The following Decision by the Delegate serves as a reminder that in general, film titles will not function as trade marks.
Why are foreign jurisdictions considered when discussing trade mark? Trade mark rights are territorial, which means that protection is enforceable only in the country of registration. An Australian trade mark may be protected by law in Australia and cover several special regions, such as Christmas Island, Keeling Islands, Nauru and Norfolk Island. On the other hand, the same trade mark may be subjected to blatant counterfeiting in other countries, for example, a local party in first-to-file countries may hold operations hostage by registering a mark that was originally created in Australia, thus making operations in that jurisdiction by the original Australian owner an infringing behavior. Thus, trade mark registration in other jurisdictions is highly important for brand owners, especially when considering how widespread globalisation and eCommerce has rendered the physical distance of countries as irrelevant.
Given its proximity to Australia and close trading relationship, trade mark protection of the Australian trade mark in New Zealand is highly encouraged. The trade mark laws of Australia and New Zealand have similarities and differences; while both nations have a “first to use” rule, New Zealand trade mark law tends to follow more closely the British counterpart. Given that Maori is an official language used in New Zealand, it is recommended that filing a trade mark registration in New Zealand includes the English translation and transliteration and that all versions are registered separately. Trade mark applications may be filed directly to the Intellectual Property Office of New Zealand (IPONZ) or through the Madrid Protocol.
For these nations, only common laws protect brands, and no national trade mark registration system exists. Use of goods and service marks can be protected by common law rights of passing off through establishing genuine use, public awareness, and possibly posting cautionary notices in the papers.
With the US being the third largest two-way trading country with Australia, trade mark registration in the country is crucial. Trade mark registration can be directly filed to the US Patent and Trade Mark Office or lodged through the Madrid protocol. However, one key difference between the Australian and US jurisdictions is that power of attorney is required for lodging a US trade mark registration if the Applicant’s domicile is outside the US, whereas no such document is required for an agent to act for you in Australia, only an Australian address is required as the address for service.
In addition, while both countries use the Nice classification of goods and services, US is very specific and concise. This means that while an Australian trade mark registration can cover a broad scope of goods and services, the same mark in the US may have comparatively narrow coverage.
Up until March 2019, applications for trade mark registration in Canada were only filed directly to the Canadian Trade Marks Office. Now, Canada is the 103rd nation to accede to the Madrid Agreement, and several notable changes have been implemented in the country’s trade mark system in the same year.
Similarly to Australia, Canada is a “first to use” jurisdiction. Even so, prior use is not a requirement for registering a trade mark in the country, with intent to use being sufficient for filing a trade mark application. Registrability of word marks rely on both the English and French versions of the mark.
After registration, the validity of a trade mark may be challenged at any time, but trade marks that have been registered for five years cannot be challenged on the basis of prior use unless the owner is proven to have adopted the mark knowing there was prior use of it. Trade marks that are not used within a period of three or more consecutive years may be removed from the Canadian trade marks register due to non-use.
Certain South East Asian nations are key target markets for expansion of Australian companies.
Trade mark protection should not be neglected as counterfeiting and infringement is rampant in some countries in the region. Most South East Asian countries follow the “first-to-file” rule, so trade marks should be registered as soon as possible. Trade mark applications can be lodged directly to the countries or through the Madrid Protocol, as six member countries in the region are members (Singapore, Cambodia, Laos, Vietnam, Philippines and Thailand).
China is one of Australia’s largest trading partners and is a popular jurisdiction for protection of IP rights. The Chinese trade mark system is highly complex and ever-changing. Here are several main points that need to be considered when filing a trade mark registration in China.
As opposed to those in Australia, a “first-to-use” jurisdiction, China’s intellectual property rules give priority to those who file their trade mark first. This provision does not bode well for foreign companies looking toward expanding or producing in China, with issues such as trade mark squatting being prevalent even with the increasingly stringent IP laws applied by the country in recent years. As such, filing a trade mark as early as possible is the most effective way to protect your trade mark in China.
China uses the Nice Classification of Goods and Services, but the classification system is further divided into subclasses. Items in different subclasses are generally not considered similar to one another. Therefore, when preparing a trade mark application in China, it is important to ensure relevant subclasses are covered. Our team is very experienced in class and subclass selection in China.
If you hold an Australian trade mark application or registration and would like to file a Convention trade mark application in China or a Madrid application designating in China then we strongly recommended that you engage a registered Australian trade mark attorney to make the filing, including a review of your filing particulars and amendment of the specification according to the requirements of Chinese legislation.
Chinese consumers prefer to use Chinese names for foreign brands. You may be advised by your marketing consultant that you use a Chinese translation or a transliteration of your English brand name when you enter China. To avoid the Chinese brand names being taken by others, it is wise to protect them with trade mark registrations when the brands are adopted. Failing in protecting the Chinese names of the brand soon enough may result in the names being registered by manufacturers, distributors, or even your customers, and their registrations could block your marketing and business in China.
In selecting Chinese names, it is important to consult with trade mark attorneys about the various meanings of the Chinese characters that you intend to use. Our Mandarin-speaking trade mark attorneys at Baxter IP can help advise around choice of Chinese brand names and which may be suitable in a Chinese context.
Japan is one of the top three trading countries with Australia; thus, applying for trade mark protection in the country is important. Similar to China, Japan is a “first-to-file” jurisdiction, so the trade mark should be registered with the Japan Patent Office at the earliest possible time. Given that Japan is a jurisdiction with its own language and writing system, as with China, transliterations and translations of the trade mark to the Japanese language should be considered because these versions may infringe on currently registered trade marks in Japan or may have unsuitable or controversial meanings in the country.
A European Union trade mark (EUTM), formerly known as a European Union community trade mark, can be obtained by lodging a trade mark registration with the European Intellectual Property Office. This type of trade mark is lodged in a single application and grants trade mark rights across all members of the union.
This approach is more economical and less laborious than filing trade mark applications individually in all countries. However, given the single filing, a single objection from any of the member countries, as in the case of possible contradicting rules in different member nations, means that the trade mark application will be refused in all countries. It is for this reason that when seeking European protection, it is not always advisable to file a EU trade mark. Often, it makes more sense to file the application in separate, individual European country applications.
Like Australia, the UK is another common law trade mark country, that is, unregistered marks can be legally protected to a certain extent by the common law tort of passing off if the trade mark has acquired local distinctiveness through sufficient use (prior rights). Trade mark registration in the UK is filed with the UK Intellectual Property Office.