Some Useful Trade Mark Tips from Federal Court

Case: Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94

Being a busy solo, I've not had a lot of time to wallow around in cases as much as I'd like.  But this one caught my attention, thanks to my "editor" at CCH.

It's worth a read, especially for us busy filing trade mark applications and getting involved in disputes before the Registrar.

Here are some practice tips from that case:

1. When preparing a trade mark application, make sure to use words such as "includes/including".  The court held that this means that trade mark would be considered to be in relation to goods of like kind to goods following such words.  This is far better than trying to list everything you can think of.  It might sound trite, by you'd be surprised how many people get it wrong.

2. When preparing evidence to show a reputation, make sure that you're showing that the trade mark has a reputation, not necessarily the goods/services.  So evidence of sales and marketing must clearly show use of the trade mark.

3. Just because your client, the applicant, is seeking removal of a registered trade mark through non-use, does not mean that it is not infringing that registered trade mark.  You should advise the applicant of this potential hazard.


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