The Law Handbook 2024

768 NOTE The law in this chapter is current as at 1 September 2023. What is a trade mark? Definition of a trade mark A trade mark is a sign used in the course of trade in relation to goods or services, to indicate a commercial connection between those goods or services and the owner of the trade mark. Businesses use trade marks so that purchasers and users of their goods or services can easily distinguish those goods and services from the goods or services of their competition. In section 17 of the Trade Marks Act 1995 (Cth) (‘ TM Act ’), a trade mark is defined as: [A] sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. In section 6 of the TM Act, a sign is defined as: [A] sign includes the following or any combination of the following, namely, any letter, word, name, sig­ nature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. This definition is broad and allows for graphics or pictorial trade marks, and other possibilities. Because the definition is inclusive, other types of marks, not specifically mentioned, can also be registered. One example is a 'movement mark', such as the 'jump' in Toyota's 'Oh what a feeling' commercials (see, for example Australian Registered Trade Mark No. 1500008). There are many famous examples of pictorial or ‘figurative’ trade marks (e.g. Apple’s ‘apple and bite’ trade mark and, in Australia, Holden’s picture of a lion). The trade marks of many corporations combine words with pictures. For example, Nike has a registered word trade mark (i.e. the word NIKE), and a registered figurative trade mark (i.e. the ‘swoosh’ picture). These two trade marks are used separately, and together as the Nike ‘logo’. The purposes of a trade mark The purposes of a trade mark include: • enabling the trade mark owner to distinguish their goods and services from those of other traders; • enabling purchasers to identify who makes or provides the goods or services (thus assisting in their decision-making on questions of quality, price and other purchasing considerations). For a trade mark owner to distinguish their goods or services from similar goods or services, their trade mark must do more than simply describe the goods or services. If the intended trade mark merely describes the product or service, then it is unlikely to be registrable as a trade mark (see ‘Registered trade marks’, below). For example, the word ‘tasty’ is unlikely to be registrable as a trade mark in relation to cheese because ‘tasty’ describes the taste of cheese. One trader cannot monopolise the word ‘tasty’ since other traders are likely to want to use the word to describe their own cheese. Also, the word ‘tasty’ does not clearly indicate a connection between the owner’s cheese and the owner, because ‘tasty’ describes cheese generally, not just the cheese from a particular trader. Registered and unregistered trade marks A trade mark can exist without being registered. Unregistered trade marks are known as ‘common law trade marks’ (see ‘Common law trade marks and passing off’, below). A trade mark can also be registered under the TM Act (see ‘Registered trade marks’, below). Registration is encouraged to: • allow clearer searching of available trade marks; Trade marks 7.7 Contributors: Anita Brown and Russell Waters, Principals, Phillips Ormonde Fitzpatrick