95.
Some considerations of trade mark law and observations about the nature of composite trade marks support the Commonwealth's submissions and show that the plaintiffs' characterisation of the effect of the Packaging Act on their pre-existing rights was overstated.
A trade mark is a sign used or intended to be used to distinguish a registered owner's goods in the course of trade [1]. An application for registration of a trade mark must be rejected if the trade mark is not capable of fulfilling the function of distinguishing the applicant's goods from those of others[2]. Composite marks, just as much as marks consisting of a word or brand name alone, are assessed for registration on their capacity to distinguish the registered owner's goods from those of others. Entitlement to registration does not depend on a trade mark's capacity to advertise goods or to promote sales. A registered trade mark which can no longer perform the function of distinguishing its owner's goods from those of another trader will be liable to rectification or removal. Furthermore, there are numerous grounds upon which an application for registration of a trade mark may be rejected, including that a trade mark used on the goods for which registration is sought would be likely to deceive or cause confusion[3]. There are also numerous legislative provisions bearing upon the use or registration of a trade mark [4].
Whilst the prime concern of the Trade Marks Act is with the capacity of a trade mark to distinguish the goods of the registered owner from those of another trader, trade marks undoubtedly perform other functions. For example, a trade mark can be an indicium of the quality of goods sold under or by reference to it and it may be accepted that distinctive marks can have a capacity to advertise, and therefore to promote, sales of products sold under or by reference to them. The advertising function of a trade mark is much more readily appreciated than it once was[5], and that function may be of great commercial value.
- ↑ Trade Marks Act, s 17.
- ↑ Trade Marks Act, s 41(2).
- ↑ Trade Marks Act, ss 39, 41 and 43.
- ↑ See Shanahan's Australian Law of Trade Marks and Passing Off, 5th ed (2012) at 235 [25.785].
- ↑ See Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45 at 66 [43]; Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 348–349 per Gummow J. See also Kerly's Law of Trade Marks and Trade Names, 15th ed (2011) at 10–12 [2-016]–[2-019].
