Advanced Intellectual Property Law

Running head: ADVANCED INTELLECTUAL PROPERTY LAW
Advanced Intellectual Property Law
Name of the University
Name of the Student
Author Note

1ADVANCED INTELLECTUAL PROPERTY LAW
ANSWER TO QUESTION NO 1
PART A
Issues
The issue in this present scenario is to determine whether Jack has any chances of
success in registering his product name and slogan.
Relevant laws
A product name or slogan for a business can be registered in Australia as trade mark.
Trade mark protection is followed by registration by paying a fee1. It is used to provide
protection against another people from using the substantially identical or deceivable similar
mark during the course of the business. It is registered with IP Australia. Section 7 of the
Trade Mark Act 1995 provides that the use of a trademark in relation to a product means the
use of a trade mark upon the product or in relation to the product2. Registration of trade mark
empowers the owner to exclusively use or control the use of the product for which it was
registered. To determine the name of a product, the product name can be registered.
Registration of product name gives power to the owner of the trademark to protect and
control the use of the marketing strategies relating to the product image name and the product
itself. It is to be verified before applying for registration of trademarks that the product name
and slogan are identifiable, unique and already registered.
A product name should clearly identify a product from the other competitors in the
marketplace, by distinguishing the unique attribute of the product. It implies the advantage of
the brand over the competitors. A registered trademark is eligible for legal protection. It also
motivates the consumers to purchase that particular product. A formal registration of a
1 (2018) Ipaustralia.gov.au <https://www.ipaustralia.gov.au/trade-marks>
2 Trademark Act 1995

2ADVANCED INTELLECTUAL PROPERTY LAW
product name with the IP Australia, helps the owner of the trade mark to be entitled to the
right use their product name exclusively within their country.
Businesses can use a combination of words for their slogan and have it registered.
Slogans can be used to distinguish the goods and services of the owner. According to Section
41 of the Trade Mark Act 1995, an application can be rejected for trade mark, if it is not
capable to distinguish the goods or services of the applicant for which the trade mark is
sought to be registered from the other goods or products in the market. In a recent judgement
the Federal Court enumerated the importance of trademark registration for the protection of
their use of slogans or phrases as a marketing tools. It was decided in this case that the
trademark protection should be used to provide exclusive rights to use the combination of
words in connection to the products traded under the words.
However, trademarks cannot be registered when it contravenes the provisions of
Trade Mark Act. Section 41 of the Act provides that a trade mark shall not be registered if the
trademark was not fit for distinguishing the goods and services for which the trademark was
sought to be registered. As per Section 43 of the Act, trade mark shall not be registered if it is
likely to create a confusion for other products or goods. Further Section 44 states that, a
trademark shall not be registered or be rejected if the trade mark is deceptively similar to a
trade mark which has already been registered by another person. In the case of Dunlop
Aircraft Tyres Limited v The Good Year Tire & Rubber Company [2018] FCA 1014 it was
considered that the trade mark application could be rejected as per section 44 of the Act3.
Application
In this present context, there was a similarity between the product name of John and
the product name of Penny, which was likely to confuse or deceive the purchaser. There may
occur an impression in the mind about the both products, which are deceptive or confusing.
3 Dunlop Aircraft Tyres Limited v The Good Year Tire & Rubber Company [2018] FCA 1014