Intellectual Property
Winter Session 2016
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same grounds as rejection – s57
applicant not owner of mark – s58
earlier use of similar trade mark – 58A
applicant not intending to use mark – s59
similar to mark with reputation – s60
false geographical indication - s61
application is defective - s62
application made in bad faith – s62A
S 57 - Registration may be opposed on same
grounds as for rejection
The registration of a trade mark may be
opposed on any of the grounds on which an
application for the registration of a trade
mark may be rejected under this Act, except
the ground that the trade mark cannot be
represented graphically.
(Note: those grounds are set out in ss 39-44,
except s 40)
S 58 - Applicant not owner of trade mark
The registration of a trade mark may be
opposed on the ground that the applicant is not
the owner of the trade mark.
Common law owner of mark:
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Person who first publicly used the mark in
Australia as a trade mark to indicate a
connection in the course of trade between
goods/services and person
Not any goods/services
Designated goods/services and those that are
that are the “same kind of thing”
In order to succeed under this ground of opposition, the
Opponent must establish that:
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The respective trade marks of the Applicant and
Opponent are either identical or substantially
identical;
The respective good and services of the parties are
the “same kind of thing”; and
The Opponent’s trade mark use was prior to both the
application to register and any actual use of the
trade mark in Australia by the Applicant
Mark not used by any person:
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“an application to register a trade mark so far
unused must be founded on proprietorship”
proprietor of the mark is combined effect
◦ authorship of the mark
◦ intention to use it upon or in connection with the goods
◦ applying for registration”
Shell Co (Aust) Ltd v Rohm & Haas Co (1949) 78 CLR 601
Aston v Harlee Manufacturing Co (1960)
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Two American businesses wanted to use the name Tastee
Freez in Australia; Aston applies for registration first
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Harlee used the name first in the US; neither party had ever
used it in Australia so the Shell test applied
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The Court did not give any weight to the prior use in the US
in finding for Aston (absent a finding of fraud):
“When once it is conceded, as a matter of law, that a person
may apply for and obtain in Australia a valid registration of
a trade mark registered and used in a foreign country but
not used in Australia, I do not think that exceptions and
qualifications should be introduced which are based merely
on conceptions of commercial ethics.”
Opponent's earlier use of similar trade mark
(1)
This section applies to a trade mark (section 44 trade mark )
the application for registration of which has been accepted
because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the
purposes of Part 17A.
Note:
Subsection 44(4) prevents rejection of an application for
registration of a trade mark that is substantially identical
with, or deceptively similar to, a registered trade mark or a
trade mark whose registration is being sought where the
first-mentioned trade mark has been continuously used
since before the priority date of the other trade mark.
Opponent's earlier use of similar trade mark (cont)
(2)
The registration of the section 44 trade mark may be opposed on
the ground that the owner of the substantially identical or
deceptively similar trade mark (similar trade mark) or the
predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor
in title in relation to the section 44 trade mark first used
the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of
those goods or services since that first use.
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Mark may be registered where mark is
substantially identical or deceptively similar
to previously registered mark if the applicant
used before the previously registered mark
was registered – section 44(4)
BUT can reject if the owner of the previously
registered mark used before the applicant
Other
Owner’s use
Applicant’s use
Other Owner’s
registration
Applicant’s
application
Example:
AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2015] ATMO 7
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Application for “Crop Smart” filed in July 2009 in class 5
(Preparations for destroying vermin; pesticides, insecticides,
parasiticides; fungicides, weed killers and herbicides).
Applicant overcomes rejection under 44(4) (use prior to that of
February 2008 date of Opponent’s registered mark “Smart” also for
pesticides) by demonstrating use as of September 2006
Sales figures by Opponent demonstrated that “Smart” was used as of
1998
Opponent therefore successful under s 58A
Registration refused under s 55(1); costs awarded as costs follow the
event
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the
ground that the applicant does not intend:
(a)
to use, or authorise the use of, the trade mark
in Australia; or
(b)
to assign the trade mark to a body corporate
for use by the body corporate in Australia;
in relation to the goods and/or services specified in the
application.
Note: For applicant see section 6.
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use it upon or in connection with goods or
services
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intention as at date of application
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but evidence of use/non-use after date may
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not just non-use; need to prove no intention
be relevant
Food Channel Network Pty Ltd v Television Food
Network GP
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The Food Channel Pty Ltd applied to register a trade
mark consisting of the words “Food Channel” and a
cartoon picture of a stylised television with a banana
and chilli as the antennae
The Full Federal Court rejected the s 59 ground of
opposition because uncontested evidence
demonstrated that there had in fact been use of the
trade mark in the course of trade
“A manufacturer of (say) confectionery would, I should
suppose, be entitled to register three trade marks in
relation to confectionery, though he intended only to
use two of them and had not made up his mind as to
which two he would use. If he in fact does not use any
of them for the period specified in s. 72, the unused
mark or marks may be expunged under that section. On
the other hand, a manufacturer of confectionery, who
had no intention of ever manufacturing motor cars,
might be held disentitled to register a mark in relation
to motor cars.”
According to Wikipedia:
Ghost marks are trade marks which closely
simulate ordinary words or phrases used in the
course of trade, and which are not intended to
be used as genuine trade marks.
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IG couldn’t register
MERIT – descriptive
IG registered NERIT as
defensive mark to
prevent others using
MERIT
No genuine intention
to use NERIT
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Prevent trade mark dilution
• register in related classes that don’t intend to use
• register related words / logos that don’t intend to use
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Cybersquatter/trade mark pirates
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may be opposed (s59) or removed for non-use (Part 9)
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owner can use other mechanisms
• closely related goods and services – s120(1)/(2)
• well-known marks – s120(3)
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Ghost marks are now rarely filed (but see defensive marks)
(2) A person infringes a registered trade mark if
the person uses as a trade mark a sign that is
substantially identical with, or deceptively
similar to, the trade mark in relation to:
...
(b) services that are closely related to
registered goods; or
...
(d) goods that are closely related to
registered services.
(3) A person infringes a registered trade mark if:
(a) the trade mark is well known in Australia; and
(b) the person uses as a trade mark a sign that is substantially
identical with, or deceptively similar to, the trade mark in
relation to:
(i) goods ( unrelated goods ) that are not of the same
description as that of the goods in respect of which the
trade mark is registered ( registered goods ) or are not
closely related to services in respect of which the trade
mark is registered ( registered services ); or
(ii) services ( unrelated services ) that are not of the same
description as that of the registered services or are not
closely related to registered goods; and
(c) because the trade mark is well known, the sign would be likely
to be taken as indicating a connection between the unrelated
goods or services and the registered owner of the trade mark;
and
(d) for that reason, the interests of the registered owner are likely
to be adversely affected.
Trade mark similar to trade mark that has acquired a reputation in
Australia
The registration of a trade mark in respect of particular goods or
services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the
registration of the first-mentioned trade mark in respect of those
goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of
the first-mentioned trade mark would be likely to deceive or cause
confusion.
Note: For priority date see section 12.
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Test: another trade mark has reputation AND because of
reputation likely to deceive or cause confusion
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Reputation trade mark does not have to be registered
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Reputation demonstrated by evidence of sales, marketing,
advertising and licensing
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Reputation can be in any goods or services; doesn’t have
to relate to designated goods/services
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BUT if reputation relates to very different goods or services
it will be difficult to show that the reputation will deceive
or cause confusion
McCormick & Company Inc v McCormick
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reputation means the recognition of the marks by the
public generally
McDonalds v Bowditch
GOLDEN BOOMERANGS
(The provision of tourist accommodation; fast food and
restaurant services) – s 60 ground failed (no consumer
confusion)
McDonalds v Macri Fruit Distributors
MCSALAD, MCFRUIT
(Processed and prepacked fruit and vegetables) – s 60 ground
successful
Greenpeace v Taylor
GREENPIECE
(Chemicals for use on/with plants; fertilisers and plant
nutrients including, but not limited to liquid fertilisers and
liquid nutrients for plants) – s 60 ground successful
Qantas v NV Sumatra
JETSTAR for coffee, tea, cereal, biscuits, cocoa
- s 60 ground successful
Intel v Third Party Corporation
BELLINTEL for stock-broking services
‘bellintell’ mark in colours separating ‘bell’ from ‘intell’
- S 60 ground successful
Coca Cola v The Big Australian
SOLA COLA for mineral and aerated waters and other
non-alcoholic drinks; fruit drinks and fruit juices; syrups
and other preparations for making beverages
- 60 ground fails
DC Comics v Cheqout Pty Ltd [2013] FCA 478
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Appeal from decision to register “superman workout” for
conducting exercise classes; fitness and exercise clinics,
clubs and salons; health club services (exercise)
s 60 ground fails - fair and notional use of SUPERMAN
WORKOUT by Cheqout for the class “without reference to
any of the well known indicia associated with the DC
Comics superhero” would not be likely to cause confusion
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S 62A (bad faith) successful - Applicant’s use of the logo
below “soon after the application” was filed. Logo closely
resembled DC Comics’ insignia and made use of colours
“traditionally used in conjunction with the Superman
character”.
Trade mark containing or consisting of a false geographical indication
(1) The registration of a trade mark in respect of particular goods
( relevant goods ) may be opposed on the ground that the trade mark
contains or consists of a sign that is a geographical indication for goods
( designated goods ) originating in:
(a) a country, or in a region or locality in a country, other
than the country in which the relevant goods originated; or
(b) a region or locality in the country in which the relevant
goods originated other than the region or locality in which the relevant
goods originated;
if the relevant goods are similar to the designated goods or the use of a
trade mark in respect of the relevant goods would be likely to deceive or
cause confusion.
(2) An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:
indication; or
(a) the relevant goods originated in the country, region or locality identified by the geographical
(aa) the sign is not recognised as a geographical indication for the designated goods in the country in
which the designated goods originated; or
(b) the sign has ceased to be used as a geographical indication for the designated goods in the country
in which the designated goods originated; or
(c) the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the
relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:
(i) 1 January 1996; or
(ii) the day on which the sign was recognised as a geographical indication for the designated
goods in their country of origin;
whichever is the later; or
(d) if the registration of the trade mark is being sought in respect of wine or spirits ( relevant wine or
spirits )--the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine
or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.
(3) An opposition on a ground referred to in subsection (1) also fails if the applicant
establishes that:
(a) although the sign is a geographical indication for the designated
goods, it is also a geographical indication for the relevant goods; and
(b) the applicant has not used, and does not intend to use, the trade
mark in relation to the relevant goods in a way that is likely to deceive or confuse
members of the public as to the origin of the relevant goods.
(4) An opposition on a ground referred to in subsection (1) also fails if the
applicant establishes that:
(a) the sign consists of a word or term that is a geographical
indication; and
(b) the word or term is a common English word or term; and
(c) the applicant has not used, and does not intend to use, the trade
mark in relation to the relevant goods in a way that is likely to deceive or confuse
members of the public as to the origin of the relevant goods.
Verbrand Bayerischer Ausfuhrbrauereien
Eingetragene Verein v Bavaria N.V. [2006] ATMO 53
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Ground under s 61 fails because Bavaria is not a
geographical indication (as defined by section 6).
BAVARIA and BAYERISCHES BIER are not the same,
nor are they substantially the same. BAVARIA is the
name of a German state; BAYERISCHES BIER refers
to beer from Bavaria. Consequently the presence of
BAVARIA in the applicant’s trade mark does not
have the same effect as the presence of
BAYERISCHES BIER.
Application etc. defective etc.
The registration of a trade mark may be opposed
on any of the following grounds:
(a) that the application, or a document filed in
support of the application, was amended contrary
to this Act;
(b) that the Registrar accepted the application for
registration on the basis of evidence or
representations that were false in material
particulars.
Examples:
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Unintentionally providing false evidence during
the examination phase which had a significant
effect in bringing about the acceptance of the
application (Link Recruitment Pty Limited v Link
Employment and Training Inc [2006] ATMO 39)
Evidence misleading in that is suggested that
there had been sales of goods and services
(Chris-Telle Pty Ltd v Australian Swimming Inc
[2004] ATMO 60)
Application made in bad faith
The registration of a trade mark may be
opposed on the ground that the application was
made in bad faith.
Fry Consulting v Sports Warehouse
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unscrupulous, underhand or unconscientious
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deliberate misspellings registered trademark
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register foreign trade mark with no Australian
market penetration with purpose of selling to
foreign owner
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cyber-squatting
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not include mere negligence, incompetence or a
lack of prudence
Application for removal of trade mark from Register etc.
(1) Subject to subsection (3), a person may apply to the Registrar to have a
trade mark that is or may be registered removed from the Register.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in
respect of which the trade mark may be, or is, registered.
(3) An application may not be made to the Registrar under subsection (1) if an
action concerning the trade mark is pending in a prescribed court, but the
person may apply to the court for an order directing the Registrar to remove
the trade mark from the Register.
Note: For prescribed court see section 190.
(4) An application under subsection (1) or (3) ( non-use application ) may be made on
either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark
was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body
corporate in Australia;
in relation to the goods and/or services to which the non-use application relates
and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of
one month ending on the day on which the non-use application is filed;
(4) An application under subsection (1) or (3) ( non-use
application ) may be made on either or both of the following
grounds, and on no other grounds:
...
(b) that the trade mark has remained registered for a
continuous period of 3 years ending one month before the day
on which the non-use application is filed, and, at no time during
that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application
relates.
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No intention to use when apply AND not in fact used as trade
mark in good faith in Australia since registration
Registered for 3 years and not used as trade mark in good faith
in Australia for 3 years
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Woolly Bull Enterprises Pty Ltd v Reynolds (not necessary that
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Good faith – real not token, colourable
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remove OR impose limitations or conditions
there be an actual trade in the sense of the offering for sale and
the sale of goods bearing the mark BUT must go beyond
investigating whether to use the mark and beyond planning to
use the mark and has got to the stage where it can be seen
objectively to have committed itself to using the mark, ie, to
carrying its intention to use the mark into effect)
S 27 - Application--how made
(1) A person may apply for the registration of a trade mark in respect of
goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:
(i) the person is using or intends to use the trade mark in relation to
the goods and/or services;
(ii) the person has authorised or intends to authorise another person
to use the trade mark in relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate
that is about to be constituted with a view to the use by the body
corporate of the trade mark in relation to the goods and/or services.
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Aston v Harlee Manufacturing Co (1960) 103 CLR 391 (making
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Moorgate Tobacco Co Limited v Phillip Morris Limited (No 2)
of application prima facie evidence of intention to use)
(1984) 59 ALJR 77:
“The prior use of a trade mark which may suffice, at least if
combined with local authorship, to establish that a person
has acquired in Australia the statutory status of ‘proprietor’
of the mark, is public use in Australia of the mark as a trade
mark, that is to say, a use of the mark in relation to goods
for the purpose of indicating or so as to indicate a
connexion in the course of trade between the goods with
respect to which the mark is used and that person.”
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Registered owner exclusive right – s20
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use/authorise the trade mark in relation to designated
goods/services
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obtain relief if trade mark infringed
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Registered trade mark personal property– s21
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Registered owner may deal with trade mark and
give discharges in good faith – s22
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Equities may be enforced against registered
owner except PPSA security interests
S 8 - Definitions of authorised user and authorised use
(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services
under the control of the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the
extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3) If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or
services under the control of the owner.
(4) If:
(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade
mark is used; and
activities;
(b) the owner of the trade mark exercises financial control over the other person's relevant trading
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or
services under the control of the owner.
(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
Authorised user rights – s26
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Use trade mark on designated goods/services
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Sue for infringement with owner’s consent
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Sue for infringement after end prescribed
period if owner doesn’t sue within prescribed
period
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Give notice to customs to prevent importation
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Permission to alter/deface mark on goods
E & J Gallo Winery v Lion Nathan
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Application by Lion Nathan to cancel Gallo's
registration of the trade mark BAREFOOT; issue
whether Gallo used mark BAREFOOT in Australia
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Houlihan trade mark owner (later Gallo) owned
Barefoot Cellars
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Barefoot Cellars applied mark to wine
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Barefoot Cellars sold wine to Einig-Zenzen,
Germany who sold to Beach Avenue, Australia
who sold wine in Australia
Houlihan exercised quality control over Barefoot
Cellars (thus authorised use)
If the person uses as a trade mark:
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a sign that is substantially identical with, or
deceptively similar to, the trade mark
in relation to:
s120(1) registered goods or services
s120(2) goods/services of same description or
closely related goods or services
s120(3): well-known trade marks (any goods or
services)
Substantially identical:
Shell Co Australia v Esso Standard Oil
compared side by side, their similarities and
differences noted and the importance of these
assessed having regard to the essential features
of the registered mark and the total impression
of resemblance or dissimilarity that emerges
from the comparison
Deceptively similar :
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if it so nearly resembles that other trade mark
that it is likely to deceive or cause confusion
(s10)
Crazy Ron’s v Mobileworld
impression based on recollection of the
applicant’s mark that persons of ordinary
intelligence would have compared to
impression such persons would get from
respondent’s mark
Coca Cola Distributors v All Fect Distributors
Pty Ltd
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All-Fect was using cola bottle to indicate a
connection in the course of trade between
goods and the person who applies the mark
to the goods
certain striking non-descriptive features of
the goods were put there to make the goods
more arresting and to distinguish them from
other similar goods, that is, to use those
features as a mark
Johnson & Johnson (Tylenol) v Sterling
Pharmaceuticals (Panadol)
CAPLET
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a registered mark serves to indicate the
origin of the quality in a particular business,
whether known or unknown by name
Caplet was used to indicate or describe form
or method of dosage of product found
inside packages, and not a connection in the
course of trade
Top Heavy v Killin
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Whether the sign is used to distinguish one
person’s goods and services from the goods
or services of others
Killin put words CHILL OUT on t-shirts as an
exhortation to relax, not to indicate a
connection in trade
Pepsico Australia Pty Limited (t/a Frito-Lay) v Kettle
Chip Co Pty Limited
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Frito-Lay's use of the words "KETTLE", or
"KETTLE COOKED", was not use as a trade mark
Frito Lay used words KETTLE or KETTLE COOKE
for purpose and effect of describing qualities of
the chips produced by Frito-Lay. The words
have the effect of distinguishing between the
qualities of those chips and those produced by
means other than "kettle cooking”, but not to
distinguish Frito-Lay's chips from Kettle’s chips
Shell Co of Australia Limited v Esso Standard Oil
(Australia) Limited
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Shell, used an animated humanised oil drop in
two short films advertising its petrol.
Although Shell’s use of its oil man animation
was to convey a particular message about its
petrol, a viewer of Shell’s animation would
consider that the animation had been chosen to
identify the brand source of the petrol in
relation to which it was used
The “purpose and nature” of the use complained
of was not trade mark use
s123 - Goods etc. to which registered trade mark has been applied
by or with consent of registered owner
(1) In spite of section 120, a person who uses a registered trade
mark in relation to goods that are similar to goods in respect of
which the trade mark is registered does not infringe the trade mark
if the trade mark has been applied to, or in relation to, the goods
by, or with the consent of, the registered owner of the trade mark.
(2) In spite of section 120, a person who uses a registered trade
mark in relation to services that are similar to services in respect of
which the trade mark is registered does not infringe the trade mark
if the trade mark has been applied in relation to the services by, or
with the consent of, the registered owner of the trade mark.
R A & A Bailey & Co Limited v Boccaccio Pty Limited
(1986) 6 IPR 279
Bailey’s Irish Cream was produced overseas by the
Australian trade mark owner although the particular
bottles obtained from overseas and imported into
Australia were imported without the permission of
the trade mark owner. The New South Wales
Supreme Court held that the importer was not
using the trade mark as a trade mark and therefore
could not be infringing the trade mark (instead
ongoing use by the proprietor of he mark)
Transport Tyre Sales Pty Ltd v Montana Tyres and Rims Pty Ltd (1999) 43 IPR
481
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Montana acquires tyres in Singapore (manufactured in Japan) and
exports them to Australia. Argument was that there had been no
application of the Australian registered trade mark by or with the
consent of the trade mark owner as required for the defence of s123 to
apply
Argument rejected on the basis that it would be impractical to
distinguish between goods bearing the identical trade mark as being
either goods for the Australian market or being for the Japanese
market.
The application of the trade mark to goods in one country by or with
the consent of the overseas trade mark owner allowed the operation of
the s123 defence. The intention of the trade mark owner regarding
distributorship of the goods in Australia was irrelevant.
Polo/Lauren Company LP v Ziliani Holdings (2008)
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Ziliani legally bought in the US and parallelly
imported into Australia for sale a number of
articles of clothing onto which the Polo/Lauren
‘polo player logo’ was embroidered
Ziliani did not have the licence or consent of
Polo/Lauren to import or sell those articles in
Australia
Case demonstrates limited power of Copyright
and Trade Mark Acts to limit parallel imports
Paul’s Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130
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Paul’s purchased goods from an intermediary in Pakistan who
had obtained them from the authorised Indian licensee.
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The Indian licensee’s licence was limited to the Indian market
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Because the evidence showed that the Indian manufacturer
knew that the goods would be sold outside India (in Pakistan),
its manufacture of the goods was in breach of the licence and
was not with the consent of the trade mark owner.
The current position is that importers may be liable for trade
mark infringement if they import goods where the brand
owner's consent to the use of its trade mark on the goods is
expressly limited to specific territories
Shell Co of Australia Limited v Esso Standard Oil (Australia)
Limited (1963) CLR 407
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Test for substantial identity:
“In considering whether marks are substantially identical
they should, I think, be compared side by side, their
similarities and differences noted and the importance of
these assessed having regard to the essential features of the
registered mark and the total impression of resemblance or
dissimilarity that emerges from the comparison.“
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While it may be that certain frames of the films may be
substantially identical to Esso’s marks, the film “does not
stand still” and the figure depicted does not hold its pose or
expression for long enough to establish infringement by the
use of a substantially identical mark.
Shell Co of Australia Limited v Esso Standard Oil (Australia)
Limited (1963) CLR 407
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“On the question of deceptive similarity a different comparison must
be made from that which is necessary when substantial identity is in
question. The marks are not now to be looked at side by side. The
issue is not abstract similarity, but deceptive similarity. Therefore the
comparison is the familiar one of trade mark law. It is between, on the
one hand, the impression based on recollection of the plaintiff’s mark
that persons of ordinary intelligence and memory would have; and, on
the other hand, the impressions that such persons would get from the
defendant’s television exhibitions.”
Marks deceptively similar because “the oil drop man in each of the
films is at various stages so similar in body, build and expression to
the plaintiff’s mark that confusion is likely to arise”.
Australian Woollen Mills Ltd v FS Walton
& Co Ltd (1937) 58 CLR 641
Wingate Marketing Pty Ltd v Levi Strauss
& Co Ltd (1994) 28 IPR 193
Polaroid Corporation v Sole N Pty Limited [1981] 1 NSWLR
49
SOLAROID and POLAROID (deceptively similar for
glassware of some description)
Registrar of Trade Marks v Woolworths (1999) 45 IPR 411
(‘Woolworths Metro’)
The trade mark comprised the words “WOOLWORTHS
metro” on a background of wavy lines.
The application was refused on the ground that the
proposed mark was deceptively similar to other registered
marks consisting of the word “metro” and registered in
respect of a variety of goods. Refusal upheld.
Polaroid Corporation v Sole N Pty Limited [1981] 1 NSWLR
49
SOLAROID and POLAROID (deceptively similar for
glassware of some description)
Registrar of Trade Marks v Woolworths (1999) 45 IPR 411
(‘Woolworths Metro’)
The trade mark comprised the words “WOOLWORTHS
metro” on a background of wavy lines.
The application was refused on the ground that the
proposed mark was deceptively similar to other registered
marks consisting of the word “metro” and registered in
respect of a variety of goods. Refusal upheld.
Beecham Group Plc v Colgate-Palmolive Pty Ltd [2005] FCA
838 (22 June 2005) (‘Macleans’)
“Macleans” claimed alleged trade mark infringement
against Colgate for the use of the name “MaxClean”. Not
deceptively similar
Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty
Ltd [2003] FCA 901 (27 August 2003)
“THORPEDO” was not deceptively similar to “TORPEDOES”
in relation to sports apparel. The association of 'Thorpe'
with Ian Thorpe, particularly in connection with sporting
apparel, could not be disregarded.
Southern Cross v Toowoomba Foundry
•
Similar goods involves consideration of
◦ nature of goods
◦ uses to which they are put
◦ whether they are commonly sold together to the same class or
classes of customers
Registrar of TM v Woolworths
•
whether the closeness of the relationship and the resemblance
of the mark together cause deception or cause confusion
•
range of relationships between goods and services which may
be "closely related”
•
Person uses person’s name/place of business (predecessor’s name)
in good faith
•
Angove’s Pty Ltd v Johnson (entitled to use words “St Agnes Liquor
Store” in the name of its business in the Adelaide suburb of St
Agnes, notwithstanding that plaintiff registered trade mark ST
AGNES)
•
•
Person uses sign in good faith to indicate kind, quality, quantity,
intended purpose, value, geographical origin, or some other
characteristic, of goods or services
Person uses trade mark in good faith to indicate the intended
purpose of goods (in particular as accessories or spare parts) or
services
•
Person uses trade mark in comparative advertising
•
Person would obtain registration if applied (eg honest concurrent
use)
•
•
Use in good faith imports an absence of intention to make use of
the goodwill which has been acquired by another trader
resemblance between the registered trade mark, of which the
first respondent was aware and the name of the first respondent
does not prevent the use being bona fide provided that there
was an honest belief that no confusion would arise and if there
were no intention of wrongfully diverting business
Wellness Pty Limited v Pro Bio Living Waters Pty Limited
•
no evidence as to reason for choice of name and reason for
incorporation; no good faith as “living waters” not used as a
descriptor
Prior use of identical trade mark etc.
(1) A person does not infringe a registered trade mark by using an unregistered trade
mark that is substantially identical with, or deceptively similar to, the registered trade
mark in relation to:
(a) goods similar to goods ( registered goods ) in respect of which the
trade mark is registered; or
(b) services closely related to registered goods; or
(c) services similar to services ( registered services ) in respect of which
the trade mark is registered; or
(d) goods closely related to registered services;
if the person, or the person and the person's predecessor in title, have continuously
used in the course of trade the unregistered trade mark in relation to those goods or
services from a time before:
(e) the date of registration of the registered trade mark; or
(f) the registered owner of the registered trade mark, or a predecessor
in title, or a person who was a registered user of the trade mark under the repealed
Act, first used the trade mark;
whichever is earlier.
•
Injunction
•
Damages
•
Account of profits
•
•
no damages/account of profits if mark not
used and mark removed – s127
Groundless threat of legal proceedings –
s129


Owner can give notice to Customs objecting
to importation of goods infringing mark –
s132
Customs may seize imported goods with a
sign that is substantially identical or
deceptively similar to a notified trade mark –
s133