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

purpose of the ACL, the relevant public is the general public and for
passing off, the relevant public is the target market.
3) If the relevant public can be a limited sector of the public please respond (if
applicable with reference to statutory provisions and/or case law) to the following
questions
(a) Please briefly describe the criteria for determining the relevant public. Is
consideration taken e.g. to age, gender, geography, culture, groups with
special interests, sophistication/skill of the consumer? Is consideration taken
to the way the goods or services with the trade mark in question are
marketed?
Opposition Proceedings – s 60 “reputation”
It appears from the case law that the likelihood of making out a case of
confusion will depend on the interaction between the nature of the goods in
relation to which the reputation is asserted and the nature of the goods or
services which are the subject of the impugned registration or application.
So for example, in relation to food products, case law has considered
whether consumers of food products will be confused (and has disregarded
a niche reputation amongst food industry specialists). 13 In relation to DVR
players, the relevant public for establishing reputation was the general public
and while the reputation of an earlier mark amongst enthusiasts was
relevant to establishing such a reputation, the knowledgeable nature of
these enthusiasts made it more difficult to make out a case of confusion. 14
In relation to child care services, the court found that there was a reputation
amongst people who were interested in child care and early learning centres
(in other words, the consumers or potential consumers of the goods/services
for which the mark was used), and that the use of the impugned mark was
likely to cause confusion. 15
Infringement Proceedings “well known mark”
There is currently no detailed judicial guidance on whether a mark is well
known. The only cases that have dealt with this issue have been
interlocutory proceedings for injunctions pending a final hearing of the
matter. 16 In these cases, the relevant public has been the
13
Renaud Cointreau v Cordon Bleu International Ltée [2001] FCA 1170 (Renard Cointreau).
14
Tivo.
15
Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618. In that case, the relevant public was also
defined by reference to a particular geographic location (the state of Victoria)
16
Nintendo Co Ltd v Care [2000] FCA 1538 (“SUPER MARIO”); Virgin Enterprises Ltd v Klapsas [2001] FCA 1502
(“VIRGIN”); Australian Associated Motor Insurers Ltd v Australian Automotive Motor Inspection Centre Pty Ltd
[2003] FCA 1088 (“AAMI” — well known Australian insurance company); San Remo Macaroni Co Pty Ltd v San
Remo Gourmet Coffee Pty Ltd [2000] FCA 1842 (“SAN REMO” — well-known Australian pasta manufacturer)
and Lone Star Steakhouse & Saloon v Zurcas [2000] FCA 29 (“LONESTAR”).
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