It’s a sunny weekend on the Gold Coast. But I have a lot of work to do. So, I moved a desk to look over my back balcony, over the Pandanus trees to the shimmer of the sunlight on the ocean. It seemed like a good compromise. Working, but still immersed in the beauty of the day. Until a giant campervan/truck parked right in front of my place, largely blocking the best view of the ocean. And then the neighbours started with their high-pressure hose, for hours…a noise so intensely unpleasant that even Apple’s noise cancelling headphones were not sufficient to cocoon me from it. So close to a perfect set-up, but oh so far…
And it made me relate to self-filers, or dabblers, who follow IP Australia’s guidance and DIY their own trade mark work. Many times, they are so close to doing it right. But, when it comes to the crunch, it can often become apparent that the so close, is also so far away.
As one example, I recently came across an applicant that had registered a composite mark. They clearly realised that the word component in their mark was descriptive, and therefore unlikely to be registrable by itself. They had therefore decided to register it with a device (or ‘a logo’). Together, the words and the logo make a composite mark. This is the right idea. To this point, they were ‘so close’.
But, here is where the ‘so far’ comes in. They got the logo component from the internet. It was free for them to use, as it was a royalty free image, licensed to all under a creative commons licence, which even specifically permitted commercial use. The issue is: that person who owned the copyright and decided to license it freely to all, they didn’t consent to it being locked up by one person as a trade mark, restricting the right to others to use it. The minute the person applied for registration of it as a trade mark, that was likely a breach of the creative commons licence. And for that breach, the licence was likely terminated. Therefore, the person applied for a trade mark comprising a logo which they did not own and did not have a valid licence to. All use the person made of that trade mark was use of a trade mark comprising a logo which they did not own and did not have a valid licence to. That is, at all times when the person applied for and used the trade mark, their use amounted to copyright infringement. Use which is contrary to law, cannot be use in good faith (in my view anyway). So, at all times, upon filing and since, the person did not have good faith, and that is grounds for third party removal of the trade mark under s 92 (4) (a) of the Trade Marks Act. So close, and yet so far. The trade mark registration that the person obtained…it’s worthless.
Fortunately for me, my neighbours’ sadistic streak is over and the high-pressure hose has ceased. Some problems are transient. A useless trade mark registration on the other hand, is not a problem that will resolve itself. Do it right. Use a qualified trade marks attorney.
