Question Q234 National Group: Australia Title: Relevant ... - AIPPI

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II. Proposals for Harmonisation Is harmonisation desired? If yes, please respond to the following questions Yes, harmonisation is desirable. 1) Is the general public at large or a particular sector of the public that should be considered as the relevant public in determining the knowledge, recognition or fame of a mark? In order to determine whether a mark “is a mark with a reputation”, reference should be had to the sector of the public which consumes the relevant goods/services. However, in determining whether a mark is a “well-known” or “famous” mark, the mark should be known or recognised by the general public. This should be a separate enquiry to whether use of the mark would be misleading or deceptive or confusing. 2) Please briefly set out the criteria to be used when establishing the relevant public for determining the degree of recognition of famous marks, well-known marks and marks with a reputation. For “marks with a reputation”, the relevant public should be based on: the nature of the goods/services offered under or in relation to the reputed mark (particularly whether they are goods/services that are purchased by the general public or by a small section of the public, the trade channels for the goods/services, whether similar companies engage in brand extension etc); and the way in which the goods/services are marketed (particularly advertising expenditure and promotional activities, but also, if such evidence is led, the target audience of advertising/marketing campaigns). As noted above, for “well-known” or “famous” marks, the relevant public should be the general public (construed by reference to reasonable members of the general public). 3) Should the relevant public be construed differently for famous marks, well-known marks or marks with a reputation? If so, please define the terms used and describe what criteria is to be used for the different types of marks. If the protection afforded to a “famous” or “well-known” mark is broader than that extended to a mark with a “reputation” (as suggested above), the criteria for a “famous” or “well-known” mark should be different than the criteria for a mark with a “reputation”, and should be based on reputation among the general public. 4) Would it possible or desired to establish a test or a specific method of establishing the relevant public or should this be done on a case-by-case assessment? How should the test or analysis be made? 8747904/3 page 10
A case by case approach is most appropriate. III. Other Comments N/A Summary Australian trade mark law recognises marks with “notorious ubiquity”, “well-known” marks and marks “with a reputation in Australia”. A mark is a “notoriously ubiquitous” mark if it is “notoriously familiar” amongst the general public at large. A “notoriously ubiquitous” mark is not likely to be confusingly similar to another mark because of its reputation — this can be useful in the registration and opposition (brand extension) contexts, but harmful for proprietors of “notoriously ubiquitous” marks seeking to prove infringement. Section 60 of the Trade Marks Act allows a person to oppose the registration of a trade mark if it is confusingly similar to a mark that has “acquired a reputation in Australia”. This reputation must be proved “in respect of particular goods or services” for which the opposed mark is to be registered, and needs to be amongst a “significant” or “substantial” number of people or potential customers. The relevant public is assessed on a case-by-case basis, as the determination of the number of potential customers and the members of the field of potential customers (which can include business/professional end consumers and people in the trade) is dependent on the nature of the relevant goods and services. A niche reputation is therefore sufficient in some circumstances. Section 120(3) allows the owner of a registered trade mark that is “well-known in Australia” to bring an infringement action against a person who uses as a trade mark a substantially identical or deceptively similar sign in respect of unrelated goods or services. Section 120(4) specifically states that a mark may be well-known within “the relevant sector of the public”. There is currently no authoritative guidance on what is meant by “the relevant sector of the public”. Under the Australian Consumer Law, the plaintiff must establish that a significant proportion of the general public know the plaintiff’s mark and would be misled or deceived by the defendant’s use of it. Under the tort of passing off, the plaintiff must establish that the potential consumers of the defendant’s products would be misled or deceived by the defendant’s conduct because of the reputation of the plaintiff’s mark. 8747904/3 page 11
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Question Q234 National Group: Australia Title: Relevant ... - AIPPI

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