A recent appeal decision of the Full Federal Court of Australia provides a reminder of the importance of securing trade mark registration rights appropriate to your business.
Despite the defendant using an almost identical trade mark on halal goods, the infringement claim failed because the services protected by the trade mark registration did not extend to sweeteners. Further, the Court decided that the registration for the logo shown below should be cancelled from the Australian Trade Marks Register because the logo was likely to deceive or confuse consumers into thinking it was the trade mark of an official or authoritative body (when it is not), and was not capable of distinguishing the services covered by the registration.
When seeking a trade mark registration it is important to consider the context in which the trade mark is to be used and to prepare a trade mark application accordingly. Periodic review of your trade mark portfolio is recommended to ensure your registration rights remain fit for purpose.
Trade mark registration confers proprietary rights, which can provide stronger and more certain rights in respect of a trade mark compared to relying upon common law or consumer rights legislation. The scope of registration rights is dependent on the goods and/or services specified.
A trade mark registration is infringed where, without authorisation:
- a sign that is substantially identical with, or deceptively similar to, the registered trade mark is;
- used as a trade mark;
- in relation to the same, similar, or closely related goods or services as covered by the registration.
In this case, the Court decided there had been unauthorised use of a trade mark that was essentially identical to the registered logo, but no infringement was found because the unauthorised use was in relation to goods that were not closely related to the services protected by the registration.
The trade mark owner is one of a number of private companies that provide halal certification to providers of halal goods and related services. The owner authorised traders to use the logo on packaging for goods to evidence that certification, but the trade mark registration itself did not specify goods of any kind, only services.
The goods in dispute were sweeteners. The Court indicated there may be particular goods, such as meat products, that might be considered closely related to the registered services, but the Court was not persuaded that sweeteners were closely related. Accordingly, no infringement was found.
At the time of filing, it would have been open to the trade mark owner to seek protection for goods or more particular services, such as halal certification services for particular food products. Had this been done it may have strengthened the infringement claim.
The Court cancelled the trade mark registration on the basis that the logo was likely to deceive or cause confusion, and because the logo was not capable of distinguishing the services of the registered owner from the services of other traders.
As a general rule, words that describe the goods and/or services to which a trade mark is to be applied are not inherently distinctive and are not registrable without evidence of acquired distinctiveness or without figurative elements as part of a logo. Where the figurative elements are themselves descriptive or otherwise incapable of distinguishing the goods or services of the owner of the mark from those of other traders, the mark risks being held devoid of distinctive character.
In this case, the logo was a combination of descriptive English words and Arabic lettering with what the Court described as a non-distinctive annulus of a kind in common use. The Arabic lettering was understood to convey to the relevant class of consumer the meaning of “halal”, that is allowed or permitted in accordance with Islamic rites. These elements, on their own and in combination, failed to distinguish the services of the registered owner from those of other traders.
Further, the annulus element contributed to the logo being likely to deceive or cause confusion. Its resemblance to an official seal or stamp of approval, in combination with the use of the word “Authority”, was found likely to convey the impression that the logo was the trade mark of some official or authoritative body, which was not the case.
An application for a certification trade mark rather than a standard trade mark may have been more appropriate in the circumstances. A certification trade mark is used to indicate that goods or services have been certified by a particular person as having certain qualities or characteristics, rather than distinguishing goods or services as being from one trade source. Examples of certification marks include the Australian Made logo and the Woolmark logo, shown below.
The applicant for a certification mark must provide rules to govern how the mark will be used, including the standards that must be met to use the certification mark.
At the time of going to print, no appeal has been lodged, but an application for the logo to be registered as a certification mark has recently been filed with the Australian Trade Marks Office.
Simpsons advises on the type of trade mark protection best suited to your business, together with apt descriptions for the goods and/or services to be protected. For assistance in filing trade mark applications fit for purpose, or to review your existing trade mark portfolio, contact Michelle Cooper or Michelle Eadie. For more information about dispute resolution, contact Adam Simpson, Clare Young, or Seb Tonkin.
By Michelle Cooper