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

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confuse the famous mark “Maltesers” for confectionary products with the mark “Malt Balls” for the same products. 10 Infringement Reputation is specifically relevant in assessing infringement under section 120(3) of the TMA, but it is also relevant in relation to determining whether the infringing mark is “deceptively similar” to the registered mark (as discussed above in relation to opposition). Section 120(3) Section 120(3) provides that a person infringes a registered trade mark if: the trade mark is well known in Australia; the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to the trade mark in relation to: goods that are not of the same description as that of the goods in respect of which the trade mark is registered or are not closely related to services in respect of which the trade mark is registered; or services that are not of the same description as that of the registered services or are not closely related to registered goods; and because the trade mark is well known, the sign would 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. Section 120(4) of the TMA provides that in deciding whether a trade mark is well known in Australia, one 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. Other causes of action (including cancellation) An owner of a mark with reputation or a well known mark may apply to cancel other trade marks under s 88(2) (which provides inter alia that marks can be cancelled on any ground on which they could be opposed, or because use of the trade mark is likely to deceive or cause confusion because of the circumstances applying at the time when the application for rectification is filed). 11 An owner of a well known mark or reputed mark may also bring an action under the ACL or for passing off (including in relation to unregistered marks). 10 Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606, [97]. 11 We note that the ACL and passing off claims are the only protections available for the infringement of unregistered marks with a reputation in Australia. 8747904/3 page 4
2) Please clarify whether your jurisdiction uses several of the terms discussed in sections 22–26. If so, is the “relevant public” construed differently when determining the recognition of famous marks, well-known marks and marks with reputation respectively (and, if applicable, marks subject to another term)? Is the assessment made based on the same criteria? Australian trade mark law makes use of the following terms in the following contexts: Registration: Case law provides that if a mark has achieved notorious ubiquity or familiarity it may be registered even if there are earlier similar marks on the register. 12 While there is no clear guidance on “a degree of notoriety or familiarity”, the requirement that it be notorious enough for judicial notice to be taken indicates that the mark needs to have this degree of notoriety or familiarity amongst the general public. Opposition: The statute and case law in relation to s 60 (whether another trade mark has acquired a reputation in Australia before the priority date which would mean that the use of the opposed mark would be likely to deceive or cause confusion) refers to “a mark with a reputation in Australia”. In relation to s 60, the reputation must be proved “in respect of particular goods or services” for which the opposed trade mark is to be registered. The reputation needs to be amongst a “significant” or “substantial” number of people or potential customers bur does not require a reputation amongst any particular proportion or number of the Australian population. A niche reputation may be taken into account in assessing whether reputation exists. Infringement: Section 120(3) of the Trade Marks allows a registered trade mark owner to sue for trade mark infringement where the registered trade mark “is well-known in Australia”. Section 120(4) states that in assessing whether a mark is well known, it is necessary to have regard to “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”. There is no authoritative case law on the section so it is unclear how the relevant public will be defined. Other causes of action Whether a mark has a reputation in Australia is also relevant in actions brought under the ACL for misleading and deceptive conduct and for actions brought under the common law for passing off (and thereby to s 42(b) (by which marks must not be registered if their use is contrary to law) and s 88(2) (by which marks may be cancelled if their use is contrary to law)). Although reputation is not strictly required to make out a case under the ACL, practically it is impossible to prove that use of a mark will mislead or deceive unless reputation is established. As set out above, it appears that for the 12 Woolworths; Henschke. 8747904/3 page 5
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Question Q234 National Group: Australia Title: Relevant ... - AIPPI

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