Advanced Intellectual Property Law: Trademark and Slogan Analysis

This assignment is a comprehensive report on advanced intellectual property law, addressing key issues related to trademark registration, slogan protection, and the impact of international agreements. The report begins by analyzing a scenario where an inventor, Jack, attempts to register ...Read More

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

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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

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Additionally, it would infringe the right of the user who has registered his or product name or
slogan. Herein, Jack’s application for registration of trademark for his product in the name as
BubbleUp may face objection or rejection, as it may confuse the product with BubbleCup.
Both the products are of a similar nature, which may lead a purchaser to believe that they are
the same.
However, if a product name or slogan or design is not registered as a trade mark, it
cannot claim the protection of restricting its use. Therefore, Betty cannot claim any protection
as to the product name for her product. The product name she had used was not registered
which disables her to make a claim that Jack should refrain from using the name as a slogan
for his product. No objection can be made from Betty’s end to restrict the use of her product
name by any other user.
Conclusion
It can be decided from the above discussion that, Jack may not succeed in registering
his product name but he can register his slogan for the products.
PART B
Issue
This issue revolves around the relevant provisions of Trade Mark act 1995. Section 15
of this Act regulates the definition of originated in relation to beverages made from grapes. It
says that only a beverage made from grapes that are grown within the territory of Australia or
of that country. A wine shall be considered to be originated in a particular locality or region
of a foreign country or that of Australia if the beverage were made from grapes which grew
in that locality or region. If the product label makes a false claim it cannot register its name
with trademark. Trademark is issued to give protection to the unfair competition between
companies or products. It helps the customer to distinguish between two products and it also

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helps to protect the reputation and investment of the trade mark owner. A registration for
trademark can be opposed in support of the same ground as for a rejection of registration of
trademark. If a trademark does not justifiably and sufficiently distinguishes the product so as
to remove the confusion or deceive the product. If some connotation of the trade mark has the
use of the trade mark with regard to the product would deceive or cause a confusion, such
trade mark should not be registered, as stated in Section 43 of the Act. Additionally, Section
44 of the Act clarifies that a trade mark containing any identical or deceptive similarity with
another goods, should be rejected. In the case of Accor Australia & New Zealand Hospitality
Pty Ltd V Liv Pty Ltd [2017] FCAFC 56 the deceptive similarity between two products were
identified and the court decided that the similarity should be enough to remove the
distinctiveness of the product with other product4. In Colorado Group Ltd v Strandbags
Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506, Allsop J had identified that the
purpose of this Act is to identify a product by its trade mark5. In Re Hick’s Trade Mark; Ex
parte Metters Bros [1897] VicLawRp 118; (1897) 22 VLR 636 it was observed that the
registration of trade mark provides a right to the owner in relation to his products to make it
distinguished from other similar product for the purpose it was registered6. In Shell v Esso, it
was demonstrated that a trade mark to have deceptive similarity, the trade mark should be
compared with the similar trade mark and considered on the total impression of similarity
which emerges from the comparison7.
Competition and Consumer Act 2010 requires that a product labelling to contain the
correct information to the consumers and it should not make any false, misleading or
deceptive information to the consumers8.
4 Accor Australia & New Zealand Hospitality Pty Ltd V Liv Pty Ltd [2017] FCAFC 56
5 Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506
6 Ex parte Matters Bros [1897] VicLawRp 118; (1897) 22 VLR 636
7 THE SHELL CO. OF AUSTRALIA LTD. v. ESSO STANDARD OIL (AUSTRALIA) LTD.[1963] HCA 66;
1961 CLR 407; 35 ALJR 355; (1962) ALR 304
8 Competition and Consumer Act 2010

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Application
For a trade mark to be used for a product, it is required that the word used in the
product are true to its meaning and not deceptive. Jack used the word ‘Champagne’ on the
label of his do-it yourself kit. It shall create an impression over the purchaser that the product
is contained grapes from Champagne region. The claim of the Champagne Manufacturer
would be justified in this case. If the product is using the word Champagne and registering
the name of the product, it would mean what it means by the use of such word. It should not
be deceptive or create a confusion in the mind of the purchaser. The kit which Jack was
selling, contained reconstituted grape powder from Australian grapes. For the purpose of the
Trade mark Act, Jack should have mentioned it in the label of his product that it contained
Australian grapes powder and not Champagne region grapes. It makes his product claims
distinctively similar to that of the products of the Champagne manufacturers in France. The
claim in the product of Jack is not justified and resembles the other use of that mark, which is
likely to deceive or create confusion. Trade mark shows the badge of the origin in this case
and is used to indicate that the product is originated from such an origin as can be observed
from the statement on the label. No product should contain a deceptive or false claim in their
labelling, as per the Competition and Consumer Act 2010. Ms Dahlke commented on the
decision as given in the John Fitton & Co Ltd’s Appn (1949) 66 RPC 110 that the term like to
deceive or cause confusion does not limit the nature of deception or confusion9.
Conclusion
Hence, in this case, Jack did not provide correct information as to the claim in his
label and cannot claim protection of trade mark for his product.
Answer to Question No 2
PART A
9 John Fitton & Co Ltd’s Appn (1949) 66 RPC 110

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An international agreement helps the enforcement of Intellectual Property rights over
the other jurisdictions. The owner gets the rights of importation of goods from other
jurisdiction which is an important part of his ownership. The enforcement or effectiveness of
the trademarks, copyrights and patents in the other jurisdiction relies on the international
agreement as domestic law does not have any extraterritorial effect.
Australia has entered into bilateral and plurilateral agreements that includes
intellectual property rights. As a member to the World Trade Organisation, Australia has
entered into the Agreement of Trade-Related Aspects of Intellectual Property Rights, which
has set out some general principles, and also contains minimum standards for intellectual
property rights and deals with the enforcement procedures of those rights10. Most of the
intellectual property treaties have been developed through the World Intellectual Property
Organisation11. WIPO administers many multilateral treaties most of which Australia is a
signatory. The treaties to which Australia is a party can be divided in four categories, namely
as: Global Protection System, IP Protection agreements, Administrative Treaties and
Classification Treaties.
Global protection systems: The Patent Cooperation Treaty and the Madrid Protocol
for International Trade Marks has provided with some routes to file for IP protection in
numerous countries.
IP Protection Agreements: Paris Convention is one of such agreement which provides
basic legal standards for the IP protection and has been incorporated in the TRIPS
Agreement.
10 Dür, Andreas, Leonardo Baccini, and Manfred Elsig. "The design of international trade agreements:
Introducing a new dataset." The Review of International Organizations 9.3 (2014): 353-375.
11 Malbon, Justin, Charles Lawson, and Mark Davison. The wto Agreement on Trade-Related Aspects of
Intellectual Property Rights: A commentary. Edward Elgar Publishing, 2014.

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Administrative Treaties: the Singapore Treaty on the Law of Trademarks and the
Patent Law Treaty streamlines and simplifies the process to obtain rights internationally with
the help of limits on administrative requirements.
Classification Treaties: Strasbourg Agreement is concerned with the international
classification of patents to organise IP information into a manageable structure. Nice
Agreement is designed in relation to international classification of goods and services for
trade mark.
Apart from these, Australia is also a party to the International Union for the Protection
of New Varieties of Plants to provide an effective system of plant variety protection
internationally. As a benefit for being a party to these international agreements, the IP rights
of the owners are receives a standardized protection across different jurisdictions and it also
helps in identifying new matters which requires protection. International agreements
facilitates to obtain IP rights at various level to promote cost and time effectiveness12. As an
example, the Madrid Agreement allow to registration of trademarks at an international level.
It also protects the rights of the owner where the domestic laws fails to provide it effects.
PART B
International regime for regulating intellectual property rights at the national
level in all countries
There is a significant need to implement an international regime to regulate
intellectual property rights at the national level in the countries. The advantages that the
international intellectual property regime regulating the intellectual property rights offers to
the countries are of substance and it has also helped in developing the framework of
protection of the owners. The international conventions and agreements offers the owner
12 Malbon, Justin, Charles Lawson, and Mark Davison. The wto Agreement on Trade-Related Aspects of
Intellectual Property Rights: A commentary. Edward Elgar Publishing, 2014.

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from a member state the equal treatment in the other states. An effective implementation of
this tradition is needed in every country as to protect the interests of trade mark or copy right
owner in an international aspect. International intellectual property rights has an impact over
all the facets of human progress. The effective implementation of intellectual property rights
as an international regime could make its role better in social, economic, cultural and
technological development at the national level.
Issues in implementing international regime regulating intellectual property
rights at national level
Extraterritorial protection of IP rights at national level is not always advantageous for
the countries. There may occur a situation that creates a conflict between that international
regime and domestic laws of the country. Laws and rights to individual varies to one country
from another, there can never be a universally accepted rights over a thing. Harmonisation in
the standard of right may not prove to be effective in every case. The process of providing
protection may get complicated in certain situation. Countries may face a dispute in treating
the nationals of a country equally with foreigners. The need and method of IP protection may
also vary from country to country, the main purpose should be to benefit the producers in a
proper way as well as the society and economy at large. The system of international regime
for intellectual property rights at national level is comprised of overlapping and parallel
treaties which are populated by shifting of issues and state and non-state actors.

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Reference:
Cases
Accor Australia & New Zealand Hospitality Pty Ltd V Liv Pty Ltd [2017] FCAFC 56
Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506
Dunlop Aircraft Tyres Limited v The Good Year Tire & Rubber Company [2018] FCA 1014
Ex parte Matters Bros [1897] VicLawRp 118; (1897) 22 VLR 636
John Fitton & Co Ltd’s Appn (1949) 66 RPC 110
THE SHELL CO. OF AUSTRALIA LTD. v. ESSO STANDARD OIL (AUSTRALIA) LTD.
[1963] HCA 66; 1961 CLR 407; 35 ALJR 355; (1962) ALR 304
Statutes
Competition and Consumer Act 2010
Trademark Act 1995
Website
(2018) Ipaustralia.gov.au https://www.ipaustralia.gov.au/trade-marks
Journal
Dür, Andreas, Leonardo Baccini, and Manfred Elsig. "The design of international trade
agreements: Introducing a new dataset." The Review of International Organizations 9.3
(2014): 353-375.
Malbon, Justin, Charles Lawson, and Mark Davison. The wto Agreement on Trade-Related
Aspects of Intellectual Property Rights: A commentary. Edward Elgar Publishing, 2014.