Trade mark disputes are common in the business world, often arising when two entities claim ownership over deceptively similar or substantially identical marks used to distinguish their goods or services in the market. These disputes can lead to costly legal battles and disrupt business operations. In Australia, recent developments in trade mark law aim to provide more explicit guidelines for determining trade mark infringement.
UNDERSTANDING TRADE MARK DISPUTES
Trade mark disputes typically arise in the following scenarios:
TRADE MARKS OPPOSITION
When two or more entities use deceptively similar or substantially identical trade marks for their goods or services, confusion among consumers may occur, leading to disputes over ownership and infringement. A party may challenge the validity of the other party’s trade mark registration by questioning its distinctiveness or infringement of the other party’s prior rights. Alternatively, a party may oppose a trade mark application by alleging it conflicts with its prior rights.
TRADE MARK INFRINGEMENT
In Australia, trade mark infringement occurs when a third party unlawfully uses a trade mark that is identical or deceptively similar to a registered trade mark in connection with goods or services without the owner’s consent. The use of such a mark can lead to confusion among consumers, dilution of brand value, and unfair competition. In accordance with section 120(1) of the Trade Marks Act 1995 (Cth) (TMA), a registered trade mark is infringed when a person uses a trade mark/a sign that is substantially identical with, or deceptively similar to, the trade mark concerning goods or services by which the trade mark is registered. Thus, a trade mark registration confers the owner exclusive rights to use the trade mark.
PASSING OFF
This occurs when a party misrepresents its goods or services as those of another, leading to confusion among consumers and potentially damaging the reputation or goodwill associated with the original mark.
RESOLUTION MECHANISMS
Trade mark disputes can be resolved through various mechanisms, including negotiation, mediation, arbitration, or litigation. In Australia, the Federal Court of Australia handle trade mark disputes. The resolution process may involve:
CEASE AND DESIST LETTERS/ LETTERS OF DEMAND
Often the first step in resolving a trade mark dispute involves sending a cease and desist letter (letter of demand) to the alleged infringer, requesting them to stop using the mark in question.
OPPOSITION PROCEEDINGS
Before the registration of a trade mark, interested parties can oppose its registration with IP Australia. This allows parties to resolve disputes over conflicting trade marks before they are officially registered.
CANCELLATION OR INVALIDATION PROCEEDINGS
Registered trade marks can be challenged through cancellation or invalidation proceedings if there are grounds to believe that the registration was made in error or invalid due to factors such as lack of distinctiveness, genericness, or non-compliance with registration requirements.
LITIGATION
If disputes cannot be resolved through negotiation or alternative dispute resolution methods, parties may resort to litigation in the Federal Court of Australia to enforce their trade mark rights.
NEW CASE LAW
The recent High Court decision of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 established that ‘reputation’ held by a trade mark ‘should not be taken into account when assessing deceptive similarity’ in determining trade mark infringement under section 120(1) of the TMA once the trade mark has entered the register of trade marks.
It was held that in determining whether a mark infringes on the pre-existing mark under section 120(1) of the TMA (for example, deceptive similarity), a court must focus solely on evidence of the use or intended use as a trade mark (eg, mere reference is insufficient) in the marketplace by the two marks and determine whether the ordinary reasonable consumer would ‘wonder or be left in doubt about whether the two sets of products … come from the same source’.
DEFENCE AND LEGAL ASSISTANCE
Possible defences of trade mark infringement claims may include demonstrating non-infringement, non-use, prior use, explicit consent, and fair use in good faith or acquiescence.
If you are in a trade mark dispute, please collect as much evidence as possible and contact The IP House Lawyers, who have assisted, advised, defended and negotiated for clients in their trade mark disputes for over 20 years.
For any further information or queries on the above content, please contact us.
The Author
Jean Kallmyr | Lawyer, The IP House Lawyers | t: 0435 799 831 | e: admin@theiphouse.com.au
Key Contact
Claire Darby | Managing Director/Lawyer, The IP House Lawyers | t: 0412 998 951 | e: claire@theiphouse.com.au
Disclaimer
The information and contents of this publication do not constitute any legal or financial advice. This publication is intended only for reference purposes for The IP House Lawyers’ clients and prospective clients.
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