One of the grounds for opposition to registration of a trade mark is that use of the trade mark would be contrary to law. This ground, under s42(b) of the Trade Marks Act 1995 (Cth), is often used where:
1) The trade mark is confusingly similar to another mark that already has a reputation, such that use would amount to misleading and deceptive conduct under the Competition and Consumer Act 2010 (Cth).
2) The trade mark applicant is not the owner or licensee of a copyright work in the trade mark, such that use would amount to copyright infringement under the Copyright Act 1968 (Cth).
However, the circumstances in which s42(b) can be invoked are not finite.
I suggest the s 42(b) grounds for opposition might be appropriate where a trade mark is or comprises a copyright work, but the applicant for the trade mark registration is merely a non-exclusive licensee of the copyright work.
Obtaining a trade mark registration for a trade mark that is or comprises a copyright work would allow the applicant to obtain an injunction to stop third party use of that copyright work under the Trade Marks Act (assuming the use is in connection with a similar good or service to those covered by the trade mark registration, as the third party use would thus amount to trade mark infringement). In effect, this would allow the trade mark owner to circumvent the requirements of the Copyright Act, which only allow the owner or exclusive licensee of the copyright to sue for infringement of the copyright work.
Trade marks are not the only IP right that overlap with copyright.
This overlap exists for designs also, as designs are usually the 3D representation of a copyright work. The Copyright Act and Designs Act 2003 (Cth) expressly resolve the copyright/design overlap by stipulating that, whether or not a copyright work is registered as a design, it is no longer possible to protect that copyright work by making a claim for copyright infringement once that copyright work has been industrially applied. The owner should have applied for a registered design and protected that design by making a claim for design infringement.
But the Copyright Act and Trade Marks Act do not so clearly articulate how the overlap between copyright and trade mark rights is to be addressed. Without legislative guidance, it is left to the Hearing officers at IP Australia to develop the law through their decisions, which can then be appealed to the Federal court for the judges to formalise into precedent.
It remains to be seen whether the Hearing officers and judges will accept an argument under s42(b) based on concerns about circumventing the requirements of the Copyright Act, which only allow the owner or exclusive licensee of the copyright to sue for infringement of the copyright work. Perhaps, soon, this question will be explored and resolved, and then new ones will arise.
The more you understand a topic, the more open space you see. New arguments. Topics that are not yet legislated or decided. Opportunities to propose new ideas, challenge and evolve the law. And this is why I love trade marks more and more each day.