#trademarks

Can I register the shape of my product as a trade mark?

Steve Davey

Feb 15, 2019
11 min

Can I register the shape of my product as a trade mark?

A three-dimensional shape is registrable as a trade mark if it meets the requirements of the Trade Marks Act. Shapes may be capable of distinguishing The test for whether a shape is a trade mark was set out by Kitto J in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd, (the Barrier Cream case (1965) 112 CLR 537 at 555) and is paraphrased as follows: "The question to be asked in order to test whether a [shape] is adapted to distinguish o

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Steve Davey

Feb 14, 2019
1 min

How do I stop a cybersquatter?

Cybersquatting occurs when someone registers a domain name which includes a brand to confuse consumers or to make a profit from the rightful owner of the mark. If the cybersquatter won’t sell the domain to you for a reasonable price, then you can potentially have it transferred to you or cancelled. We can assist you to make a complaint to the appropriate authority. The appropriate authority for ‘.com.au’ domains is the ‘.au Domain Administration Ltd’ (.auDA). The appropria

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Can my trade mark registration be revoked for non use?

Steve Davey

Dec 19, 2018
3 min

Can my trade mark registration be revoked for non use?

A trade mark registration can be revoked if it is over 5 years old and the trade mark hasn't been used by the owner (or an authorised user) in a continuous 3 year period beginning one month before a non-use attack. The key to surviving a non-use attack is to ensure that the registered owner controls the use of the trade mark. The registered owner will control use of the mark if the owner exercises quality or financial control over the trading activities. Financial control may

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Can I use my competitor's brands to improve my website ranking?

Steve Davey

Jul 5, 2017
1 min

Can I use my competitor's brands to improve my website ranking?

You can the improve your website's ranking on Google by: Search Engine Marketing ("SEM"). This involves purchasing keywords from Google (known as "Google AdWords") which can cause an advertisement for your website to appear above Google's organic search results when a user uses searches for keywords; and/or Search Engine Optimisation ("SEO"). This involves using terms as 'metatags' in the source code of your website to make the your website appear in Google's organic search

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If I file my trade mark application with the wrong owner's name, will my application be valid?

Steve Davey

May 26, 2017
2 min

If I file my trade mark application with the wrong owner's name, will my application be valid?

If you are not the first entity to use a particular trade mark in Australia, then you are not the owner of that trade mark and your application will be invalid. If you think your trade mark was filed in the name of the wrong entity, then you will need to file a new application in the name of the true owner. Your application will only be valid if you are the author of the trade mark and you are: 1. intending to use the trade mark; or 2. authorising (or intending to authoris

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Should I bother registering my trade mark in China?

Steve Davey

Feb 15, 2017
2 min

Should I bother registering my trade mark in China?

If you have any prospect of business in China, it is wise to register your mark there before your business associates or competitors do so. The first to file a trade mark application in China is the first in right to the trade mark. This is different to the situation in Australia, where the first to use a trade mark is first in right to the trade mark. In addition to registering your mark in English, your should also register the phonetic equivalent in Chinese characters. I

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If I don't use my registered trade mark, will I lose it?

Steve Davey

Aug 11, 2016
2 min

If I don't use my registered trade mark, will I lose it?

If you registered your trade mark over 3 years ago, and you haven't used it in the course of trade for 3 years, then a competitor could initiate a "non-use action" to remove your mark from the register. So what constitutes "use in the course of trade"? This was the subject of Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939. Dick Smith registered his OZEMITE brand on 28 October 1999. However, he didn't get his actual product to market until 2012. In the meantime, a comp

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Will my trade mark be distinctive if it contains descriptive words in a foreign language?

Steve Davey

Dec 2, 2014
2 min

Will my trade mark be distinctive if it contains descriptive words in a foreign language?

A trade mark has to be distinctive in order to function as a trade mark. It cannot contain terms which traders generally use to describe characteristics of their products or services. If you use entirely descriptive terms in a common foreign language, then it is likely that your trade mark won't be registered or your registration could be revoked for lack of distinctiveness. For example, if you branded your trade mark "Il Meglio", which means "the best" in Italian, then othe

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Should I use descriptive terms in my trade mark?

Steve Davey

Jun 20, 2014
2 min

Should I use descriptive terms in my trade mark?

Many people think its a good idea to use descriptive terms in their trade marks to help consumers understand the nature of their business. They register logos with the descriptive terms, hoping that the stylisation of the logo will make the overall trade mark sufficiently distinctive for registration. In many cases, the Trade Marks Office will accept stylised logos containing descriptive terms. applicants are given a false sense of security that they will be able to stop thi

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Can I win a case without direct evidence of infringement?

Steve Davey

May 2, 2013
2 min

Can I win a case without direct evidence of infringement?

Without the infringing goods, or some direct evidence of infringement, a court will not be able to make a finding of trade mark infringement in your favour and it will not be worth commencing court proceedings. This was shown in the case of Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2013] FCA 986. Aristocrat is a well known Australian producer of gaming machines. Global contracted with Mr Riad Allam to refurbish Aristocrat gaming machines to s

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Can I import branded goods from overseas without breaching Australian laws?

Steve Davey

Sep 11, 2012
2 min

Can I import branded goods from overseas without breaching Australian laws?

"Grey goods" are genuine goods imported into Australia by someone other than the trade mark owner or an authorised licensee. This is often referred to as "parallel importation." You can import grey goods into Australia if the trade mark owner in Australia is the same as the trade mark owner which produced the goods overseas. This is something that we can easily check for you. Section 123 of the Trade Marks Act provides that an importer is held not to have infringed a regist

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Steve Davey

Dec 9, 2010
2 min

Should I choose a descriptive brand?

Short answer: definitely not. Why? Because it's difficult to stop others from using them. A case in point is the PERSIAN FETTA trade mark, which was the subject of Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367. In that case Yarra Valley claimed that Lemnos Foods was infringing its "PERSIAN FETTA" trade mark by using an identical mark. Yarra Valley also alleged that Lemnos Foods was engaging in passing off and misleading and deceptive conduct. Lemnos coun

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