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ausip:trade-mark-infringement [2019/02/25 15:32]
jessiej_87
ausip:trade-mark-infringement [2019/03/10 13:31] (current)
jessiej_87
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 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. ​ 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. ​
  
-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))+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).** **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).**
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 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. 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.
  
-__E & J Gallo Winery v Lion Nathan Australia Pty Limited__+__//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. ​ 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__+__//​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. 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.
  
-__Twentieth ​Century Fox Film Corporation v South Australian Brewing Co Ltd__+__//​Twentieth ​Century Fox Film Corporation v South Australian Brewing Co Ltd//​(([1996] FCA 1484))__
  
 In *[Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1996/​1484.html)*,​ (([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. In *[Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1996/​1484.html)*,​ (([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.
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 Examples of well-known trade marks: Examples of well-known trade marks:
  
-__Nintendo ​Co Ltd v Care__+__//​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)) ​ 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 ​Enterprises Limited v Klapsas__+__//​Virgin ​Enterprises Limited v Klapsas//​(([2001] FCA 1502))__
  
 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 v Klapsas* [2001] FCA 1502)) ​ 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 v Klapsas* [2001] FCA 1502)) ​
  
-__San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd__+__//​San ​Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd//​(([2000] FCA 1842))__
  
-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 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 v San Remo Gourmet Coffee Pty Ltd* [2000] FCA 1842)) +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 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 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. The use must indicate a connection with the owner. 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__+__//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.  ​ 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.  ​
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 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. ​ 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__+__//​Shell ​Co (Aust) Ltd v Esso Standard Oil (Aust) ​Ltd//​(([1963] HCA 66))__
  
 Kitto J in *Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd* held:​(([1963] HCA 66)) Kitto J in *Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd* held:​(([1963] HCA 66))
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 >[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. >[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.
  
-__Johnson ​& Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd__+__//​Johnson ​& Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd//​(([1991] FCA 310))__
  
 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)*,​ (([1991] FCA 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. 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)*,​ (([1991] FCA 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.
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 **Video overview by Annabel Burton on [Use as a Trade Mark and Johnson & Johnson](https://​www.youtube.com/​watch?​v=fO5T1o9Yl9E)** **Video overview by Annabel Burton on [Use as a Trade Mark and Johnson & Johnson](https://​www.youtube.com/​watch?​v=fO5T1o9Yl9E)**
  
-__Top Heavy v Killin__+__//​Top ​Heavy v Killin//(( (1996) 34 IPR 282))__
  
 In *Top Heavy v 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. In *Top Heavy v 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__+__//​Mark ​Foy’s Ltd v Davies Co-op Co Ltd//​(([1956] HCA 41))__
  
 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: 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:
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 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 (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)) 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 (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))
  
-__Mars ​Australia Pty Ltd v Sweet Rewards Pty Ltd__+__//​Mars ​Australia Pty Ltd v Sweet Rewards Pty Ltd//​(([2009] FCA 606))__
  
 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. 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.
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-** Video overview by Craig Sherritt on [The Comparative Advertising Defence](https://​www.youtube.com/​watch?​v=mKiifGrx1V8_**+** Video overview by Craig Sherritt on [The Comparative Advertising Defence](https://​www.youtube.com/​watch?​v=mKiifGrx1V8)**
  
  
  • ausip/trade-mark-infringement.txt
  • Last modified: 6 months ago
  • by jessiej_87