University of Technology Sydney

77889 Trade Marks Law

Warning: The information on this page is indicative. The subject outline for a particular session, location and mode of offering is the authoritative source of all information about the subject for that offering. Required texts, recommended texts and references in particular are likely to change. Students will be provided with a subject outline once they enrol in the subject.

Subject handbook information prior to 2024 is available in the Archives.

UTS: Law
Credit points: 6 cp
Result type: Grade and marks

Requisite(s): ((22 credit points of completed study in spk(s): C07122 Graduate Diploma Legal Studies OR 22 credit points of completed study in spk(s): C04264 Master of Legal Studies)) OR 77905c Preparing for Intellectual Property Practice OR ((94 credit points of completed study in spk(s): C04236 Juris Doctor OR 142 credit points of completed study in spk(s): C04250 Juris Doctor Master of Business Administration OR 94 credit points of completed study in spk(s): C04363 Juris Doctor Master of Intellectual Property OR 94 credit points of completed study in spk(s): C04364 Juris Doctor Graduate Certificate Trade Mark Law and Practice) AND 70106c Principles of Public International Law AND 70107c Principles of Company Law) OR (94 credit points of completed study in spk(s): C04320 Juris Doctor Graduate Certificate Professional Legal Practice AND 70106 Principles of Public International Law)
The lower case 'c' after the subject code indicates that the subject is a corequisite. See definitions for details.
These requisites may not apply to students in certain courses. See access conditions.
Anti-requisite(s): 76085 Intellectual Property: Trade Marks and Patents AND 78192 Trade Marks Law

Description

Trade marks law deals with the protection and enforcement of rights in various words, symbols, shapes, colours and other signs used to distinguish the goods or services of one entity from those of another. This subject provides a critical and analytical understanding of the principles of trade marks law, and the protection of unregistered trade marks and indicia of commercial reputation in Australia and New Zealand. This is through a detailed coverage of the law of trade marks, passing off and instances of unfair competition such as statutory misleading or deceptive conduct in both countries. In addition the subject covers the parallel systems of registration for business names, domain names and indications of geographical origin in Australia and New Zealand.

By actively engaging in their learning in each module, the guided activities and discussion topics, students develop skills in legal knowledge, critical analysis, evaluation, self-management and reflection, which are essential for successful practice in trade marks law, whether as a lawyer, a patent attorney, an Australian trade marks attorney or a brand development professional.

Subject learning objectives (SLOs)

Upon successful completion of this subject students should be able to:

1. Identify, understand and apply specialised knowledge of trade marks law, the law of passing off and of statutory misleading or deceptive conduct in Australia and New Zealand and of the parallel systems of registration for business names, domain names and indications of geographical origin in Australia and New Zealand.
2. Critically analyse, evaluate and compare the legal framework and the legal process of trade marks law, the law of passing off and of statutory misleading or deceptive conduct in Australia and New Zealand and of the parallel systems of registration for business names, domain names and indications of geographical origin in Australia and New Zealand.
3. Think critically, ethically and strategically in advising on and obtaining appropriate protection for brands and signs under the law of trade marks, the law of passing off and of statutory misleading or deceptive conduct in Australia and New Zealand and of the parallel systems of registration for business names, domain names and indications of geographical origin in Australia and New Zealand.
4. Construct and articulate logical, reasoned, persuasive and justifiable legal and scholarly arguments, supported by accurate and authentic references to authority, to resolve practical problems and issues in the process of registration and enforcement of rights in registered trade marks, brands and unregistered trade marks under trade marks law and the law of passing off and statutory misleading or deceptive conduct in Australia and New Zealand.

Course intended learning outcomes (CILOs)

This subject also contributes specifically to the development of the following graduate attributes which reflect the course intended learning outcomes:

  • Legal Knowledge
    An advanced and integrated understanding of a complex body of legal knowledge including:
    a. The Australian colonial and post-colonial legal system, international and comparative contexts, theoretical and technical knowledge;
    b. The broader contexts within which legal issues arise and the law operates including cultural awareness, social justice and policy;
    c. The principles and values of justice and ethical practices in lawyers' roles;
    d. The impact of Anglo-Australian laws on Indigenous peoples, including their historical origins in the process of colonisation and ongoing impact; and
    e. Contemporary developments in law and its professional practice. (1.1)
  • Critical Analysis and Evaluation
    A capacity to think critically, strategically and creatively, including an ability to:
    a. Identify and articulate complex legal issues in context, including the skill of critical reading and writing;
    b. Apply reasoning and research to generate appropriate theoretical and practical responses; and
    c. Demonstrate sophisticated cognitive and creative skills in approaching complex legal issues and generating appropriate responses. (3.1)
  • Communication
    Well-developed professional and appropriate communication skills including:
    a. Highly effective use of the English language to convey legal ideas and views to different and diverse audiences and environments;
    b. An ability to inform, analyse, report and persuade;
    c. An ability to strategically select an appropriate medium and message;
    d. A cognisance of advanced communication technologies and willingness to adopt where appropriate; and
    e. An ability to respond respectfully. (5.1)
  • Self-management
    A high level of autonomy, accountability and professionalism and the ability to implement appropriate self-management and life-long learning strategies including:
    a. An ability to initiate self-directed work and learning;
    b. Well-developed judgment and responsibility;
    c. The ability to support personal and professional development by:
      (i) Self-assessing skills and personal wellbeing; and
      (ii) Making appropriate use of feedback;
    d. A capacity to adapt to and embrace change. (8.1)

Teaching and learning strategies

Strategy 1: Learning through engagement with each module

Preparation and reflection on the material presented in each module is central to the learning in this subject. Each module contains an overview of the module and the learning outcomes that must be attained by each student for that module. In addition, each module contains key resources, including reading lists for text book reading, cases and short videos or podcasts guided activities and exercises designed to apply and consolidate understanding of key concepts and cases taught in the subject to consolidate learning and provide feedback to students. In order to pass this subject, students are required to complete all of the six modules and undertake additional reading and research.

While self-managed learning offers choices about how and when to study, an effective time management strategy that nominates regular times each week for progressing in the six modules of this subject is essential for successful completion. Careful planning of study times, actively engaging with each module and monitoring their progress through the subject modules provides students with opportunities to reflect upon their learning and self-management skills.

Strategy 2: Learning through discussion

Students will use the discussion area in each module to ask questions or share ideas. Students will engage in collaborative discussion and evaluation of the materials in each module, which will assist them in developing new perspectives, testing their ideas and understanding, and identifying areas for clarification. By actively participating in the guided activities, self-assessment questions and discussion questions in each Module, students can test their learning, clarify understanding and challenge ideas about the material presented in each Module. Students will have the opportunity to ask questions of their peers and of the teacher to assist them in consolidating their own learning.

Strategy 3: Engaging in activities and discussion in each module

The teachers and guest speakers will provide perspectives on the recommended readings and clarification of the law through videos and audio material. The ability to listen and think at the same time is a crucial skill for a lawyer or legal adviser, who will often need to master new information delivered orally and/or in writing and provide an intelligent response immediately.

Students also engage with the material in each Module by asking and responding to questions, by participation in guided activities in each Module and by discussion. Discussion and various activities in each module will extend the ideas of the lecture in new directions or in greater depth. By actively participating in discussion and the activities in each Module, students are able to engage with the material, clarify understanding and challenge ideas.

Strategy 4: Strategy 4: Learning legal skills: legal analysis and problem solving

The ability to solve legal problems is an essential skill for a legal adviser. Problem solving involves interpreting and analysing legislation and cases, and applying the legislation and principles developed through the case law to novel and difficult factual situations. All students will participate in two legal skills units. Legal Analysis and Problem Solving contains a guided analytical approach to legal analysis and problem solving, with activities based on a sample problem in trade marks law to give individual feedback on legal problem-solving skills, followed by a video giving an expert presentation on the problem. This allows students to improve their skills of legal analysis as well as their ability to construct reasoned legal arguments supported by accurate and authentic references to authority and offer commercially-viable and ethical solutions to the problems of hypothetical clients, before attempting Assessment Task 1 short problem question and eventually the problems in Assessment Task 3 the final exam in this subject.

Strategy 5: Learning legal skills: effective written communication skills

The ability to communicate the thrust of a legal argument through effective written advocacy is an essential skill for a legal adviser. Increasingly legal advisers are asked to prepare written submissions setting out and arguing for a client’s position, whether this is part of the process of obtaining effective protection for trade marks by registration or in Court or in proceedings before the Registrar. This skill is developed by critical analysis and discussion of the essay topic set, supported by accurate and authentic references to authority. All students participate in the legal skills unit Guide to Legal Essay Writing. This legal skills unit provides a guided analytical approach to effective communication of written legal arguments. Students also complete activities in this legal skills unit that illustrate effective and ineffective examples of written communication including the critical evaluation of an essay topic. This allows students to improve their skills in written communication and critical evaluation and discussion of topics in trade marks law before attempting Assessment Task 2 the research essay.

Strategy 6 Applying research skills

Students undertake independent research relevant to class discussion and assessment tasks using the UTS Library and databases guided by the library support material on legal research. This will require students to identify relevant case law and secondary material on their own, in order to provide accurate and authentic references to authority in legal argument before a Court, IP Australia or IPONZ. Being able to use the library and legal databases to find relevant material is a key skill for a lawyer. Critical reading and analysis of judicial and scholarly material are also crucial skills in law.

Subject Delivery: Online in distance mode in Canvas.

Content (topics)

Module 1: Protection of unregistered trade marks

Module 2: What is a trade mark?

Module 3: What makes a trade mark registrable?

Module 4: Opposition to registration

Module 5: Infringement

Module 6: Post-registration maintenance of trade marks

Assessment

Assessment task 1: Problem Question

Objective(s):

This task addresses the following subject learning objectives:

1, 3 and 4

This task contributes specifically to the development of the following graduate attributes:

1.1, 3.1, 5.1 and 8.1

Weight: 10%
Length:

750 words (see Further Information below)
Criteria:

Your assessment mark for this item is measured against the following criteria, not against the performance of other students. In Assessment Task 1 we will be looking for evidence that you have:

  • achieved subject learning objectives 1, 3 and 4 in relation to the material in Module 1
  • demonstrated an ability to think critically and analytically when addressing the problem
  • used relevant wider reading to enhance and comment on the issues under consideration in the problem question
  • addressed the problem question succinctly, clearly and with relevance and insight;
  • understood the subject content in Module 1 and can apply that content appropriately to the Assessment Task 1 problem question

Assessment task 2: Essay

Objective(s):

This task addresses the following subject learning objectives:

1, 2 and 3

This task contributes specifically to the development of the following graduate attributes:

1.1, 3.1, 5.1 and 8.1

Weight: 30%
Length:

2000 words (see further information below)
Criteria:

Your assessment mark for this item is measured against the following criteria, not against the performance of other students. In Assessment Task 2 we will be looking for evidence that you have:

  • achieved subject learning objectives 1, 2 and 4 in relation to the essay topic chosen from the set list
  • demonstrated an ability to think critically and analytically when addressing the essay topic
  • used relevant wider reading and research to enhance and comment on the issues in the essay topic under consideration
  • addressed the essay topic succinctly, clearly and with relevance and insight.

Assessment task 3: Final take home exam

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 4

This task contributes specifically to the development of the following graduate attributes:

1.1, 3.1, 5.1 and 8.1

Weight: 60%
Length:

3000 words plus 300 words (see Further information below)
Criteria:

In Assessment Task 3 we will be looking for evidence that you have:

  • achieved subject learning objectives 1,2, 3 and 4
  • demonstrated an ability to think critically and analytically when addressing the problem questions set in Assessment Task 3
  • used relevant wider reading to enhance and comment on the problem questions set in Assessment Task 3
  • addressed the problem questions set in Assessment Task 3 succinctly, clearly and with relevance and insight;
  • understood the subject content of Modules 1 to 6 of this subject and can apply that content appropriately and with insight to the problem questions set in Assessment Task 3

Required texts

Textbooks

  • M Davison & I Horak, Shanahan's Australian Law of Trade Marks and Passing Off (7th ed, 2022- 2023). This updated version is available through Westlaw AU (through the Library's Law Databases) under Commentaries and through the Reading List in 77889 Trade Marks Law.
  • P. Sumpter, Trade Marks in Practice, LexisNexis NZ, Wellington, 4th Edition, 2015-2023. This updated version is available through Lexis Advance Pacific (through the Library's Law Databases) under New Zealand Legislation and through the Reading List in 77889 Trade Marks Law.

Full instructions for accessing the online texbooks and the Reading List appear in Module 0 Get started under "What resources will I need?"

Legislation

Recommended texts

  • R Reynolds, N Stoianoff, A Adrian and A Roy, Intellectual Property: Text and Essential Cases (5th ed, 2015)
  • J Lahore, Patents, Trade Marks and Related rights (3 Loose Leaf Volumes), also available online on LexisAdvance Pacific through UTS Library databases and through the Reading List in 77889 Trade Marks Law
  • A Stewart, P Griffith and J Bannister, Intellectual Property in Australia (5th ed, 2015) Australian Intellectual Property (2 Loose Leaf Volumes)
  • R Burrell and M Handler, Australian Trade Mark Law (2010)

References

Treaties and Related Publications:

Paris Convention (1883-1967)

Madrid Agreement (1891)

Madrid Protocol (1989)

TRIPs (Trade Related Aspects of Intellectual Property)

Trade Mark Law Treaty (1994)

International Classification of Goods and Services (9th Edition), 2007, WIPO

Other resources

Websites: