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

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(d) Could the relevant public be composed of people in the trade of the goods or services in question, such as distributors, licensees and retailers? Case law supports the view that the relevant public may include people in the trade of the goods or services in question as well as end users of the goods and services, depending on the nature of the goods or services which are the subject of the registration. 19 In considering whether use of a mark will be misleading or confusing, the issue of any deceptive resemblance between the respective marks must be considered from the viewpoint of the specialised consumer for those goods and services. 20 In the case of determining whether a mark is “well-known” for the purposes of s 120(3) infringement proceedings, the express words of s 120(4) refer to the “relevant sector of the public” — therefore allowing for a mark to be “wellknown” within a specialised market such as persons in the trade rather than end users. (e) Could the relevant public be “mixed” in a sense that it is composed of persons involved in trade, professional/business end customers and private end customers? Yes, if the users of the goods and services would be mixed, the relevant public may be mixed. (f) How limited in terms of quantification can the relevant sector of the public be to constitute the relevant public? Is there a clear established “lowest level”? For opposition under s 60, it is necessary to prove that there is a reputation amongst a “significant” or “substantial number” of people (although this is not quantified, and case law indicates that a small class may constitute a substantial number). For actions under the <strong>Australia</strong>n Consumer Law and passing off, it is necessary to demonstrate that there are a substantial number of persons who may be misled or deceived (which in practical terms will require establishing reputation among a “substantial number” of people). 21 19 For example in the context of an opposition, in Ainsworth Game Technology Ltd v IGT (2011) 93 IPR 532, the Trade Marks Office was required to determine the relevant public in relation to goods including components for gaming machines, parts and accessories for gaming machines and computer hardware and software and networking systems for linking gaming machines. The Trade Marks Office held that the relevant public were the hotels, clubs or casinos that purchased the gaming machines and not the general public who used the machines. However, in relation to a registration for, among other things, entertainment in respect of gaming machines, the Trade Marks Office held the relevant public to be the segment of the adult population at large which makes use of gaming venues. 20 Symbion. 21 Tivo (in respect of s 60); Hansen 8747904/3 page 8
(g) Is it possible to see any differences for different products/industry sectors in respect of the delimitation of the relevant public? The relevant public may vary according to the products or services which are the subject of the impugned registration. 4) Are there any differences between the “relevant public” concept when assessing the recognition of trade marks in respect of e.g. dilution, free riding or when determining likelihood of confusion in infringement proceedings? It is unclear how the relevant public will be determined in the context of wellknown marks. To succeed in an action under <strong>Australia</strong>’s consumer protection law, the ACL, the applicant must establish that a significant proportion of the public will be misled or deceived (although that requirement may be satisfied if there is a niche reputation and there would be confusion among that group). To succeed in a case of passing off, the applicant must establish that potential consumers of the products will be misled or deceived by use of the impugned mark. Consumer protection and passing off actions have been successful in protecting marks such as “Nike” which are used on dissimilar products, such as personal hygiene products — see, for example, the decision of the High Court in Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12. As noted above, the determination of the relevant public in opposition proceedings (judged by reference to the specification applied for) and infringement proceedings (judged by reference to the plaintiff’s specification), appears to allow for consideration of a niche reputation, provided that reputation is among a substantial number of people. 5) When does the assessment of the relevant public come into play e.g. in registration matters, proceedings in respect of wrongful use such as free riding, dilution, infringement proceedings and opposition proceedings? See above. 6) Is the relevant public determined by a test, a specific procedure or in some similar manner, or rather on a case-by-case basis? Please give a brief description of how the test or analysis is made. The relevant public is determined on a case-by-case basis based on the matters referred to above. 8747904/3 page 9
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Question Q234 National Group: Australia Title: Relevant ... - AIPPI

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