Logos, three-dimensional shapes, aspects of packaging, devices and sounds are all potentially registrable as trade marks in Australia. Such signs may also qualify as original artistic, literary and musical works protected by copyright.

In Australia, ownership of a trade mark is predicated on the concept of first use. Ownership is generally determined by who was the first person to use the trade mark, not the first person to file the trade mark as in some other jurisdictions like China.

Conflicts may arise where the first user of a trade mark comprising a copyright work is not the same person as the copyright owner. This situation can arise where a local trader adopts “sharp business practice” by setting up shop in Australia under an overseas brand that is not used or has minimal reputation in Australia.

Use would be contrary to law

Under section 42(b) of the Australian Trade Marks Act (TMA) a person may oppose a trade mark application on the ground that the use of the applied for trade mark would be contrary to law.

A claim that the use of the applied for trade mark would infringe copyright has been relied upon to successfully oppose the registration of a trade mark.

To support such a claim, compelling evidence is required showing that copyright subsists in a work, that another person owns the copyright in that work, and that the applied for trade mark reproduces that copyright work in a material form.

Applicant is not the owner

Under section 58 of the TMA, the registration of a trade mark may be opposed on the ground that the applicant is not the owner of that mark. There are many reported decisions which establish that proof of first use in Australia of a trade mark by another person can support this ground of opposition.

But what if the applicant for the trade mark is the copyright owner but is not the first user in Australia? Can another person challenge a copyright owner’s right to register a trade mark by virtue of being the first user?

In KARO STEP Trade Mark [1977] RPC 255 Justice Whitford of the English High Court of Justice – Chancery Division observed at 274 that:

An applicant for registration must be in a position to claim that he is the proprietor of the mark. This does not, of course, mean that an applicant must be able to claim property in a mark to which existing goodwill attaches, for many applications are made for registration of marks new and unused. It does, however, to my mind involve this: that the applicant must be able to claim that he is entitled to be registered as proprietor of a mark in which he has a proprietary interest in the sense that he has an absolute right to use it. Any such claim must, in my view, be bad if in fact on copyright grounds some third person is going to be in a position to stop the applicant using the mark at all. The proprietors of a mark in which copyright exists can, I think, only be the owners of the copyright in the mark.

The Judge’s comments support the view that the copyright owner has the superior right to trade mark ownership over a first user. The reasoning is sound in circumstances where the copyright owner would be entitled in Australia to bring infringement proceedings in court to restrain or prevent a person from misappropriating their work. It may not extend to the situation where the trade mark applicant is not the owner of the copyright, but has a valid licence to the copyright work – for example in the case of a commissioned copyright work where copyright has not been assigned.

For a business that has not secured registered trade mark rights or traded in Australia, proofs of authorship, creation and ownership of its brands, corporate style and product get-ups could be its most powerful IP artillery.