Fred whether or not it is likely that he has committed a breach under the Trade Marks Act of 1995.
First, it must be observed that Fred has acted appropriately by registering his business' name. Australian law requires that business owners who operate a business under any name other than their own must register their business name and to do so prior to using the business name in actual practice. According to the facts of this case, Fred not only registered the name he also registered the name as a trademark which provided him with additional protection (Trademark Act, pt.3,¶20). A problem, however, may arise if the owner of Fred's competitor, Good Neighbors Fence, has also registered his business as a trademark. Under existing Australian Law there is no strict prohibition against businesses with similar names registering receiving registration. Registration is done by the individual provinces and, therefore, it is possible that similarly named businesses will be registered. It becomes the responsibility of the business owner who has concerns regarding the similarity of the trademarked names to raise the proper objection. Legally, the business who registers the trademark first in time is afforded priority and it becomes the responsibility of the later registering business to object to either the actual registration or the deceptive nature of the registration (Trademark Act, pt.5, ¶ 52-62A).
The facts in the instant case do not indicate which of the two businesses, "Good Neighbors Fence" or "Good Friends Fence" filed their trademark registration first. It will be assumed that Fred filed his registration first so that the discussion can now turn to the issue of whether Fred's business name is deceptively similar so as to be in violation of the Trademark Act. The case law on this issue has taken a variety of approaches in determining what constitutes either deceptively similar or substantially identical trademarking. Factors considered by the courts in making such determination include the degree of similarity (Beecham Group Plc. v.ADM Kao LLC, 2009); the nature of the shared elements (Wolverine World Wild, Inc. v. Khoda Ali Ahmed, 2008); and the nature of the products (Kimberley-Clark Worldwide, Inc. v. Goulimis, 2008). Using these factors to examine the trademarks at issue, Fred's use of the business name, "Good Friend's Fence," would appear to be appropriate. Although the business names of the two entities are similar in that two of the three words used in the trademarks are identical, the third word in each trademark differs substantially enough as to be make each business distinguishable. The purpose of the Trademark Act is to avoid any situation where the consuming public will be misled either through the use of similar business name or through a new business taking advantage of the good will created by a previously existing business using a similar name. In the instant case, neither condition exists because, based on existing case law, the names of the involved businesses are neither deceptively similar nor substantially identical as to cause confusion.
Under the circumstances of the instant case, Fred has not violated the terms of the Trademark Act or the common law.
2. You suggest he should register everything under the Designs Act 2003. Will Fred be able to do so?
Whether Fred should register his fence product under the Design Act is dependent upon how important he feels that the appearance of his product is unique. The purpose of registering a product under the Design Act is to protect the overall appearance of the product (Design Act, pt.4, ¶15.) The protection provided by the Act is broad and there are very few restrictions relative to what aspect of a product's appearance can be protected but the Design Act does not protect a product's function (Macrae Knitting 1936). If Fred wishes to protect the functionality of his fence product he must do so under the provisions of the Patent Act. Fortunately for Fred, the provisions of the Design Act and the Patent Act are frequently used in conjunction in order to protect different aspects of the same product. In situations as presented in the instant case, businesses register the design of their product in order to protect its unique appearance while registering the special functionality of its product by patenting it as well. As to the design aspect of Fred's fence product, he must be prepared to validate its newness. This newness must stand up to scrutiny when compared with not only products in Australia but also products throughout the world. Under existing case law the measurement of a product's newness is an objective test where the court places itself in the position of an informed user. The informed user is someone with a generalized knowledge as opposed to someone who knows nothing about the product or who is an expert in the applicable field (Reckitt Benckiser, Inc., 2008).
The benefits realized through the possible registering of the design under the Design Act will apply only within the confines of Australia. In order for Fred to enjoy protection beyond the Australian borders he would be forced to file for protection in any country that he intended to export his product. There is a process available through the Paris Convention that simplifies the international design filing process but not all nations are signatories (Paris Convention).
The bottom line for Fred is deciding whether or not his fence produce qualifies as a new product under the Design Act. The unique features of the product such as its resistance to weather conditions and ease of placing posts in the ground would have no bearing on his being able to register the product under the Design Act. Such features are beyond the coverage of said Act as the Act applies only to the appearance of a product and not to its functions. Fred's decision relative to registering the design must be done carefully. Based on the description available and the wording of the Design Act, there is a possibility that the design of his product may not be distinguishable as to qualify as a new product meriting registration.
3. Explain whether Fred would be able to obtain a patent on his manufacturing process both in Australia and internationally under the Patents Act 1990.
If Fred is correct in his assessment of his new fence product it is incumbent on him to proceed with the procedures necessary to file a patent in order to protect the interests of his company. A properly registered patent will provide Good Friends Fence with a legally enforceable and exclusive right to commercially market his fence product. The process for registering a patent, however, is far more complex and involved than registering either a trademark or design. For Fred to be granted a patent he must be able to demonstrate that his fence or the process for manufacturing the fence is both novel and involves an inventive step. Beyond this, the product must also be useful (Patent Act 1900).
As long as Fred or his company is the actual inventor of the manufacturing process or has obtained the rights to the process from the inventor, he maintains the right to file for a patent.
Unfortunately, Fred has a serious problem that will likely foreclose him for filing for a patent. The facts of the case indicate that Fred's company has already been marketing the fence. Under Australian case law, the public use, sale, offer for sale, or disclosure of the invention prior to filing a patent application will preclude Fred's right to obtain a patent for his product (Aristocrat Technologies Australia Pty. Ltd. v. IGT, 2005). The fact that Fred has sold his fence product may jeopardize his ability to patent the product for use as a fencing product but he may be able to fashion his patent application in such fashion…