78192 Trade Marks Law
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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 2017 is available in the Archives.
Credit points: 8 cp
Result type: Grade and marks
Requisite(s): ( 78100c Postgraduate Legal Research OR ((102 credit points of completed study in spk(s): C04236 Juris Doctor OR 102 credit points of completed study in spk(s): C04250 Juris Doctor Master of Business Administration)))
The lower case 'c' after the subject code indicates that the subject is a corequisite. See definitions for details.
There are course requisites for this subject. See access conditions.
Anti-requisite(s): 77889 Trade Marks Law
Description
This subject provides an understanding of the principles of trade marks and the trade mark system in Australia. Topics covered include passing off and unfair competition, registrability issues, comparison of trade marks and assessment of deceptive similarity, ownership and authorship of trade marks, requirements of use in relation to trade marks, grounds of opposition, and infringement and post-registration maintenance of trade marks.
Subject learning objectives (SLOs)
Upon successful completion of this subject students should be able to:
| 1. | understand the principles of trade marks law by a study of both primary (legislation and case law) and secondary (texts and academic journal articles) material; |
|---|---|
| 2. | understand the workings of the trade mark system in Australia; |
Course intended learning outcomes (CILOs)
This subject also contributes specifically to the development of the following graduate attributes:
- Legal Knowledge
An advanced and integrated understanding of a complex body of legal knowledge including the Australian legal system, social justice, cultural and international contexts, the principles and values of ethical practice, and contemporary developments in law and its professional practice (1.0) - Self Management
A high level of autonomy, accountability and professionalism, the ability to implement appropriate self-management and lifelong learning strategies including initiating self-directed work and learning, judgment and responsibility, self assessment of skills, personal wellbeing and appropriate use of feedback and, a capacity to adapt to and embrace change (6.0)
Teaching and learning strategies
Trade marks is a large area of law. Students are encouraged in this subject to acquire both specialised knowledge of trade marks law, and also gain a general understanding of other forms of legal protection and remedies.
The aim of this subject is to encourage students to think critically, analytically, and independently about trade marks law, and to develop a sound understanding of the legal process in this area. For this reason, students have been provided with lecture outlines on UTSOnline ('under Course Documents') for the 11 topics in this subject.
In order to successfully pass this subject, students are required to read/listen to the materials placed under 'Course Documents'. These are the minimum requirements for your learning and you will be required to do more extensive reading and research for your essays.
While self-managed learning offers you choices about how and when to study, your learning will be most effective if you implement an effective time management strategy in order to complete this subject within the prescribed time. If you plan your timetable carefully and set aside regular times each week to read the relevant material for the 11 topics, you should have no difficulty in successfully completing this subject.
While web discussion is a non-assessable component of this subject, students are strongly encouraged to use the Discussion Board to ask each other questions, and raise issues which relate to the reading materials for the 11 topics.
Subject Delivery
This subject is delivered wholly online.
Sound files of lectures are provided on UTSOnline along with other supplementary material.
Students must read and be familiar with the material placed on UTSOnline (under 'Course Documents') for the 11 topics if they expect to successfully pass this subject.
Content (topics)
- Introduction to Trade Marks Law
- Passing Off and Misleading & Deceptive Conduct
- Statutory Definition of Trade Marks
- Registrability of Trade Marks
- Restrictions on Registration
- Opposition
- Infringement
- Defences to Infringement
- Removal of Trade Marks from the register
Assessment
Assessment task 1: Problem Question
| Objective(s): | This task addresses the following subject learning objectives: 1 and 2 This task contributes specifically to the development of the following graduate attributes: 1.0 and 6.0 |
|---|---|
| Weight: | 10% |
| Length: | 1000 words Marks will be deducted for exceeding the word limit. There is a 10% margin allowed before marks are deducted (i.ei. you may write 1100 words before deductions begin. For every 100 words over the maximum, 5% will be deducted. |
Assessment task 2: Essay
| Objective(s): | This task addresses the following subject learning objectives: 1 and 2 This task contributes specifically to the development of the following graduate attributes: 1.0 and 6.0 |
|---|---|
| Weight: | 30% |
| Length: | 2500 words maximum Marks will be deducted for exceeding the word limit. There is a 10% margin allowed before marks are deducted (i.e.you may write 250 words before deductions begin). For every 100 words over the maximum 5% will be deducted. |
Assessment task 3: Exam
| Objective(s): | This task addresses the following subject learning objectives: 1 and 2 This task contributes specifically to the development of the following graduate attributes: 1.0 and 6.0 |
|---|---|
| Weight: | 60% |
| Length: | 3500 words maximum Marks will be deducted for exceeding the word limit. There is a 10% margin allowed before marks are deducted (i.e.you may write 3850 words before deductions begin). For every 100 words over the maximum 5% will be deducted. |
Required texts
- Trade Marks Act 1995 (http://www.comlaw.gov.au/Series/C2004A04969)
- Trade Marks Regulations 1995 ( http://www.comlaw.gov.au/Series/F1996B00084)
- Australian Trade Marks Office Manual of Practice and Procedure, IP Australia( http://www.ipaustralia.gov.au/pdfs/trademarkmanual/trade_marks_examiners_manual.htm)
- Explanatory Memorandum: Trade Marks Bill 2006
- Raising the Bar Amendments in force from 15 April 2013
- Australian Trade Mark on-line Search System (ATMOS) ( https://pericles.ipaustralia.gov.au/atmoss/falcon.application_start)
- M Davison & I Horak, Shanahan's Australian Law of Trade Marks and Passing Off (5th ed, 2012) this updated version is available through Legal Online (through the Library's Law Databases) under Commentaries
- P Sumpter, Trade Marks in Practice, LexisNexis NZ, Wellington, 3rd Edition, 2015.
- IPONZ Trade Mark Act 2002 Practice Guidelines ( http://www.iponz.govt.nz/cms/trade-marks/practice-guidelines-index)
- New Zealand Trade Marks Act 2002 ( http://www.legislation.co.nz/ )
- New Zealand Trade Marks Regulations 2003 ( http://www.legislation.co.nz/regulation/)
Recommended texts
- R Reynolds, N Stoianoff, A Adrian and A Roy, Intellectual Property: Text and Essential Cases (5th, 2015)
- J Lahore, Patents, Trade Marks and Related rights (3 Loose Leaf Volumes), also available online on LexisNexis AU through UTS Library databases
- A Stewart, P Griffith and J Bannister, Intellectual Property in Australia (4th ed, 2010)
- 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:
- Intellectual Property Australia (IP Australia): <http://www.ipaustralia.gov.au>
- Australasian Legal Information Institute (AUSTLII): <http://www.austlii.edu.au>
- World Intellectual Property Organisation (WIPO): <http://www.wipo.int/portal/index.html.en>
- World Trade Organisation (WTO): <http://www.wto.org/>
