One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Special types of trade marks
Collective trade marks
Collective trade marks are used by members of a certain organisation. They function similarly to certification trade marks but, unlike standard trade marks, collective trade marks cannot be sold, assigned or leased to another party. Collective trade marks are similar to certification trade marks in that the party registering the trade mark is not necessarily the party who will be using the mark.
Functions of a collective trade mark
Collective trade marks are trade marks used by members of an association to:
- Differentiate the association’s goods or services from the goods or services outside the association; or
- To identify membership within the organization.
In this way, the collective trade mark is used both for commerce and identification.
Applying for a collective trade mark follows the same process as applying for a regular trade mark. Similarly to a regular trade mark, the registered collective trade mark remains protected as long as all renewal fees are paid.
One important difference between collective trade marks and regular trade marks is that collective trade marks cannot be sold or assigned to another owner.
Who can apply for a collective trade mark?
The application for a collective trade mark must be filed by an organisation or association. This means that an individual may not solely file for an application.
An association may be incorporated, such as FTD Inc. or unincorporated, such as the Australian Association of Social Workers (AASW).
Examples of collective trade marks
|Collective Trade Mark for an Unincorporated Association||The Australian Association of Social Workers, or AASW, is a professional group of social workers across Australia that work together to promote the social work profession and act as a strong voice for social justice in relation to social work. The group’s trade mark is registered under mark number 1592138. To gain membership, an applicant must hold an AASW approved social work qualification from an Australian university or AASW recognized qualifications from overseas. There are over 11,500 members in the association that use the collective trade mark AASW and benefit from the advantages of using the trade mark. The main advantage of being eligible to the use of this trade mark is to show qualification, accountability, and commitment to safe and quality practice for clients. Some employers look for AASW members during their recruitment process for these reasons.|
|Collective Trade Mark for an Incorporated Association||The International Alliance of Research Universities, or IARU, is a group of universities that work together to research and correct major issues in the world and provide students and faculty with opportunities they would not otherwise have. The group has a collective trade mark registered under trade mark number 1124464. The IARU provides students with internships, research opportunities, and discussions on public issues. In order to be eligible for these opportunities, a student must be enrolled in one of the IARU universities.|
Certification trade marks
Certification trade marks are applied for goods and services that meet a certain standard. Examples of such standards or characteristic include:
- A specific standard of quality to which the goods or services are adhering to;
- A specific composition that the goods possess;
- A manufacturing method that the goods underwent; or
- A geographical origin from which the goods come from.
Notably, a certification trade mark is ideal for protecting geographical indications. One such example is Scotch Whiskey.
Who can use a certification trade mark?
A certification trade mark can be used by different traders on their goods and services.
How do you apply for a certification trade mark?
Applying for a certification trade mark follows the same process as applying for a regular trade mark. The only difference is that a copy of the certification trade mark’s set of rules is provided by the applicant within the application process. The set of rules ensures that the standard or characteristic is always satisfied by the product or service.
The applicant of the certification trade mark is responsible for ensuring that the goods or services adhere to the set of rules provided by the applicant. The application and the rules will be approved by the Australian Competition and Consumer Commission.
What are certification rules?
At a minimum, the certification rules that the applicant needs to submit must:
- Define the standard or characteristic that the goods or services adheres to;
- Define a way for the applicant to know when the goods or services are not adhering to the specified standard or characteristic;
- Define the qualifications of the person certifying the compliance of the goods and services to the standard or characteristic;
- Define the conditions that the owner or qualified user of the trade mark must comply with before using the trade mark; or
- Define the steps taken for resolving conflicts regarding compliance or non-compliance with the standard or characteristic.
Examples of certification trade marks
|The Australian Carpet Trade Mark (309403)||The Australian Carpet trade mark is applied to carpets that have been classified under the technical guidelines of the Australian Carpet Classification Scheme.These guidelines include:
The environmental certifications include:
|The Mohair Trade Mark (315261)||The Mohair Trade Mark was established by the International Mohair Association Limited to certify products that are of no less than 25% Mohair by weight, having come from the Angora goat. The Mohair Trade Mark can be applied to the following categories:
Geographical indication trade marks
A geographical indication (GI) refers to a name or sign that links a product back to a specific origin and attributes to the product certain qualities or characteristics that are specific only to that geographical area.
In Australia, GIs are protected by certification trade marks as well as special legislation for foreign and Australian geographical indications and the Australian consumer law. Special legislations state that falsely claiming a graphical indication is a criminal offense, whereas the Australian Consumer Law sanctions parties who deliberately seek to mislead or deceive consumers, in this case, by falsely stating the geographical origin or geographical indication of a product.
How to register a geographical indication in Australia
Two systems are in place to register a GI in the country. First mode of protection for geographical indicators in Australia is through applying for a certification trade mark (in relation to all goods).
The second route for protecting GI is through a sui generis system that applies to wine and grape products and is administered by the Australian Grape and Wine Authority. To date, more than 100 Australian and 2000 European wine geographical indications have been recorded in the registry.
Examples of geographical indications
Examples of foreign graphical indications registered in Australia include Parmigiano Regianno (Certification mark 677876) for cheese, Scotch whisky (Certification mark 1532781) for spirits and spirit based beverages and Darjeeling (Certification mark 998592) for tea.
Defensive trade marks
Defensive trade mark applications are generally filed by owners of well-known marks in respect of goods/services they have no intention of using, but for which they wish to proactively prevent another party from using or applying for a similar trade mark that would imply a connection to their brand under different goods and services. Defensive trade mark registration provides protection for extensively used trade marks against the misuse of their trade mark in a way that would harm the value or reputation of the trade mark. It also protects consumers from confusion that comes from a third party using a trade mark that is well-known.
According to the Trade Marks Act 1995, the owner of a defensive trade mark registration can obtain relief if their trade mark has been infringed. A defensive trade mark registration provides the most convenient access to relief from misuse of a trade mark. For a defensive trade mark, there is no requirement to use the trade mark covered by the registration. For this reason, a defensive trade mark cannot be removed from the register because of non-use.
One requirement for filing a defensive trade marks is that the trade mark should be already registered under its corresponding classes of goods and services during the time of application of the defensive trade mark.
Examples of defensive trade marks
|Vogue||The trade mark owner of VOGUE registered defensive trade marks under Class 42 in relation to retail and wholesale services in respect of perfume, essential oils, cosmetics, hair lotions, shampoos, hair conditioners, toilet soaps, printed matter, books, magazines, clothing, dressmaking and soft furnishing fabrics, bed linen, table linen and curtains; beauty salon services and photographic services in this class, (as well as other classes covering goods like rugs and mats and real estate services). VOGUE may have no interest in using the goods under the aforementioned classes; however, as a well-known brand, they wish to prevent any other trader from improperly using the mark for different goods.
In addition, defensive marks are not subject to non-use disputes, so a salon owner who wants to use the word “Vogue” cannot file a request for removal due to non-use against the owner of the VOGUE trade mark.
|Nike and Aldi||Further examples of defensive trade marks are the companies NIKE and ALDI. NIKE has a defensive trade mark against beers and non-alcoholic beverages, while ALDI has a defensive trade mark against firearms, medical services, veterinary services, tattooing and security services. Both companies filed defensive trade marks under these respective classes to prevent the public from associating their brands with these goods and services.|
The considerations for choosing the best type of trade mark(s) to file for your brand may be involved but our trade mark attorneys can quickly point you in the best direction. If you require assistance in deciding what type of trade mark to file, please contact us on +61 2 9264 6716.