Section 17 of the Trade Mark Act 1995 (Cth) defines trade mark as a sign which is used or has the intention to be used for the purpose of distinguishing goods and services provided in or death with, in the course of trade by an individual with goods and services provided by or dealt with another individual. A registered owner is provided with an exclusive right in relation to the use of the trade mark in relation to the goods and services with respect to which it has been registered as per the provisions of Section 20 of the TMA. Further it has been provided by Section 21 that each trademark is the owners’ personal property and can be transferred or assigned. The application of the registration has to include the details of the owner, the representation of the trademark which is to be used, the description of goods and services in relation to which it is applicable, the list of all classes which are relevant and the fee for registration. It has been provided regulation 4.4 of the Trade Marks Regulations 1995 that goods and services in relation to which the registration is required have to be specified. Thus in the given situation the aspects of businesses which needs registered by Daniela in relation to the trademark includes the specific food truck services and catering services which are to be provided by her in relation to the business. She should also register the name “the tasty Llama” as a part of the trademark. A trade mark can be applied by Daniela under Section 27 of the TMA as she has the intention of using the trademark in relation to her food truck services and catering services. However Daniela must know that the trademark has to be a separate identity from the goods. The mark must also have the capacity of distinguishing goods and services. The food services which are to be provided by Daniela are to be classed under CLASS 43 under the Nice International System of Classification. Further the description of the goods and services would only include Peruvian dishes. She should be very specific in relation to the food services which are to be provided by her under the trade mark. It is clear that her intention is only to protect the Peruvian dishes through the trademark.
Issue
The issue in this case is to determine the problems which may be faced by Daniela in relation to registered trademarks.
Law
Section 120 of the TMA provides provisions in relation to trademark infringement. It has been provided to the provisions of Section 120 that an individual is considered to have infringed a trademark when he uses as a Trademark a sing which is deceptively similar or substantially identical to a registered trademark with respect to the goods or services towards which the registration of the trademark is done.
It has been further stated by Subsection 120(2) that an individual is considered to have infringed a trademark when he uses as a Trademark a sing which is deceptively similar or substantially identical to a registered trademark for goods having similar description as that of the register trademark or services having similar description in relation to the services of the registered trademark all goods or services which are closely related to the registered goods or services.
Moreover Subsection 120(3) provides that when a Trademark is well known in Australia a person is found to have in infringed the trademark when he uses as a Trademark a sign which is deceptively similar or substantially identical to a registered trademark even where the goods or services do not have same description.
In the case of Edgetec International v Zippykerb it had been ruled by the court that the nature and purpose of the use of the trademark is to be assessed objectives. The court in this case provided a few factors to analyze the purpose which includes font type or color, position of the sign, size of the letters or words and how the application of the sign has been done in relation to the advertisement in context.
Further the situation in which the trademark would not be regarded as been infringed is provided under the provisions of Section 122 of the TMA. The Section states that even in the light of Section 120 of Act a TM is held not to have been infringed where name or place of a business of a person or a sign has been used in good faith. Further a trademark is also not infringed when it is used for the purpose of comparative advertisement. In addition where a sign which is deceptively similar or substantially identical to a registered trademark has been used and the court determines that the person would be able get such sign registered as a trademark the act would not constitute the infringement of a trademark.
The trade mark which has been selected through the Australian Trademark Search Portal is as follows:
Trademark 2
This trademark has been selected as it is very similar to the trademark in context which is as follows
Trademark 1
The owner of the trademark 2 which has been selected is PETER CANNEY & ASSOCIATES PTY. LTD and the good and services which are selected for the purpose of this trademark are Coffee bar and coffee house services (provision of food and drink); Coffee shop services; Cafes. The trademark is described as a LLAMA, SILHOUETTE IN TRIANGLE having a SCROLL ACROSS. The number of the trademark is 1601478. The goods and services in relation to this trademark are classified under class 43.
In the given situation it can be states that Daniela can be held liable for the use of trademark 1 under the provisions of Section 120 of the TMA. This is because upon looking closely at the trademarks it can be stated that she has infringed a trademark when she uses as a Trademark a sign (Trademark 1) which is deceptively similar or substantially identical to a registered trademark (Trademark 2) respect to the goods or services towards which the registration of the trademark is done as both the trademarks are classified under the same classification which is class 43. The infringement may be further emphasized by analyzing the purpose of use of the trademark objectively as stated by the case of Edgetec International v Zippykerb. Upon the close analysis of font type or color, position of the sign, size of the letters or words and how the application of the sign has been done in relation to the advertisement in context I can be stated that Daniela is liable for infringement.
However as discussed above it has been provided through the provisions of Section 122 of the TMA that even in the light of Section 120 of Act a TM is held not to have been infringed where name or place of a business of a person or a sign has been used in good faith. Here the trademark is being used in good faith by Daniela-. In addition the Section also provides that a sign which is deceptively similar or substantially identical to a registered trademark has been used and the court determines that the person would be able get such sign registered as a trademark the act would not constitute the infringement of a trademark. In the given situation it can be evidently stated that as the sign used of Daniela can be registered as a trademark she would be held not to have infringed trademark 2 under Section 120 as per Section 122 of the TMA.
Conclusions
Daniela would be able to successfully register the trademark and would not be held liable for trademark infringement under the above discussed legal provisions
Source: Trademark II
The above flowchart is the process through which a trademark is registered. However where the application of Daniela has been refused in relation to the registration of the sign as a trademark the only option which would be available her would be to amend the trademark. The trademark has to be amended in a way which evidently makes it clear that it is not deceptively similar or substantially identical to a registered trademark with respect to the goods or services towards which the registration of the trademark is done. Practically Daniela may change the name which she has in the TM1 or she can also remove the animal Llama and replace it with another animal. She may also remove the figure which the animal is silhouette into. Further she may also make not use the SCROLL ACROSS which has been used in relation to TM2 and making TM1 and TM2 look identical.
Edgetec International v Zippykerb (NSW) (2012) 98 IPR 1, [22]
Trade Mark 1601478 | IP Australia | Trade Mark Search (2018) Search.ipaustralia.gov.au <https://search.ipaustralia.gov.au/trademarks/search/view/1601478?s=a6e616b0-81d1-4279-8d46-4818be1808ae>
Trade Mark Act 1995 (Cth)
Trade Marks Classification Search – IP Australia (2018) Xeno.ipaustralia.gov.au <https://xeno.ipaustralia.gov.au/tmgns/facelets/tmgoods.xhtml>.
Trade Marks Regulations 1995 (Cth)
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