Intellectual Property Law - Case Study

Running head: INTELLECTUAL PROPERTY LAW
INTELLECTUAL PROPERTY LAW
Name of the Student
Name of the University
Author Note

INTELLECTUAL PROPERTY LAW1
Question 1
Part A
Issue
The issue to be discussed in the present scenario would be whether there would be any
consequences faced by Jack for registration due to the objections made by Penny and Betty
regarding the name of the product and the slogan registered.
Rule
Section 17 of the Trade Marks Act 1995 (Cth)1 provides the definition of trademark as
the sign which is considered to be used or has been intended to be used to differentiate and
extricate the goods as well as the services that are dealt with in the course of trade by an
individual from the goods that have been dealt with by any other individual or person. There are
certain types of trademark available for registration, which includes trademarks, which have been
inherently adapted in order to be differentiated. It also includes the trademark that have not been
adapted inherently in order to be differentiated but have ascended due to its use during the time
of its application as they were distinctive in nature.
There are certain common grounds through which the registration of a trademark is
considered to be challenged. If the trademark is considered to be deceptive or confusing and
invokes the sections 43, 44, 60 of the Trademarks Act 1995 then such can be used as a ground
for challenging the registration of a trademark. It can be understood from the case of Shell Co of
Australia Ltd v Esso Standard Oil (Australia) Ltd[1963] HCA 66; 109 CLR 407; 35 ALJR 355;
1 Trade Marks Act 1995 (Cth).

INTELLECTUAL PROPERTY LAW2
[1962] ALR 3042. Other grounds for rejection would be if the trademark could not be
represented in a graphical form under section 40. The trademarks also cannot contain any
scandalous matter or contentious matter under section 42(a) which can be understood through the
case of Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd (2003)
57 IPR 5943.
In the instance of passing off one of the major purposes is considered to protect the
goodwill or the reputation of a party, which might have certain things. These would typically
represent a brand. Therefore, the goodwill is considered to have reasonably extensive reputation
and if some other person or individual misrepresents such to the public then the reputation of the
brand would be hampered. An allegation of passing off can be made by any brand or trademark,
which has not been registered. These trademarks, which are not considered to be registered,
would depend on passing off or any other misleading or deceptive claims, which would allege
the infringer to refrain from using the trademark4.
Application
From the above scenario, it can be understood that a new product had been invented
which was named BubbleUp by Jack and such was going to be registered as a trademark along
with the new slogan which was ‘Let’s get popping’. During the process of registration, there
were two objections, which had been made for his proposed trademarks from Penny and Betty
respectively. Penny was considered to be a soft drink manufacturer who had her product named
‘BubbleCup’, which she thought, was similar to the name of the product. In this particular
scenario according to the above rule, it can be understood that if a trademark is supposed to be
2 Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[1963] HCA 66; 109 CLR 407; 35 ALJR 355
3 Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd (2003) 57 IPR 594.
4 Stewart, Andrew, et al. Intellectual property in Australia. Lexis Nexis, 2018.

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registered it can be challenged on the ground of being deceptively similar. The name of both the
products were considered to be deceptively similar which might cause some kind of a confusion
in the minds of the consumers but the products were different as Jack’s product was a do-it-
yourself Champagne kit and the product that was sold by Penny was considered to be a non-
alcoholic beverage which were having variety of flavors. Therefore, due to the name of both the
products such could cause some kind of confusion. Therefore, the ground for challenge would be
appropriate. On the other hand, the new slogan that Jack had made was similar to the name of the
product, which was sold by Betty though; the products were different from each other. Betty had
never registered for the trademark. In spite of such, as it has been mentioned in the above rule if
the brand, which has not been registered can still, oppose or challenge a registration of a
trademark if their reputation depends on it. Therefore, Betty had the authority to challenge as
such determined the reputation of her brand as well as product even if the trademark had not
been registered.
If Jack has the ability to prove that, the product is not considered to cause any confusion
in the minds of the consumers or there has been no intention of deceiving the consumers then
Jack might be successful in registering the trademark. Similarly, in the case of Betty if Jack is
able to prove that the reputation of the brand is not considered to depend on the new slogan of
the product that is sold by Betty then the ground for objection can be cleared and Jack would be
able to succeed by registering his trademark along with the new slogan.
Conclusion
Therefore, it can be understood that Jack would be able to succeed if he is able to prove
that the trademark, which is to be registered, would not cause any kind of confusion or deception
and would not hamper the reputation of any other trademarks.