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

Reputation is also relevant in determining whether the trade mark is capable of
distinguishing the applicant’s goods or services (s 41 of TMA).
Section 41
The issue of reputation may be relevant to the issue of determining whether a
mark has acquired distinctiveness.
Section 42(b)
Although section 42(b) is rarely invoked by the Trade Marks Office in the
registration process, use of a trade mark will be contrary to law if it would
constitute misleading or deceptive conduct contrary to section 18 of the
Australian Consumer Law (ACL), or the making of false or misleading
statements contrary to s 29 of the ACL, or passing off.
Australian Consumer Law: In considering whether a case of
misleading or deceptive conduct or passing off would be made out, the
court will consider whether the applicant has established a reputation in
the marks which would be appropriated by the respondent. Recent case
law indicates that in determining whether use of a mark will breach the
ACL, the court will consider whether a significant proportion of the
general public will be confused by the use, not whether the target market
for the impugned product will be confused (although reputation and
confusion amongst the target market may suffice to establish sufficient
reputation and deception among the general public). 1
Section 44
Passing Off: In considering whether use of a mark would constitute
passing off, the party asserting its reputation must establish that it had
the requisite reputation in the name or goods in the jurisdiction and that
there is a likelihood of deception among consumers or potential
consumers resulting from the respondent’s actions. This test appears to
be directed at assessing the reputation amongst relevant consumers, not
the general public. 2
In determining substantial identity or deceptive similarity under s 44, it appears
from references to “judicial notice” and “consumers generally” in the case law
that the relevant reputation must be among the general public at large for a mark
to be considered “notoriously ubiquitous”. 3
1
Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 (Hansen).
2
This requires an applicant to prove that there are, within the relevant jurisdiction, a substantial number of persons
who were aware of the applicant’s name or product and are possible consumers. It is necessary to show in a
practical and business sense a sufficient reputation in the forum and this requires an evaluation of the size and
distribution of the population of prospective consumers likely to be affected. See ConAgra Inc v McCain Foods
(Aust) Pty Ltd [1992] FCA 159 and the discussion in Hansen (ibid).
3
“Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken ...
[the element of the applied for mark] cannot be assessed without a recognition of its notorious familiarity to
consumers.”: Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J) (Woolworths). In
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