or use the product for any business purpose. The registered owner of a design can also permit the use of the design by another person.[11]

Application for registration of design is made under section 35 of the Designs Act 2003. In making such application, the applicant requests for either registration or publication of one or more designs that have been disclosed in the designs application. A request for registration precedes that for publication. Publication operates to inform the general public that a certain design has been lodged for application and therefore any person with objections as to the intended registration to submit their objections before registration is effected.[12] Where no such objection is received by the Registrar within the specified period, registration would nonetheless proceed.

The registration procedure under section 45 requires the registrar to notify the applicant of a successful registration and to inform the public that a registration of a particular design has been done through publication. Registration of design is for a term of five years which is subject to renewal for a further term of five years.[13]

The publication of design is done under section 57 upon the registrar satisfying himself that the documents presented for publication by the applicant satisfy all the requirements stated in the regulations. The registrar can refuse publication, and such refusal must be communicated to the applicant. Publication of a design does not attach any rights to the applicant. The rights are only guaranteed upon the successful registration of the design. Design holders have the freedom to be innovative. In the case of Review 2 v Redberry[14], it was held that the shape of the skirt when combined with its color, the pattern was capable of giving an impression of a prior art even though the monopoly was closely confined. 

Design is registrable when it has certain distinctive visual features that make it different or easily differentiated from those of other designers. In Smith, Kline & French Laboratories Ltd’s Design Application[15], it was held that even though the color had not been specifically mentioned as one of the visual features referred to under section 7 of the act if a design is expressed in certain colors, the color is likely to be an integral part of such design.

A patent refers to that right which is granted for any device, substance, a method or process that a person has invented and which is new, useful and inventive when compared with other prior art base. Section 15[16] provides that a patent can only be granted to an individual who is eligible for such grant and is the inventor. In the case of JMVB Enterprises Pty Ltd v Camoflag Pty Ltd[17], it was stated by the court that an individual could only claim ownership only if the final invention would not have been successful without his or her input. There are two main types of patents that can be granted in Australia; a standard patent and an innovation patent.

A standard patent has the advantage of giving the inventor a long-term control and protection over his or her invention. It is said to last for up to 20 years from the time of application and may, especially for pharmaceutical substances last for up to 25 years[18]. The invention which is claimed for registration as a standard patent has to be new, inventive and capable of being used in industry. The invention is required to be substantially different from any technology that is already in existence.

A standard patent registration is granted only after a careful examination by the registrar for him or her to ascertain whether it has met all the legislative requirements. An innovation patent protects those inventions with a short market life which are likely to be overtaken by innovations. It lasts for up to eight years and is mostly designed to protect those innovations that do not meet the threshold necessary for standard patents. It is relatively cheap and quicker way of obtaining protection for a new invention. Innovative patents require innovative as opposed to an inventive step.

The innovative patent occurs where the invention differs from what is commonly known and such difference leads to a substantial contribution in the workings of the already existing invention. The invention whose registration as a patent is sought should not be something that is obvious. In the case of Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd[19], the court stated that in determining whether the invention is obvious, a question has to be asked as to whether the said invention could have been obvious to a worker who is non-inventive in the field but with the general and common knowledge in that general field.

Having considered the two forms of patent registration and their merits and demerits highlighted, it is natural to conclude that a standard patent registration is more desirable as it offers protection for a considerable period when compared with the innovative patent registration. Prince should, therefore, consider registering for a standard patent protection as such protection is available even in other countries outside Australia and would enable him to have an exclusive right and protection of his invention.

Infringement of a patent occurs where an individual makes, uses, sells or offer for sale any patented invention without the consent or authority of the owner of the said patent. A claim for infringement of a patent can only be entertained when all the steps required for an invention is complete and such an invention duly registered. In the case of Sykes v Howarth[20], it was held that a claim for infringement of a patent could only be made after a product has been made. Infringement proceedings while expensive can only be instituted against a patent that has been certified. For an infringement of a patent to be established, the following elements have to be proved by the plaintiff to exist;

• That the person claiming infringement has the title as the patentee or that he or she is an exclusive licensee to exploit the said patent
• That the defendant did not procure the plaintiff’s authority to deal with the patented invention in the manner in which he or she did
• That the defendant had performed acts amounting to infringement when the term of the patent had not lapsed
• That the said infringement occurred within the patent area

The remedies available for one whose patent has been infringed include damages, account for profits made as a result of the infringement and most commonly an injunction.[21]

Conclusion

In summary, therefore, since an inventor owns the right in his or her invention, protection of intellectual property is justifiable.[22] The protection acts as a reward to inventors for the time, work, resources and the risks taken in coming up with an invention. Intellectual property recognition and protection is beneficial as it encourages investment and employment as well as the provision of information that assists in adding the knowledge that is already available in the society. The expenses involved in coming up with novel and working ideas can only be incurred by individuals and persons who are capable of foreseeing a profitable return on them, and one of the ways of promoting such inventions is to grant legal protection for the inventions.

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