ISBN: 9780195565393
Published:
Availability: 448
Paperback
AU$173.00
NZ$209.00
Australian Trade Mark Law
- Description
- Features
- Contents
- Authors
- Reviews
- Lecturer Resources
- Teacher Resources
- Student Resources
- Sample Pages
- ebook
Australian Trade Mark Law provides a comprehensive overview of trade mark law in Australia and encourages readers to critically engage with the operation of the Australian trade mark system as a whole.
Moving beyond a purely descriptive account of existing legislation and case law, this book encourages readers to view and question the law through a critical lens. It questions the functioning of the trade mark system as well as the decisions made by courts, the legislature and administrative bodies that have shaped such a system, while also critically assessing how the trademark system could work better in the future.
- Draws attention to the way the Australian trade mark system fits together as a whole by explaining: he way the different provisions of the Trade Marks Act 1995 (Cth)fit together; the connection between the trade mark registration system and the system of protection for unregistered marks; the relationship between passing off and Australia’s consumer protection legislation.
- Covers recent high court activity: E & J Gallo Winery v Lion Nathan Australia Pty Ltd and Health World Ltd v Shin-Sun Australia Pty Ltd.
- Includes 42 trade mark images/diagrams.
- Draws on comparative material that illustrates how other jurisdictions deal with particular issues or problems.
Table of Cases
Table of Statutes
Table of Australian Case Citations
Table of Other Case Citations
Table of Other Abbreviations
1 The Roles of the Trade Mark System
1.1 Introduction
1.2 Justifi cations for trade mark protection
1.3 The role of trade mark registration
1.4 Origins and sources
2 Applying to Register a Trade Mark: Examination and Opposition Proceedings
2.1 Introduction
2.2 Requirements for making an application
2.3 Pre-examination procedures
2.4 Amending or withdrawing an application
2.5 International applications under the Madrid Protocol
2.6 Examination procedures
2.7 Opposition proceedings
2.8 Appeals to the Federal Court and other tribunals
3 Signs and Their Representation
3.1 Introduction 58
3.2 The defi nition of a trade mark
3.3 The requirement of graphic representation
4 Distinctiveness
4.1 Introduction
4.2 The legislative regime
4.3 Determining where marks fall on the continuum of distinctive
character: general principles
4.4 Examples of application
4.5 Factual distinctiveness: s 41(5) and (6)
4.6 Rethinking distinctiveness and functionality
5 Other Grounds of Rejection and Opposition Not Involving Conflicts with Earlier Marks
5.1 Introduction
5.2 Prohibited and prescribed signs
5.3 Scandalous marks
5.4 Marks whose use would be contrary to law
5.5 Deceptive or confusing connotations
5.6 No intention to use
5.7 Application made in bad faith
5.8 Application or other document amended contrary to the Act
5.9 Acceptance based on false information
6 Conflicts with Earlier Registered Marks or Applications for Registration
6.1 Introduction
6.2 Section 44 and reg 4.15A: an overview
6.3 Similarity of marks
6.4 Similarity of goods/services
6.5 Overcoming a ground of rejection under s 44 or reg 4.15A
6.6 Possible reform of s 44: the UK model
7 Conflicts with Earlier Marks—Other Grounds of Opposition
7.1 Introduction
7.2 Section 60
7.3 Section 42(b)
7.4 Section 43
7.5 Section 58
7.6 Rethinking the relationship between ss 60, 42(b), 43 and 58
7.7 Section 62A
8 Amendment, Revocation and Cancellation of Registration
8.1 Introduction
8.2 Registration and renewal
8.3 Amendment, cancellation and revocation of registered
marks by the Registrar
8.4 Rectifi cation of the Register following a court order
9 Non-Use of Registered Marks
9.1 Introduction
9.2 Overview of Part 9 and procedural matters
9.3 Use of a registered mark 289
9.4 Section 92(4)(a): particular issues
9.5 Section 92(4)(b): particular issues
9.6 Discretion to remove or amend the registration
9.7 Rethinking non-use: options for reforming the Act
10 Infringement and Defences
10.1 Introduction
10.2 The harms of trade mark law
10.3 Section 120
10.4 Section 121
10.5 The s 122 defences
10.6 The prior use defence
10.7 Exhaustion of rights and parallel importation
11 Passing off and Consumer Protection
11.1 Introduction
11.2 General principles
11.3 Establishing reputation
11.4 Misrepresentation
11.5 Damage
11.6 Summation
12 Revisiting the Relationship between Passing off and the Consumer Protection Regime
12.1 Introduction
12.2 Doctrinal differences
12.3 Protecting traders or consumers?
12.4 The alternative: the statutory prohibition as a regulatory instrument
13 Extended Passing off, Special Forms of Trade Marks and Related Legal Regimes
13.1 Introduction
13.2 Collective goodwill and collective rights
13.3 Defensive trade marks
13.4 Domain names
13.5 Special events legislation and ambush marketing
14 Exploitation of Trade Marks
14.1 Introduction
14.2 Assignments
14.3 Licensing
14.4 Securities
14.5 The interests of parties dealing with registered owners
14.6 Restrictions on exploitation: deception and non-use
14.7 Restrictions on exploitation: competition considerations
14.8 Franchising: special issues
15 Litigation and Remedies
15.1 Introduction
15.2 The decision to litigate
15.3 Threats actions
15.4 Jurisdiction
15.5 Acquiring and preserving evidence
15.6 Interlocutory injunctions
15.7 Final remedies in civil actions
15.8 Bars to relief
15.9 Criminal liability
15.10 Notice to Customs
Robert Burrell – Associate Professor, TC Beirne School of Law, The University of Queensland.
Michael Handler – Senior Lecturer, Faculty of Law, The University of New South Wales