Need help with research essay related to intellectual property law

Need help with research essay related to intellectual property law
Intellectual Property Law Introduction Intellectual property law is the law that has been established with the intent of protecting creations such as brands, inventions, artwork, designs, and music. Initially, there was a law to protect only the tangible assets that individual Intellectual property law ensures the exclusive control and protection of both the tangible assets like artwork and the intangible assets like creative concepts and music. However, this does not mean that the intellectual property laws applied in one country will be applicable to other countries. For instance, a trade mark that comprises words in a foreign language should not be assumed that it will be registerable as a trade mark in Australia. This is because the Trade Marks Act 1995 in Australia defines a trademark, which is intellectual property law, should be able to distinguish the goods or services offered by the applicant in respect to the goods and services offered by the other people. 1 The adoption of trade mark and other intellectual property rights could help eliminate the need for companies to explain the qualities or nature of the products or services rendered to the consumers although it possesses some risks when the company wants to secure monopoly using the trade mark or other intellectual property rights. The objective of this paper will be to discuss the aptness of the statement made by Kitto J regarding the use of words with similar goods in a way that could infringe a registered trade mark granted in respect of it. Intellectual Property Law The statement by Kitto J (sitting as a single judge of the High Court) in Clark Equipment (1964) 111 CLR 511 (at 514) has raised issues and has been applicable to many cases related to intellectual property law. 2 Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 stated that the inherent distinctiveness is to be tested: “by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.” In the statement by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, the term ‘inherent distinctiveness’ was a concept that referred to the quality of the trade mark itself. 3 Inherent distinctiveness also meant that the trade mark could not be acquired through use in the market. Trade Mark cannot be Acquired In the Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424, Gibbs J. interpreted paragraph 26(2)(a) of the 1955 Act whereby Gibbs J . considered inherent adaptability to be something that depended on the nature of the trade mark itself. 4 This meant that the trade mark was not something that could be acquired . Through use or any other way, the inherent nature of the trade mark could not be changed. The Registrar of Trade Marks v W. and G. Du Cros Ltd. (1913) AC 624 at 634, 635) case also helped in understanding the impact of acquiring a trade mark. 5 In this case, Lord Parker of Waddington noted that the success of the applicant in effectively distinguishing his or her goods through the use of a trademark depended on whether other traders desired to use the same mark or another mark that closely resembled the mark upon or in connection to their own goods or services. Justice Finn, in Austereo Pty Ltd v DMG Radion (Australia), identified that “inherent adaptability is something which depends on the nature of the trade mark itself…and is therefore not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise”.6 Scope of Trade Marks The range and scope of a trade mark also vary from one geographical region to the other. In the Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 , the court widened the scope of a trade mark to include foreign descriptive words. The foreign descriptive words may be registerable under the Trade Marks Act 1995 (Cth) section 41. 7 The businesses that intended to use foreign words that were descriptive of the goods or services that were to be offered by the business as a trade mark in Australia could enjoy the peace of mind of understanding that they had a higher chance of their application for registration of the trade mark being accepted. This is attributed to the decision made by the High Court in Cantarella in 2014 in the Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 case. 8 For example, the High Court in Cantarella ruled that Italian words such as “Cinque Stelle” and “Oro” which were Italian words for “Five Stars” and “Gold” respectively were descriptive and distinctive enough and thus qualified to be registered as trade marks when it came to coffee and related goods. Despite the trial judge, Justice Emmett ruling in favor of Cantarella and holding that the Italian speakers were more likely to understand the meaning of the terms and the fact that the meanings of the terms were not very apparent among English speakers, the Full Court of the Federal Court in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 overturned the ruling in favor of Modena who had filed a cross-claim to have the trade marks canceled as per Section 88 of the Act. Modena’s appeal had sought to prove that the trade marks were not capable of distinguishing the goods offered by Cantarella as the terms used were Italian. 9 The reason cited by the Full Court of the Federal Court when granting Modena’s appeal was that the appropriate test that could be used to determine if the mark was “inherently adapted to distinguish” was through the definition held by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511: “…by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage- will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.” 10 However, the High Court in Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 case held that the appeal made by Cantarella regarding the decision of the Full Court of the Federal Court was founded on strong evidence as to the decision on to “whether other traders would be at least likely in the ordinary course of business and without improper motive, want to use the words in connection with the same goods” was incorrect. 11 Considerations when Registering Trade Marks ‘Ordinary Signification’ One of the considerations when registering a trade mark and when determining whether a proposed trade mark is inherently adapted or is distinctive or not to distinguish the goods involved is through determining “…what the ‘ordinary signification’ of the words proposed to be used as a trade mark is, to any person residing in Australia who may be concerned with the relevant goods claimed by the trademark”. 12 This means that the courts or any other person in charge of making decisions regarding whether a proposed trade mark is inherently adapted or is distinctive or not to distinguish the goods should consider if the proposed trade mark is invented and has no ‘direct’ reference to the features as well as the quality of goods. Eastman Photographic Materials Company Ltd v Comptroller General of Patents Designs & Trade Marks provided insight regarding the registrability of the foreign word ‘solio’. The court determined that “Solio” was an Italian and Latin word that was being used for other photographic papers, and was thus not an invented word and also reference to the goods. 13When the proposed trade mark is not an invented word or has direct references to the traits and quality of the goods, the proposed trade mark may be considered unregisterable. Additionally, in cases where the proposed trade mark is a geographical name, is a laudatory epithet, is a surname, has lost its distinctiveness, or has never had distinctiveness in the first place, then the proposed trade mark is unregisterable. For example, using words such as “America”, “tasty”, or “coffee” when referring to coffee products are terms that are not registerable. This is because such terms and words not distinctive and not distinguishable for a service or product offered by a company. However, foreign words whose ordinary meaning has only an allusive reference to some of the products or services being claimed can be considered to be registerable. Similarly, when the foreign word or words used for the proposed trade mark are considered to be directly descriptive of the service or the goods, then the proposed trade mark may prima facie not registerable. Once Ordinary Signification of a Word The other consideration when registering a trade mark and when determining whether a proposed trade mark is inherently adapted or is distinctive or not to distinguish the goods involved is through determining if the proposed trade mark will need to be used by the other traders in respect to their own services or products. 14 Once the ordinary signification of an English or foreign word has been established, it is always important to consider whether the other traders may consider the use of the word or not in respect to their own products or services. In the Philippart v William Whiteley Ltd case, his Lordship Parker J held that the word “diabolo” was an Italian word and thus not an invented word. 15 Additionally, the word “diabolo” referred to “the devil on two sticks”, which was a popular English game, and thus such a trade mark was not registerable. When the word being considered to be used for a trade mark is a foreign word, and the word has an ordinary meaning to the words amongst the Australians to the extent that the word is descriptive of the products or services with which registration is being sought, then the court or other decision-makers have to consider whether other traders may need to use the same word for their related products or services when assessing the eligibility of the proposed mark as a trade mark as noted in the Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 case. 16 Ordinary signification should thus be considered when determining whether the mark select is distinct to be used as a trade mark. His Honour, Justice Gageler , held that it is important to consider the extent to which monopoly would be granted through registering a mark as a trade mark would exclude the other traders from using such a mark on similar products or services without any desire to benefit from the reputation of the applicant. In cases where granting the applicant trade mark over the use of such a word would exclude other traders from using the word as it will have gained monopoly, then His Honour held that the trade mark should not be granted as a trade mark as per the Trade Marks Act 1995 (Cth) section 41. 17 However, when the word has no direct reference to the characteristics or the quality of the products or services, His Honour held that such an aspect was not a conclusion that the word to be used a mark to be used as trade was itself inherently adapted to distinguish the products or services from other traders. 18 This is because one had to think of the word to be used as a trade mark and how one may want to use it in connexion with similar goods in a way that would infringe a registered trade mark granted in respect of such a word. When it comes to foreign words, it was also very important to take into account the use of the word by other traders in a foreign or technical context. It is never easier to register trade marks for some of the words that are allusive, metaphorical, or words that have a direct reference to features and qualities of certain goods or services provided that the mark selected is not understood to be directly descriptive in Australia. Pursuant to section 41(2) of the Trade Marks Act 1995 (Cth), a trade mark application would be rejected if it is not capable of distinguishing between the designated goods and the goods of other persons”. 19 The mark selected to be used for a trade mark should be assessed to ensure that it does have inherent distinctiveness to be considered as a trade mark. Conclusion In conclusion, the statement made by Kitto J. that “…by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage- will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it” plays a major role in determining the way a trade mark and the whole consideration for what constitutes a trade mark are determined. In most cases, the decision-makers have to determine whether or not a proposed trade mark word or words are inherently adapted to distinguish goods and services in which they are sought like the way the Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 used an Anglocentric approach. Words that are descriptive of the features and quality of the goods and services that traders intend to offer to the consumers and are not “inherently adapted” to distinguish may not be registered as trade marks in Australia. General Comments I would suggest that you read the transcript of the Cantarella case, as your work contains errors. See here: http://eresources.hcourt.gov.au/showCase/2014/HCA/48 You should also discuss acquired distinctiveness. Use a font such as calibri rather than Times New Roman as it is easier to read on a screen. You need to use paragraphs correctly. Each paragraph should only contain one idea and should link to the next. Bibliography Australian Government, Trade Marks Manual of Practice and Procedure (January 2021) Boss Lawyers, Inherently adapted to distinguish – using foreign words as trade marks (2021) Davison, M., Monotti, A. and Wiseman, L., 2015. Australian intellectual property law. Cambridge University Press Handler, M., 2015. All that glitters is not gold: A critical assessment of trade mark distinctiveness under Australian law, part 1. Part, 1(2015), p.101 Ng, J., 2015. Trade Marks, Globalisation & Foreign Languages: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd. Media and Arts Law Review, 20(1), pp.74-81 Weatherall, K., 2017. The consumer is the empirical measure of trade mark law. The Modern Law Review, 80(1), pp.57-87 1 Weatherall. [57]. 2 Kitto J in Clark Equipment (1964) 111 CLR 511 (at 514). 3 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 4 Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424. 5Registrar of Trade Marks v W. and G. Du Cros Ltd. (1913) AC 624 at 634, 635). 6 Davison, Monotti, and Wiseman [93]. 7 Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 8 Boss Lawyers [para.10]. 9 Boss Lawyers [para.12]. 10 Boss Lawyers [para. 14]. 11 Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48. 12 Boss Lawyers [para.18]. 13 [1898] Act 571 (the ‘Solio’ Case). 14 Boss Lawyers [para. 21]. 15 [1908] 2 Ch 274 (the ‘Diabolo’ Case). 16 Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55. 17 Handler [101] 18 Boss Lawyers [para. 23]. 19 Ng [75]