Australians are likely familiar with Qantas Airways’ flying kangaroo logo. The iconic airline recently challenged Mr Luke Edwards’ registration of his trade mark which also incorporated a kangaroo’s silhouette. The Federal Court, however, upheld the Trade Marks Officer’s decision to allow the registration, rejecting Qantas’ argument that Mr Edwards’ mark was “deceptively similar” to their logo.Below, we summarise the facts and findings of the case so as to explain why trade marks matter. The recent dispute also highlights why businesses must ensure their trade mark is registered in all applicable goods and services classes.
Mr Edwards operated an online store that sold clothing and electronic goods. In 2010, he applied to register a kangaroo t-shirt logo as a trade mark.
Mr Edwards’ application indicated that the logo was for use in relation to clothing, footwear, headwear, shirts and t-shirts. Qantas opposed the registration of the kangaroo t-shirt logo. For its part, the airline has a variety of kangaroo trade marks. These include the kangaroo tail-fin logo registered for advertising, marketing and merchandising services.
The Delegate of the Registrar of Trade Marks found for Mr Edwards. On appeal of this decision to the Federal Court, Qantas argued that:
- Mr Edward’s kangaroo t-shirt trade mark was deceptively similar to its already trademarked kangaroo tail fin logo;
- The goods and services which Mr Edwards’ trade mark covered (clothing, footwear, headwear, shirts and t-shirts) were closely related to the goods and services which Qantas’ trade mark covered (advertising, marketing and merchandising services); and
- The airline had a strong reputation vis-à-vis several registered, and unregistered, kangaroo trade marks that it had used extensively in the past. Because of this reputation, Mr Edward’s kangaroo t-shirt trade mark would deceive or confuse customers.
The Federal Court decided in favour of Mr Edwards. It held that not only were the trade marks not deceptively similar but also that the goods and services covered by each were not closely related. Further, consumers would not be deceived or confused by Mr Edwards’ logo on account of the differences between the marks. The dispute between Mr Edwards and Qantas then highlights how different kinds of trade marks may be necessary for a business and how a business’ trade marks should cover all applicable goods and services in every relevant class.
What is a Trade Mark?
A trade mark is any sign that a business uses on its products or services to distinguish them from those of other commercial entities. A trade mark can be a letter, number, word, phrase, sound, colour, scent, shape, logo, picture, image, movement, an aspect of packaging or a combination of these.
Trade marks can exist independently of registration. For example, you can still use an unregistered logo to distinguish your products or services from others. However, unless you formally register your trade mark under the Trade Marks Act 1995 (Cth), the law cannot protect it as your exclusive property right. Trade mark registration provides a business owner with the right to:
- Use the trade mark exclusively in connection with their business’ goods or services;
- Authorise another party to use the trade mark if they so wish (typically by licensing it to them under a written licensing agreement);
- Take action against others using the trade mark without permission or using something deceptively similar for their business.
Why are Trade Marks so Important?
Trade mark registration provides a business with the exclusive right to use a sign(s) for their goods or services and build a brand in the marketplace. For example, a proprietor looking to sell their business may receive a higher price if the business counts among its assets a trade mark. Trade marks are saleable and valued according to the goodwill they engender. Trade marks also give a business a professional image as most consumers recognise the distinct ™ and ® symbols. A trade mark could also provide additional income if a business licences it.
As mentioned above, a trade mark needs to cover all applicable goods and services in every relevant class. Moreover, the registration process itself involves comprehensive searches. If you are considering registering your business’ trade marks, it is a good idea to get professional assistance. If you have any questions or need assistance registering your trade mark, get in touch on 1300 544 755.