Trade Mark Infringement

A trade mark is a type of intellectual property that is often called a business’s “brand” or their “identity”.  It is used to distinguish goods and services from those of another business.  A trademark can be a:

• Logo
• An advertisement jingle
• Words
• Phrase
• Letters
• Picture
• Symbol
• Scent
• Sound
• Signature
• Colour.

Registering a trade mark can assist in protecting a business’s brand and identity.  Under the Trade Marks Act 1995 (Cth) (“TM Act”), a registered trade mark gives a business the exclusive legal right to use, license and sell their intellectual asset in Australia.  Any unauthorised use of a trade mark that is “substantially identical with” or “deceptively similar to” a registered trade mark, in relation to goods and or services is an infringement.

At Boss Lawyers, we can help protect your registered trade mark.  Alternatively, we can also help in situations when you receive a letter stating that your unregistered mark (“Sign”) [1] has infringed someone else’s registered trade mark.

Please ring us to discuss your needs and we will be pleased to answer your questions regarding protecting your trade mark or defending an allegation of trade mark infringement.

Tel: 1300 267 711.

When is a trade mark infringed?

A person infringes a registered trade mark if they use a Sign:

1. That is ‘substantially identical to’ the
   registered trade mark for goods/services with the same description or closely
   related;
2. That is ‘deceptively similar to’ a registered
   trade mark for goods/services with the same description or closely related; or
3. That is well known in Australia and is for a
   category of goods/services even though its description is unrelated to the
   registered trademarks.[2]

The relationship with the alleged infringer’s goods or services compared with the registered trade marks goods or services, determines the infringement type.[3]

Substantially Identical

There is no definition of the term “substantially identical” within the TM Act.  However, the well accepted test in considering whether a Sign is “substantially identical to” is undertaken by comparing side by side the similarities and differences of the two marks (i.e. the Sign versus the Registered trade mark).  Consideration must also be given to the essential features of the registered trade mark and the total impression of resemblance or dissimilarity that emerges from that comparison.[4]    If a total impression of similarity is evident following a side by side comparison of the two marks, then the marks are substantially identical. 

In Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd[5], when “LIVING WATER” and “LIVING WATERS” were compared side by side the court concluded that there was a total impression of resemblance, notwithstanding the presence of the “s” and the minor significance does not derogate from the fact that the essential features of the mark are present.[6]

Deceptively Similar

A Sign is taken to be deceptively similar to a registered trade mark, if it is likely to deceive or cause confusion.[7]  When evaluating if a Sign is deceptive similarity to the registered trade mark, the assessment must not be judged by a side by side comparison.  Instead the test is taken to be the impression that a person of ordinary intelligence and memory would get from the Sign as it appears in the complained use. [8]  Some factors a court will consider relevant when determining whether trade marks are deceptively similar include the following:

1. Comparing the look and sound of the trade marks;[9]
2. Comparing the respective meanings of the trade
   marks;[10]
3. Contrasting each mark to determine if either
   hold a degree of familiarity or reputation from the viewer’s perception of
   them;[11]
4. Identifying if there are any instances of actual
   confusion;[12] and
5. Discounting the descriptive matter between trade
   marks if there are common characteristics well recognised in the particular
   trade.[13]

In Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd[14], when the Sign “Whackos” was compared with the registered trade marks “Schmackos” and “Dogs go wacko for Schmackos”, the court on appeal concluded that the Sign “Whackos” was not deceptively similar to “Whackos” but was deceptively similar to the registered trade mark “Dogs go wacko for Schmackos”.  The term “Wacko” is a “playful, amusing and interesting word used prominently by the registered trade mark owner and its use by another trader is likely to create confusion”[15].

Defences to trade mark infringement

There are a number of statutory provisions which provide that certain acts do not constitute infringement of a registered trade mark.  Some of the defences include:

1. Use of a person’s name in good faith;[16]
2. Use for the purpose of comparative advertising;[17]
3. Use in good faith to indicate the kind, quality,
   intended purpose, value, geographical origin;[18]
   or
4. Use in good faith to indicate purpose, such as
   describing goods as accessories, spare parts or services.[19]

A person is said to act in good faith where there is an absence of an ulterior motive in the use of the infringing mark.[20]  

Where to go for help

Our specialised lawyers can assist in formulating a strong case for you, which may include defending:

1. your registered trade mark being used by another
   trader; and
2. an allegation that you have infringed another
   trader’s registered trademark.

Our approach involves a meticulous assessment of the facts and a detailed understanding of trade mark law.   Please ring us to discuss your needs and we will be pleased to answer your questions.

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[1] A sign includes any combination of the following: any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent; Trade Marks Act 1995 (Cth), s 6.

[2] Trade Marks Act 1995 (Cth), s 120.

[3] Trade Marks Act 1995 (Cth), s 120(1), 120(2), 120(3).

[4] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407; (1963) 1B IPR 523.

[5] (2004) 61 IPR 242.

[6] (2004) 61 IPR 242, 242.

[7] Trade Marks Act 1995 (Cth) s 10.

[8] Anheuser-Busch Inc v Budejovicky Budvar (2002) [2002] FCA 390, [143].

[9] Australian Postal Corporation v Digital Post Australia (2013) 308 ALR 1, [70].

[10] C A Henschke v Rosemount Estates Pty Ltd (2000) 52 IPR 42, [57].

[11] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, [61].

[12] Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661, [137].

[13] Scotch Whisky Association v De Witt (2007) 74 IPR 382, [79].

[14] (2006) 69 IPR 243.

[15] Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd (2006) 69 IPR 243, [36].

[16] Trade Marks Act 1995 (Cth), s 122(1)(a).

[17] Trade Marks Act 1995 (Cth), s 122(1)(d).

[18] Trade Marks Act 1995 (Cth), s 122(1)(b).

[19] Trade Marks Act 1995 (Cth), s 122(1)(c).

[20] Angove’s Pty Ltd v Johnson (1982) 43 ALR 349, 378.