This article is the second part to a two part interview with a Patent Attorney. This first part dealt with copyright issues; for information on copyright please refer to that article. This article is intended to help designers understand their right and obligations with regards to trademarks. The information is from an Australian view point so the laws in your country may differ, however the issues should be relevant to everyone.

The blog outlines what a trademark can be, what its function is and how it works.

Part 2. Trademarks

What is a Trademark and when would a company use ™ or ®?

Registration of trademarks is governed in Australia by the Trade Marks Act 1995 and the regulations to that act. These can be found at this link and this one. A trademark can be a word, several words, a logo, a smell or a sound or a combination of two or more of these things. If a trademark (and in Australia the term is usually rendered as two word i.e. trade mark whilst in the USA for example it is generally renders as a single word trademark) is being used on an unregistered basis then the owner of that unregistered mark may use the notation “™” after the mark wherever it appears and it is advisable to use that notation. A trademark might be used on an unregistered basis either because the mark does not qualify for registration under the Trade Marks Act 1995 or because the mark is not as yet registered under that Act. Where a mark is used on an unregistered basis, rights are acquired to it under common law. The rights that are secured by registration are superior to common law rights and it is easier to enforce a registration. In general terms, a trademark is a mark (or a “sign” as the legislation calls it) used to distinguish the goods or services of one trader from the goods or services of another trader.

For a trademark to be registrable under the Act it must be qualified for registration within the terms of the Act. Once it is registered it is then permissible and advisable to use the notation “®” after the mark wherever it is used.

I have had some further thoughts. A trademark might also be a shape. The shape needs to be something apart from the actual shape of the product being sold. The following Grolsch bottle is registered. Also, the Galliano bottle is registered.

As to smells, there is a registration for the scent of eucalyptus radiata covering golf tees. Scent or smell marks are quite rare.

Twentieth Century Fox Film Corporation have a trademark registration of a sound described as “The trade mark consists of the tune represented in the musical score attached to the application form which is recorded on the audio cassette tape accompanying the application form” and represented musically as…

This is the sound played at the commencement of their films. The Copyright Regulations 1969 may be found at this url

How can a logo designer make sure they’ve not unwittingly infringed on someone’s mark?

The designer should ensure that the logo he produces is an original work and has not been copied from elsewhere. Further to this, the designer should be aware of common law marks that might be used in the market place. It can be difficult to determine what marks might be out there and used on an unregistered basis. Trade Journals, magazines and other publications and literature might give a clue as to what is being used by other traders on an unregistered basis as indeed would a general knowledge of the industry to which the logo might relate. There is no easy way to search for marks that might be used on an unregistered basis because there is no “register” that can be searched for such marks or logos.

As to registered trademarks which might protect logos and other marks under the Trade Marks Act 1995, that is a different matter. It is possible for a suitably skilled solicitor or patent & trade mark attorney to conduct a search of registered trademarks or marks the subject of pending trademark applications and establish whether a logo or other mark infringes or is likely to infringe a registered trademark or whether there is likely to be infringement, when registered, of a trademark the subject of an application for trademark registration. These searches may be carried out on a database maintained by ipaustralia (the Australian Patent and Trademarks office). The database may be searched at this address

What typically happens when a mark is infringed upon?

When a trademark is infringed the first thing that might happen is that the alleged infringer will receive a letter of demand (a cease and desist) letter from the owner of the unregistered mark or owner of the registration. That letter will make various demands. If there is infringement and the alleged infringer wishes to avoid litigation then those demands (or any variations of them that the parties settle upon) might be agreed to, a settlement agreement may be reached and the matter might be resolved. If the matter cannot be resolved in this way and the party with the trademark rights (be they common law rights or rights obtained by registration under the Trade Marks Act 1995) may wish to commence litigation to seek a remedy (typically an injunction requiring that the infringing activity stop, deliver of infringing goods and an award or damages or an account of profits and an award of court costs). In some cases, where, on the face of it, infringement is occurring and the circumstances warrant it, a court my grant an interim or interlocutory injunction to stop the offending activity pending a full trial of the issues.

Do you have any anecdotes you could share relating to logos or other design?

In recent times Woolworths filed for trademark registrations for its new “w” logo which looks like this

These applications were opposed by Apple Inc. Apple Inc is the owner of the mark

The oppositions objecting to the registration of the Woolworths trademark applications are still pending and have yet to be decided. I guess the basis of the oppositions is that Apple Inc contends that the logo of Woolworths is too close to logo used by Apple Inc. In my view, the two marks are not all that close and I am of the view that eventually Woolworths is likely to prevail and will be successful and will secure registration for its logo. I also expect that once the Trade Marks Office decides the oppositions, the unsuccessful party will appeal to the Federal Court and maybe the matters might be appealed to the full Federal Court and who knows the High Court may well then be asked to consider the matters. Appeals to the High Court are only granted with leave by the High Court. There are limits on the sort of matters that the High Court considers on appeal from lower courts. Both parties have deep pockets!

Conclusion

This information is current for April 2011. For more information view this PDF on copyright ownership. For further information relating to trademarks please read the second part to this blog article.

About the author

Chris Eichberger is a freelance graphic designer from Australia listed in DesignCrowd’s Graphic Designers Directory. You can contact and hire Chris via Chris’ portflio or DesignCrowd’s crowdsourced design service.

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