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ausip:trade-mark-infringement [2018/05/30 14:34]
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 # Trade Mark Infringement & Defences ​ # Trade Mark Infringement & Defences ​
  
 +Trade mark infringement occurs when a defendant uses a registered sign as a mark within the course of trade in a way that attempts to distinguish their goods or services. ​
  
-**Video overview ​by Nicolas Suzor on [the trademark infringement framework](https://​www.youtube.com/​watch?​v=figyb5V4Q2o&​list=PLa0bKPnUKQrxD942qJoDGW_7qbB6O6a7B&​index=1).**+Not all uses of registered trade marks will be infringements. Uses which merely refer to a product or brand or other descriptive uses of a trade mark are not going to be infringements unless they are used in a way that amounts to use as a trade mark. This means that infringement only occurs if the sign is used in a way that seeks to distinguish products or services. ((//Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd// [1963] HCA 66)) 
 + 
 +**The below video by Nicolas Suzor provides an overview of [The Trademark Infringement Framework](https://​www.youtube.com/​watch?​v=figyb5V4Q2o&​list=PLa0bKPnUKQrxD942qJoDGW_7qbB6O6a7B&​index=1).**
  
- ​{{youtube>​figyb5V4Q2o}} 
  
  
  
 ## Exclusive Rights Granted Upon Registration ## Exclusive Rights Granted Upon Registration
-Registration gives the registered owner the exclusive right to use the trade mark or authorise another person to use the trade mark in relation to the goods or services in which it is registered (TMA s 20(1)). The trade mark owner also has the right to obtain relief if the trade mark has been infringed (TMA s 20(2)). 
  
-A trade mark initially provides the owner with 10 years of protection, which can be renewed indefinitely as long as the trade mark is still in use (TMA s 72(3))A registered trade mark becomes a type of property and may be licensed to others for use.+Registration gives the registered owner the exclusive right to use the trade mark or authorise another person to use the trade mark in relation to the goods or services in which it is registered. ((//TMA// s 20(1) )) The trade mark owner also has the right to obtain relief if the trade mark has been infringed. ((//TMA// s 20(2) )) 
 + 
 +A trade mark initially provides the owner with 10 years of protection, which can be renewed indefinitely as long as the trade mark is still in use. ((//TMA// s 72(3) )A registered trade mark becomes a type of property and may be licensed to others for use.
  
 ## Types of Infringement ## Types of Infringement
  
-**Ria explains the different forms of infringement ​in s 120** +Section 120 of the //TMA// sets out the three ways in which a trade mark can be infringed. These are:
- ​{{youtube>​lc1ZpqIBMRs?​small}}+
  
 +1. A person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to goods or services in respect of which the trade mark is registered. ((//TMA// s 120(1) ))
  
 +2. A person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to goods of the same description or services that are closely related to  registered goods; or services of the same description or goods that are closely related to registered services.((//​TMA//​ s 120(2) )) 
  
-**Rohan Davies explains the different forms of infringement under s 120** +3. A person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to a registered trade mark that is well-known in Australia, in relation to: (( //​TMA// ​s 120(3) ))
- ​{{youtube>​lZuPa7udlMo?​small}}+
  
 +  * The goods or services are not of the same description or not closely related; and
  
-TMA s 120 provides for three ways in which a trade mark can be infringed.+  * Because the registered ​trade mark is well-known, the sign would be likely to be taken as indicating a connection between the unrelated goods/​services and the registered owner of the trade mark; and
  
-A person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the registered ​trade mark in relation ​to goods or services in respect of which the trade mark is registered(TMA s 120(1))+  ​The interest of the registered ​owner are likely ​to be adversely affected 
 + 
  
-* A person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the registered ​trade mark in relation to (TMA s 120(2)):+In relation to well-known trade marks, take into account the extent to which the trade mark is known within the relevant sector of the publicwhether as a result of the promotion of the trade mark or for any other reason. ((//TMA// s 120(4) ))
  
-    ​For goods: goods of the same description or services that are closely related to  registered goods; or   +**Video overview by Ria on [The Different Forms of Infringement in s 120](https://​www.youtube.com/​watch?​v=lc1ZpqIBMRs)**
-  +
- For services: services ​of the same description or goods that are closely related to registered services+
  
-*  A person uses as a trade mark a sign that is substantially identical with, or deceptively similar to a registered trade mark that is well-known in Australia, in relation to (s 120(3)): 
  
-  * The goods or services are not of the same description or not closely related; and  
  
-  * because the registered trade mark is well-known, the sign would be likely to be taken as indicating a connection between the unrelated goods/​services and the registered owner of the trade mark; and  
  
-  ​the interest ​of the registered owner are likely to be adversely affected+**Video overview by Rohan Davies on [The Different Forms of Infringement under s 120](https://​www.youtube.com/​watch?​v=lZuPa7udlMo)**
    
  
 +### Same Goods/​Services
  
-In relation to well-known trade markstake into account ​the extent ​to which the trade mark is known within the relevant sector of the publicwhether as a result of the promotion of the trade mark or for any other reason (TMA s 120(4))+Infringement may occur with when an alleged infringing mark is used in the same class of goods or services as the registered mark.  ((//TMA// s120(1) )) This type of trade mark infringement is known as '​vanilla'​ infringement,​ where the defendant is using a mark as a trade markwhich  is substantially identical or deceptively similar to the registered mark, with respect ​to the same goods or services for which the trade mark is registered. For example, the registered trade mark is used with respect to cola flavoured drink and the alleged infringing mark is used on cola flavoured drink. The onus is on the registered owner to show trade mark infringement.
  
-### Same Goods/Services ​(TMA s120(1))+For more information read Amanda Scardamaglia'​s *The Coca-Cola Company v Pepsico Inc & Ors* VID 876/2010[‘Storm in a Contour Bottle? – The Coca-Cola Company v Pepsico Inc & Ors VID 876/​2010’,​ Fortnightly Review of IP & Media Law, Edition 18 (11 November 2010)](https://​researchbank.swinburne.edu.au/​file/​c341d5be-acec-4403-bd61-60add0b15243/​1/​PDF%20%28Published%20version%29.pdfLicensed for reuse under a Creative Commons Attribution-NonCommercial 2.5 Licence)
  
-Known as '​vanilla'​ infringement,​ where the defendant is using a mark as a trade mark, which  is substantially identical ​or deceptively similar to the registered mark, with respect to the same goods or services for which the trade mark is registered. For example, the registered trade mark is used with respect to cola flavoured drink and the alleged infringing mark is used on cola flavoured drink. The onus is on the registered owner to show trade mark infringement.+### Same Description/​Closely Related Goods or Services
  
- See *The Coca-Cola Company v Pepsico Inc & Ors* VID 876/2010 [Amanda Scardamaglia,​ ‘Storm in Contour Bottle? – The Coca-Cola Company v Pepsico Inc & Ors VID 876/2010’Fortnightly Review of IP & Media LawEdition 18 (11 November 2010)] **Teach ​the Class Video**+Infringement may occur where the defendant is using mark as a trade markwhich  is substantially identical or deceptively similar to the registered markwith respect to goods or services of the same description or goods or services that are closely related. ((//TMA// s 120(2)) Note this section also functions as an informal defence (see below). The onus is reversed so the defendant must prove a lack of likelihood of deception or confusion. ​
  
-### Same Description/​Closely Related Goods or Services (TMA 120(2))+This subsection protects traders and the public from unscrupulous dealers who want to pass off a new product as someone else’s. It also protects against dilatation of the value of the trade mark by allowing others to use it as they like, but in different categories. ​
  
-Where the defendant is using a  mark as a trade mark, which  is substantially identical or deceptively similar to the registered mark, with respect to goods or services of the same description or goods or services that are closely related. Note this section also functions ​as an informal defence (see below). The onus is reversed so the defendant must prove a lack of likelihood ​of deception or confusion+The principles of goods and services ​being of the same description or closely related ​are largely the same as those that apply in the context ​of //TMA// s 44. Goods will not be of the ‘same description’ if their sale under the same mark by different companies would not be likely to lead to confusion or deception. If the public would not expect the same business to supply both of the goods and/or services, then the two are unlikely to be considered closely related.
  
-This subsection protects traders and the public from unscrupulous dealers who want to pass off a new product as someone else’sIt also protects against dilatation of the value of the trade mark by allowing others ​to use it as they likebut in different categories+__//E & J Gallo Winery v Lion Nathan Australia Pty Limited//​(([2009] FCAFC 27))__ 
 + 
 +In *[E & J Gallo Winery v Lion Nathan Australia Pty Limited](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCAFC/​2009/​27.html)* (([2009] FCAFC 27))  Gallo Winery was the registered owner of the trade mark '​Barefoot'​ in relation ​to wines in Australia. ​ Lion Nathan (Australia) started selling a specialty beer under the trade mark '​Barefoot Radler'​ from January 2008. Infringement was established ​as beer and wine were held to be goods of the same description.  
 + 
 +__//Musidor BV v Tansing (t/as Apple Music House//​(([1993] FCA 645))__ 
 + 
 +In *[Musidor BV v Tansing (t/as Apple Music House)](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1993/​645.html)(([1993] FCA 645))* concerned Musidor selling Rolling Stones bootlegs. Musidor made it plain in its advertising and get-up that the source of the origin of the goods was not authorised. Held, the disclaimer was effective to show that the goods were not related. It was held that no infringement occurred.
  
-The principles of goods and services being of the same description or closely related are largely the same as apply in the context of TMA s 44. Goods will not be of the ‘same description’ if their sale under the same mark by different companies would not be likely to lead to confusion or deception. If the public would not expect the same business to supply both of the goods and/or services, then the two are unlikely to be considered closely related.+__//Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd//​(([1996] FCA 1484))__
  
-In *E & J Gallo Winery ​Lion Nathan Australia Pty Ltd* [2009FCAFC 27,  Gallo Winery ​was the registered owner of the trade mark BAREFOOT in relation ​to wines in Australia Lion Nathan (Australia) started selling a specialty ​beer under the trade mark BAREFOOT RADLER from January 2008. Infringement ​was established as beer and wine were held to be goods of the same description+In *[Twentieth Century Fox Film Corporation ​South Australian Brewing Co Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1996/​1484.html)*, (([1996FCA 1484)) '​Duff'​ beer which disclaimed any association with The Simpsons ​was still held to amount to infringement. The disclaimer was too simplistic ​in approachThe beer was an express reference ​to The Simpsons and therefore ​the disclaimer was not effective.
  
-*Musidor BV v Tansing (t/as Apple Music House)* ​ [1993] FCA 645 concerned Musidor selling Rolling Stones bootlegs. Musidor made it plain in its advertising and get-up that the source of the origin of the goods was not authorised. Held, the disclaimer was effective to show that the goods were not related. No infringement.+### Unrelated Goods Where Trade Mark is Well-Known
  
-In *Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd* [1996] FCA 1484'​DUFF'​ beer which disclaimed any association with The Simpsons was still held to amount to infringement. The disclaimer was too simplistic in approach. The beer was an express reference ​to The Simpsons and therefore ​the disclaimer was not effective.+Trade mark infringement may occur where the defendant is using a  mark as a trade mark, which is substantially identical or deceptively similar ​to the registered mark, with respect ​to unrelated goods or services where the mark is well-known or famous((//TMA// s 120(3) )) 
  
-### Unrelated Goods Where Trade Mark is Well-Known (TMA s 120(3) +To establish this type of infringement the trade mark must be well-known in Australia; the person must use as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to or not closely related goods or services; because the trade mark is well-known, the sign must be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and for that reason, the interests of the registered owner are likely to be adversely affected.
-To establish this type of infringementthe trade mark must be well-known in Australia; the person must use as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to or not closely related goods or services; ​ because the trade mark is well-known, the sign must be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and for that reason, the interests of the registered owner are likely to be adversely affected.+
  
 To determine if a trade mark is well-known in Australia, must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason. Must be significant brand with interests in many different categories or an international company. ​ If their reputation is not large enough, if they are really a niche trader and it is unlikely a consumer would think they produced a product in a completely different category, then this is unlikely to apply. ​ The onus is on the trade mark owner. To determine if a trade mark is well-known in Australia, must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason. Must be significant brand with interests in many different categories or an international company. ​ If their reputation is not large enough, if they are really a niche trader and it is unlikely a consumer would think they produced a product in a completely different category, then this is unlikely to apply. ​ The onus is on the trade mark owner.
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 Examples of well-known trade marks: Examples of well-known trade marks:
  
 +__//​Nintendo Co Ltd v Care//​(([2000] FCA 1538))__
  
-Super Mario – the Nintendo trademark in Super Mario allowed the company to prevent a person from dressing up as Mario when wrestling (*Nintendo Co Ltd v Care* [2000] FCA 1538)+In *[Nintendo Co Ltd v Care](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2000/​1538.html)* – the Nintendo trademark in 'Super Mario' ​allowed the company to prevent a person from dressing up as Mario when wrestling. ((*Nintendo Co Ltd v Care* [2000] FCA 1538)
  
-* Virgin – obtained judgement against people trying to sell Virgin limousines or Virgin rentals. The court stressed the large investments made by Virgin in marketing and promoting the brand globally was such that if the defendant ran a Virgin ad, it was likely customers would be confused (*Virgin Enterprises Limited v Klapsas[2001] FCA 1502)+__//Virgin Enterprises Limited v Klapsas//(([2001] FCA 1502))__
  
-San Remo there was a serious question to be tried as to whether ​the use of SAN REMO on coffee machines infringed ​the (potentially) well-known trade mark for SAN REMO pasta. Note this decision ​was made with some reluctance ​(*San Remo Macaroni Company Pty Ltd San Remo Gourmet Coffee Pty Ltd* [2000] FCA 1842))+In *[Virgin Enterprises Limited v Klapsas](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2001/​1502.html)* – Virgin obtained judgement against people trying ​to sell Virgin limousines or Virgin rentals. The court stressed ​the large investments made by Virgin in marketing and promoting ​the brand globally ​was such that if the defendant ran a Virgin ad, it was likely customers would be confused. ((*Virgin Enterprises Limited ​Klapsas* [2001] FCA 1502)) 
  
 +__//San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd//​(([2000] FCA 1842))__
  
-Whether goods are unrelated or not closely related is a question of degree. The less ‘unrelated’ ​the goods or services are, the more likely that trade mark infringement will be made out.  For example, PUMA for use on beer or CADBURY for use with respect to motorcycles+In *[San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2000/​1842.html)* - there was serious ​question ​to be tried as to whether the use of SAN REMO on coffee machines infringed ​the (potentially) well-known ​trade mark for 'San Remo' pasta. Note this decision was made with some reluctance((*San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd* [2000] FCA 1842)) ​
  
-The use must indicate a connection with the owner. In *Coca-Cola Co v All-Fect Distributors Ltd* [1999] FCA 1721, the court held that cola lollies would not give rise to consumers questioning whether there was a connection between Coca-Cola and the lollies. ​ This connection can arise: 
  
 +Whether goods are unrelated or not closely related is a question of degree. The less ‘unrelated’ the goods or services are, the more likely that trade mark infringement will be made out.  For example, PUMA for use on beer or CADBURY for use with respect to motorcycles. The use must indicate a connection with the owner.
 +
 +__//​Coca-Cola Co v All-Fect Distributors Ltd//​(([1999] FCA 1721))__
 +
 +In *[Coca-Cola Co v All-Fect Distributors Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1999/​1721.html)*,​ (([1999] FCA 1721)) the court held that cola lollies would not give rise to consumers questioning whether there was a connection between Coca-Cola and the lollies.  ​
 +
 +This connection can arise:
  
 * Statutory passing off: connection based on some actual deceit or confusion – the sign indicates the goods/​services are connected with whoever owns the well-known mark with which the consumer is so familiar. ​ * Statutory passing off: connection based on some actual deceit or confusion – the sign indicates the goods/​services are connected with whoever owns the well-known mark with which the consumer is so familiar. ​
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-Finally, the owner'​s interests must be adversely affected. Usually quite easy to show harm at least by arguing their capacity to use or distinguish their items has diminished due to the defendant’s use of the mark. Makes it harder for the TM owner to expand ​it’s ​market. Harm can occur in two ways:+Finally, the owner'​s interests must be adversely affected. Usually ​it is quite easy to show harm at least by arguing their capacity to useor distinguish their items has diminished due to the defendant’s use of the mark. Makes it harder for the trade mark owner to expand ​its market. Harm can occur in two ways:
  
  
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-##General Elements of Trade Mark Infringement +## General Elements of Trade Mark Infringement
-###Use +
-Not all use constitutes trade mark infringement. A person will only infringe a trade mark if they ‘use’ a protected mark as a trade mark – this is a def must use a protected mark or very similar mark in the course of trade as an attempt to distinguish their goods or services for anothers (*Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd* (1963) 109 CLR 407). Won’t infringe if a mark is used but not to distinguish. ​ The alleged infringing trade mark must be used or intended to be used as a trade mark in the course of trade – to distinguish one person’s goods/​services from another (TMA s 17). The trade mark must be used or intended to be used physically in relation to goods or services (TMA s 7).+
  
-A registered trade mark is likely to amount to use as a mark if the manner in which it has been employed does not serve some other purpose – it is a descriptive term, it serves some functional requirement or to communicate some other message. Ordinarily, the use of an invented word or words will amount to use as a trade mark but not always – even invented word or words used out of context can be taken by consumers as suggestive of some quality other than commercial origin or descriptive to some degree. ​+### Use
  
-Kitto J in *Shell ​Co (Aust) ​Ltd v Esso Standard Oil (Aust) Ltd* [1963] HCA 66  held:  +Not all use constitutes trade mark infringement. A person will only infringe a trade mark if they ‘use’ a protected mark as a trade mark – a defendant must use a protected mark or very similar mark in the course of trade as an attempt to distinguish their goods or services for another. ((*Shell ​Company of Australia ​Ltd v Esso Standard Oil (Australia) Ltd* (1963) 109 CLR 407)) An infringement will not be made out if mark is used but not used to distinguish.  ​The alleged infringing trade mark must be used or intended ​to be used as a trade mark in the course of trade – to distinguish ​one person’s goods/​services ​from another. ((//TMA// s 17)) The trade mark must be used or intended ​to be used physically ​in relation ​to goods or services((//TMA// s 7))
->​‘[T]he purpose and the only purpose that can be seen in the appearance of the little man on the screen is that which unites the quickly moving series of pictures as whole, namely the purpose of conveying by a combination of pictures and words a particular message about the qualities of Shell petrol.  ​This fact makes it … quite certain that no viewer would ever pick out any of the individual scenes … and say to himself: “There I see something that the Shell people are showing me as being a mark by which I may know that any petrol ​in relation ​to which I see it used is theirs. ​ And one may fairly affirm with even greater confidence that the viewer would never infer from the films that every one of the forms which the oil drop figure takes appears there as being a mark which has been chosen ​to serve the specific purpose of branding petrol ​in reference ​to its origin.”’ ​+
  
-In *Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd* [1991] FCA 310, it was held that J&J had only used CAPLETS ​in a descriptive ​sense as to shape and dosage and not as indicative ​of origin or identity.+A registered trade mark is likely to amount to use as a mark if the manner ​in which it has been employed does not serve some other purpose – it is a descriptive ​term, it serves some functional requirement or to communicate some other message. Ordinarily, the use of an invented word or words will amount to use as a trade mark but not always – even an invented word or words used out of context can be taken by consumers ​as suggestive ​of some quality other than commercial ​origin or descriptive to some degree
  
 +__//Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd//​(([1963] HCA 66))__
  
-**Annabel Burton - Use as a TM and Johnson & Johnson** +Kitto J in *Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltdheld:​(([1963] HCA 66))
- ​{{youtube>​fO5T1o9Yl9E?​small}}+
  
 +>[T]he purpose and the only purpose that can be seen in the appearance of the little man on the screen is that which unites the quickly moving series of pictures as a whole, namely the purpose of conveying by a combination of pictures and words a particular message about the qualities of Shell petrol. ​ This fact makes it … quite certain that no viewer would ever pick out any of the individual scenes … and say to himself: “There I see something that the Shell people are showing me as being a mark by which I may know that any petrol in relation to which I see it used is theirs. ​ And one may fairly affirm with even greater confidence that the viewer would never infer from the films that every one of the forms which the oil drop figure takes appears there as being a mark which has been chosen to serve the specific purpose of branding petrol in reference to its origin.
  
-In *Top Heavy Killin* ​(199634 IPR 282, the words CHILL OUT were not indications of the provenance of the T-shirts. The message which the mark conveyed in general terms is an exhortation to the reader to relax. Coca-Cola could thus not assert trade mark infringement.+__//Johnson & Johnson Australia Pty Ltd Sterling Pharmaceuticals Pty Ltd//(([1991] FCA 310))__
  
-In *Mark Foy’s ​Ltd v Davies Co-op Co Ltd* [1956HCA 41, Williams J held that the trade mark TUB HAPPY was capable of registration. He said: +In *[Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1991/​310.html)*, (([1991FCA 310)) it was held that Johnson & Johnson had only used '​caplets' ​in a descriptive sense as to shape and dosage and not as indicative ​of origin ​or identity.
->‘Any reference that the words TUB HAPPY have to the character or quality of articles of clothing is very remote. ​ They are in the nature of coined phrase. ​ Inanimate objects including articles ​of clothing cannot have the character ​or quality of happiness whether they are in a tub or not.+
  
-Since TUB HAPPY was not being used to describe the qualities of the product (washability,​ freshness, cheapness), it could be registered as a trade mark. 
  
-###​Substantial Identity and Deceptive Similarity +**Video overview by Annabel Burton on [Use as a Trade Mark and Johnson & Johnson](https://​www.youtube.com/​watch?​v=fO5T1o9Yl9E)**
-These phrases mean the same thing as outlined for trade mark registration.+
  
-Substantially identical requires a side by side comparison, having regard to the similarities and difference between the essential features ​(*Shell Co (Aust) Ltd v Esso Standard Oil (AustLtd* [1963] HCA 66] ). Deceptive similarily involves trade marks that so nearly resemble each other that they are likely to deceive or cause confusion (TMA s 10)+__//Top Heavy v Killin//(( (199634 IPR 282))__
  
-In *Mars Australia Pty Ltd Sweet Rewards Pty Ltd[2009] FCA 606, the registered trade marks, label and words MALT BALLS were sufficiently different from MALTEASERS, and purely descriptive.+In *Top Heavy Killin*, (( (1996) 34 IPR 282)) the words 'Chill out' ​were not indications of the provenance of the T-shirts. The message which the mark conveyed in general terms is an exhortation to the reader to relax. Coca-Cola could thus not assert trade mark infringement.
  
 +__//Mark Foy’s Ltd v Davies Co-op Co Ltd//​(([1956] HCA 41))__
  
-**Sarah Griffin-Breen on Deceptive Similarity** +In *[Mark Foy’s Ltd v Davies Co-op Co Ltd](http://​www7.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1956/​41.html)*, (([1956] HCA 41)) Williams J held that the trade mark 'Tub Happy' was capable of registration. He said:
- ​{{youtube>​OVYsCnRN1RM}}+
  
 +>‘Any reference that the words 'Tub Happy' have to the character or quality of articles of clothing is very remote. ​ They are in the nature of a coined phrase. ​ Inanimate objects including articles of clothing cannot have the character or quality of happiness whether they are in a tub or not.’
  
-##​Types ​of Trade Mark Dilution +Since 'Tub Happy' was not being used to describe the qualities ​of the product (washabilityfreshnesscheapness), it could be registered as a trade mark.
-Dilution in the United States and European Union does not require confusion between two trade marks. Insteadblurring and tarnishment will amount to dilution. The Australian infringement provisions bear more similarity to passing offand there is no explicit or clear link to dilution.+
  
-###Blurring  +### Substantial Identity ​and Deceptive Similarity
-Results from the unauthorised use of a trade mark which mars the selling power of that trade mark. For example dilution by blurring might occur when the trade mark KODAK is used with respect to motorcycles or the trade mark CADBURY is used with respect to chainsaws. ​ See for example *Eastman Photographic Materials Co Ltd v John Griffiths Cycle Corp Ltd and Kodak Cycle Co Ltd, Re Trade Mark No 207006 15 RPC 105*. +
  
-###​Tarnishment +The phrases '​substantial identity'​ and '​deceptive similarity'​ hold the same meaning as outlined ​in the previous chapterTrade Mark Registration.
-Occurs when the use of a trade mark results ​in the tainting or downgrading of the positive associations the trade mark has come to convey. ​ Often it will occur when a trade mark is linked to products of inferior quality or products of an immoral or unwholesome character or where the trade mark is portrayed in an unsavoury context likely to evoke negative thoughts about the trade mark owner. ​ See for example *Toys ‘R Us Inc v Akkaoui* (40) USPQ 2d 1836 (ND Cal1996).+
  
-###​Anti-dilution provision?​ +Substantially identical requires ​side by side comparison, having regard ​to the similarities and difference between the essential features((*Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[1963] HCA 66])) Deceptive similarity involves trade marks that so nearly resemble each other that they are likely to deceive or cause confusion. ​((//TMA// s 10))
-Courts tend to dislike this and try to apply this as form of consumer protection rather than an avenue for companies ​to protect their brand value. ​ The requirement of connection can be read down so that it doesn’t provide protection where there is no likelihood of confusion. ​ If this happens then can’t think of as anti-dilution. However ​the correct characterisation – consumer protection vs anti-dilution is still being debatedIn the *Nike Perfumecase, the High Court said it was important to weigh competing interests carefully – ensure consumers aren’t deceived but also allowing them to access competition. Suggests courts will be reluctant to block uses of marks that are not likely to cause confusion ​where the category is so different from where the TM in question is not used+
  
-## Prohibition of certain acts (TMA s 121)+__//Mars Australia Pty Ltd v Sweet Rewards Pty Ltd//(([2009] FCA 606))__
  
-Under section 121 TMA a trade mark owner may prohibit certain acts in relation to the use of the trade mark and the doing of any of these acts in the course of trade also constitutes trade mark infringementThis provision operates if the registered owner of the trade mark has caused to be displayed on the registered goods a *notice of prohibition* as to any of the following matters:+In *[Mars Australia Pty Ltd v Sweet Rewards Pty Ltd](http://​www7.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2009/​606.html)*,​ (([2009] FCA 606)) the registered ​trade marks, label and words 'Malt Balls' were sufficiently different from '​Malteasers',​ and purely descriptive.
  
  
-Applying the trade mark to the goods, or using the trade mark in physical relation to the goods, after the state, condition, get-up or packaging in which they were originally offered to the public has been altered; ​+**Video overview by Sarah Griffin-Breen on [Deceptive Similarity](https://​www.youtube.com/​watch?​v=OVYsCnRN1RM)**
  
-* Altering, or partially removing or obliterating,​ any representation of the trade mark applied to registered goods or used in physical relation to them;  ​ 
  
-* Removing the trade mark without also removing associated material;  ​ + 
-  +## Types of Trade Mark Dilution 
-* Applying another trade mark the registered goods or using another trade mark in physical relation to them; or  ​ + 
-  +Dilution in the United States and European Union does not require confusion between two trade marks. Instead, blurring and tarnishing will amount to dilution. The Australian infringement provisions bear more similarity to passing off, and there is no explicit or clear link to dilution. 
-* Using the trade mark on registered goods or in physical relation to them in a manner which would injure the reputation of the trade mark.  ​+ 
 +### Blurring  
 + 
 +Blurring is the result of the unauthorised use of a trade mark which mars the selling power of that trade mark. For example dilution by blurring might occur when the trade mark '​Kodak'​ is used with respect to motorcycles or the trade mark '​Cadbury'​ is used with respect to chainsaws. ((See for example *Eastman Photographic Materials Co Ltd v John Griffiths Cycle Corp Ltd and Kodak Cycle Co Ltd, Re Trade Mark No 207006 15 RPC 105*))  
 + 
 +### Tarnishment 
 + 
 +Occurs when the use of a trade mark results in the tainting or downgrading of the positive associations the trade mark has come to convey. ​ Often it will occur when a trade mark is linked to products of inferior quality or products of an immoral or unwholesome character or where the trade mark is portrayed in an unsavoury context likely to evoke negative thoughts about the trade mark owner. ((See for example *Toys ‘R Us Inc v Akkaoui* (40) USPQ 2d 1836 (ND Cal, 1996) )) 
 + 
 +### Anti-dilution 
 + 
 +Courts tend to dislike anti-dilution provisions and favour the use of consumer protection. The requirement of connection can be read down so that it doesn’t provide protection where there is no likelihood of confusion. ​ If this happens, then the situation will not be considered a form of anti-dilution. The correct characterisation – consumer protection vs anti-dilution is still being debated. In the *Nike Perfume* case, the High Court said it was important to weigh competing interests carefully – ensure consumers aren’t deceived but also allowing them to access competition. The court will be reluctant to block uses of marks that are not likely to cause confusion where the category is so different from where the trade mark in question is not used.  
 + 
 +## Prohibition of Certain Acts  
 + 
 +Under section 121 //TMA// a trade mark owner may prohibit certain acts in relation to the use of the trade mark and the doing of any of these acts in the course of trade also constitutes trade mark infringement. This provision operates if the registered owner of the trade mark has caused to be displayed on the registered goods a *notice of prohibition* as to any of the following matters: 
 + 
 +  * Applying the trade mark to the goods, or using the trade mark in physical relation to the goods, after the state, condition, get-up or packaging in which they were originally offered to the public has been altered; 
 +  * Altering, or partially removing or obliterating,​ any representation of the trade mark applied to registered goods or used in physical relation to them; 
 +  ​* Removing the trade mark without also removing associated material; 
 +  * Applying another trade mark to the registered goods or using another trade mark in physical relation to them; or 
 +  * Using the trade mark on registered goods or in physical relation to them in a manner which would injure the reputation of the trade mark.  ​
    
  
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 ## Defences to Trade Mark Infringement ## Defences to Trade Mark Infringement
-For TMA s 120(2) and (3), there is no infringement where the trade mark is used in related goods or services where there is no likelihood of confusion. This is an informal defence. 
  
-###TMA s 122 Defences+According to the //TMA// 120(2) and (3), there is no infringement where the trade mark is used in related goods or services where there is no likelihood of confusion. This is an informal defence. 
 + 
 +Defences ​to trade mark infringement are found in s 122 of the //TMA//. The table below outlines each of these. ​
  
 ^ Section ^ Defence ^ ^ Section ^ Defence ^
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-Craig Sherritt on the comparative advertising defence +** Video overview by Craig Sherritt on [The Comparative Advertising Defence](https://​www.youtube.com/watch?v=mKiifGrx1V8)**
-{{youtube>​mKiifGrx1V8?small}}+
  
  
  
  
-Natalie Cruickshanks on TM spare parts defence: ​http://​voice.adobe.com/​v/​NHDUraYrgxQ+**Video overview by Natalie Cruickshanks on [Trade Mark Spare Parts Defence](http://​voice.adobe.com/​v/​NHDUraYrgxQ)**
  
  
  
-The s 122(1)(c) ​spare parts and accessories defence - Andrew Avenell +**Video overview by Andrew Avenell on [The s 122(1)(c) ​Spare Parts and Accessories Defence](https://​www.youtube.com/watch?v=wPJNLX_5fNc)**
-{{youtube>​wPJNLX_5fNc?small}}+
  
  
  
-In the above sections, 'good faith' means an absence of ulterior motive (*Angoves Pty Ltd v Johnson* (1982) 43 ALR 349)Absence of good faith cannot be inferred merely from striking ​similiarity ​between the two marks (*Geoffrey Inc v Luik*  (1997) 38 IPR 555)  Use of the trade mark cannot be calculated to divert business from the registered trade mark owner or to confuse customers as to the origin of goods. ​+In the above sections, 'good faith' means an absence of ulterior motive. ((*Angoves Pty Ltd v Johnson* (1982) 43 ALR 349)Absence of good faith cannot be inferred merely from striking ​similarity ​between the two marks. ((*Geoffrey Inc v Luik*  (1997) 38 IPR 555)  Use of the trade mark cannot be calculated to divert business from the registered trade mark owner or to confuse customers as to the origin of goods. ​
  
  
-**Abigail Hill explains the good faith defence ​in s 122 (1)(b)** +**Video overview by Abigail Hill on [The Good Faith Defence ​in s 122 (1)(b)](https://​www.youtube.com/watch?v=vqDWy9e7XAs)**
- {{youtube>​vqDWy9e7XAs?small}}+
  
  
 +**Video overview by Shelby McGreachan on [The Good Faith Use of Own Name](https://​www.youtube.com/​watch?​v=xqxoZgsN2Cw)**
  
-Shelby McGreachan on Good faith use of own name 
-{{youtube>​xqxoZgsN2Cw?​small}} 
  
  
 +### Consent
  
-###​Consent ​(TMA s 123)+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 trade mark owner. ​((//TMA// s 123)
  
-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 byor with the consent of, the registered trade mark owner+This does not apply to //TMA// s 120(3). For exampleif goods are either purchased overseas and imported ​or are second hand goods, ​then cannot infringe as you have paid for it and obtained ​consent ​because owners ​of goods can use goods in this way. Ensures owners can't get a bigger monopoly. This is specifically included to allow parallel importing and second hand markets.
  
-This does not apply to TMA s 120(3). For example, if goods are either purchased overseas and imported or are second hand goods, then cannot infringe as you have paid for it and obtained consent because owners of goods can use goods in this way. Ensures owners can't get a bigger monopoly. This is specifically included to allow parallel importing and second hand markets. 
  
 +**Video overview by Alex Trezise on [Section 123 of the Trade Marks Act](https://​www.youtube.com/​watch?​v=UyGxR4a9z3I)**
  
-**Alex Trezise on section 123** 
- ​{{youtube>​UyGxR4a9z3I}} 
  
  
 +### Prior Use
  
-###Prior Use (TMA s 124) +If a person has used a sign that is deceptively similar or substantially identical to the registered trade mark and they have been using concurrently for a periodat least before the filing date of the trade mark application,​ then they wont be infringing. ((//TMA// s 124)) This is equivalent to //TMA// s 44(4) honest concurrent use provisions.
- This is equivalent to TMA s 44(4) honest concurrent use provisions.  ​If a person has used a sign that is deceptively similar or substantially identical to the registered trade mark and they have been using concurrently for a period at least before the filing date of the trade mark application,​ then wont be infringing. ​+
  
-Registration of a trade mark is not necessary. But if you don’t register a trade mark, other people might be able to in some circumstances,​ especially if you don’t object, register your mark or a deceptively similar or substantially identical mark for the same or similar categories. ​ If this happens defence of prior concurrent use will apply so that the person who was using the mark before the date the registered trade mark was filed, they can continue to use. +Registration of a trade mark is not necessary. But if you don’t register a trade mark, other people might be able to (in some circumstances), especially if you don’t object, register your mark or a deceptively similar or substantially identical mark for the same or similar categories. ​ If this happens defence of prior concurrent use will apply so that the person who was using the mark before the date the registered trade mark was filed, they can continue to use. 
  
-Limitations:​ Trading ​under a particular name but only in business. ​Can keep using but may only be allowed to keep using where the reputation exists ​– here in Brisbane ​and cant expand the business beyond. ​+There are limitations on the prior use provision. This includes instances where a person is trading ​under a particular name but only in business. ​The person ​may be allowed to keep using where the reputation exists. For instance, if the reputation exists only in Brisbane ​Australia, the mark can'be used to expand the business beyond. ​
  
-##​Rectification ​(TMA s 88) +## Rectification
-Video overview by Nicolas Suzor on [grounds for rejection, opposition or rectification](https://​www.youtube.com/​watch?​v=au3mOq9Abrg&​list=PLa0bKPnUKQrzadmRvIQclmAWk9Wmg1a0P&​index=6).+
  
-Under TMA s 88(2), an aggrieved person or the Registrar can apply to the Court for an order that the register be rectified on the following grounds:+Under //TMA// s 88(2), an aggrieved person or the Registrar can apply to the Court for an order that the register be rectified on the following grounds:
  
  
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 Under s 88(1), if one of these grounds is satisfied, the court can cancel the registration of the trade mark, remove or amend the entry wrongly main or remaining on the Register, or enter any condition or limitation affecting the registration of the trade mark that ought to be entered. Under s 88(1), if one of these grounds is satisfied, the court can cancel the registration of the trade mark, remove or amend the entry wrongly main or remaining on the Register, or enter any condition or limitation affecting the registration of the trade mark that ought to be entered.
  
-In spite of section 120, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark (TMA s 122(2)). 
  
 +**Video overview by Nicolas Suzor on [Grounds for Rejection, Opposition or Rectification](https://​www.youtube.com/​watch?​v=au3mOq9Abrg&​list=PLa0bKPnUKQrzadmRvIQclmAWk9Wmg1a0P&​index=6)**
  
-**Corrine Leach on s 88** 
- ​{{youtube>​PLKbSmhihUs?​small}} 
  
  
 +In spite of s 120, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark. ((//TMA// s 122(2) ))
  
  
-**Jessica Hine on 88** +**Video overview by Corrine Leach on [Section ​88 of the Trade Marks Act](https://​www.youtube.com/​watch?​v=PLKbSmhihUs)** 
- {{youtube>​7S5xyWwKB5M?small}}+ 
 + 
 + 
 + 
 + 
 +**Video overview by Jessica Hine on [Section 88 of the Trade Marks Act](https://​www.youtube.com/watch?v=7S5xyWwKB5M)** 
  
  
  
 ## Cross Claims to Trade Mark Infringement ## Cross Claims to Trade Mark Infringement
-If trade mark infringment under TMA s 120(1), (2) or (3) is claimed, the defendant can make the following cross-claims:​ 
  
 +If trade mark infringement under //TMA// s 120(1), (2) or (3) is claimed, the defendant can make the following cross-claims:​
  
-* Not substantially identical with or deceptively similar to the registered trade mark;  
  
-No use as a trade mark – E.g. *The Panadol Case*, *The Esso Man Case* +That the trade mark is not substantially identical with or deceptively similar to the registered ​trade mark; 
  
-TMA s 122 defences to infringment ​**;  ​+That there has been no use as a trade mark – E.g. *The Panadol Case*, *The Esso Man Case*;  ​
  
-Consent (TMA 123)+A defence to infringement found in 122 of the //TMA// 
  
-Prior Use (TMA s 124)+Consent; ​((//TMA// 123)
  
-The plaintiff’s trade mark is not valid – cross claim for rectification or removal ​(TMA s 88);  ​+Prior Use; ((//TMA// 124)
  
-* The plaintiff'registered ​trade mark is generic ​(TMA s 87)+* The plaintiffs trade mark is not valid – cross claim for rectification or removal; ​((//TMA// 88))  ​
  
-* The plaintiff'​s mark contravened a limitation or condition ​(TMA s 86);  ​+* The plaintiff'​s ​registered trade mark is generic; ​((//TMA// 87)
  
-Removal for non-use ​(TMA s 92) +The plaintiff'​s mark contravened a limitation or condition;((//TMA// 86)) and  
  
 +* Removal for non-use. ((//TMA// s 92))  ​
  
-Further, the following claims can also be made in TMA s 120(2) infringement cases: + 
-  * The defendant'​s use of the mark is not likely to deceive or cause confusion (TMA s 10);+Further, the following claims can also be made in //TMA// s 120(2) infringement cases: 
 + 
 +  * The defendant'​s use of the mark is not likely to deceive or cause confusion((//TMA// s 10))
   * The defendant'​s use of the mark is not n relation to goods or services of the same description or goods or services that are closely related to the goods or services for which the mark is registered with respect to.   * The defendant'​s use of the mark is not n relation to goods or services of the same description or goods or services that are closely related to the goods or services for which the mark is registered with respect to.
  
  
-Velcro'​s advertisement explains ​the dangers ​of genericide ​for an established brand +**Velcro'​s advertisement explains ​[The Dangers ​of Genericide ​for an Established Brand](https://​www.youtube.com/​watch?​v=rRi8LptvFZY)**
-{{youtube>rRi8LptvFZY}}+
  
  
  
-Stephanie Derrington on genericide 
-{{youtube>​Z92wy-deVG0?​small}} 
  
 +**Video overview by Stephanie Derrington on [Genericide](https://​www.youtube.com/​watch?​v=Z92wy-deVG0)**
  
  
-Ayaka Nakashima Edwards on genericide + 
-{{youtube>​Z6Xm3tNJ7xc?small}}+**Video overview by Ayaka Nakashima Edwards on [Genericide](https://​www.youtube.com/watch?v=Z6Xm3tNJ7xc)** 
  
  
  
 ## Remedies ## Remedies
-TMA s 126 gives a right to an injunction on any conditions the Court thinks fit, an election between damages (if harm) or an account of profits (if enriched by use of the trade mark) and additional damages where appropriate. 
  
-Where there has been trade mark infringement and the defendant has applied to remove the trade mark under TMA s 92 and the court finds that the trade mark has not been used during the critical period ​ in good faith by the registered owner and there are grounds for removing the trade mark the court may not grant relief to the plaintiff by way of damages or an account of profits in respect of any trade mark infringement that has occurred during the critical period (TMA s 127).+There are a number of remedies available in trade mark infringement cases. Section 126 of the //TMA// provides a right to an injunction on any conditions the Court thinks fit, an election between damages (if harm) or an account of profits (if enriched by use of the trade mark) and additional damages where appropriate. 
 + 
 +Where there has been trade mark infringement and the defendant has applied to remove the trade mark under //TMA// s 92 and the court finds that the trade mark has not been used during the critical period in good faith by the registered owner and there are grounds for removing the trade mark the court may not grant relief to the plaintiff by way of damages or an account of profits in respect of any trade mark infringement that has occurred during the critical period (//TMA// s 127).
  
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