Foreign entities wishing to register an Australian trade mark should be aware that Australia is a ‘first-to-use’ jurisdiction. This means that the owner of a trade mark is the first user of that trade mark.
First to File
In some jurisdictions, the entity that is the first to file an application to register a particular trade mark is the owner of that trade mark. In first to file jurisdictions the applicant will generally be the owner of the trade mark regardless of whether the applicant has used the trade mark prior to making an application for registration, and regardless of whether another entity (that has not previously applied to register the trade mark) is already using it.
Arguably, a first-to-file system is easier to manage. Generally, in a first-to-file country, the only step the relevant IP Office needs to take to establish ownership of a trade mark is to determine who was the first to file an application to register the relevant trade mark.
First to Use
However, in Australia, priority is given to the entity that is the ‘first to use’ a particular trade mark ‘as a trade mark’ in relation to goods and services.
This means that if an entity has not registered its trade mark in Australia, it could generally still rely on the Australian Consumer Law (which prohibits misleading and deceptive conduct and conduct that is likely to mislead or deceive consumers) or the Australian common law tort of ‘passing off’ to protect their trade mark, provided that they were the first to use the trade mark as a trade mark in relation to goods and services in Australia.
Further, if the owner of an unregistered trade mark decides to apply to register that trade mark and receives an objection from the relevant examiner on the basis of a prior registered mark, the owner of the unregistered trade mark may (as a general rule) be able to overcome that objection if it can show that:
- use of the applicant’s trade mark commenced in Australia before the priority date of the cited trade mark; and
- their use as a trade mark has been continuous at least up until the priority date of the cited trade mark
Use as a trade mark
Use as a trade mark generally means that the trade mark has been used as a ‘badge of origin’, for example, to show the source of the goods or services to which it relates. This was provided for in Coca-Cola Co v All-Fect Distributors Ltd  FCA 1721, in which the Full Bench of the Federal Court of Australia held that the use of a mark as a ‘badge of origin’ (“in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods”) is used ‘as a trade mark’.
The Full Court remarked in their judgement – “that is the concept embodied in the definition of ‘trade mark’ in s 17 [of the Trade Marks Act 1995 (Cth)] – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.”
One way to determine whether a mark is being used ‘as a trade mark’ is to consider whether the mark is descriptive which would mean that it is unlikely that it has been used as a badge of origin and therefore, unlikely that it has been used ‘as a trade mark’.
Notwithstanding that Australia is a ‘first to use’ jurisdiction, it is still extremely important that trade mark owners seek to register their trade mark. Having a registered trade mark will make it quicker, easier, and cheaper to stop a third party from using an infringing mark in relation to the same goods and services. However, foreign entities should be aware that third parties may have rights to the same or a similar trade mark in respect of the same goods or services.