Under section 20(1) of the Trade Marks Act 1995 (Cth) the registered owner of a trade mark has exclusive use to utilise and authorise another entity or person to use that mark. Then if a party infringes the use of that trade mark by using the same, the owner of the trade mark under section 20 (2) make seek relief against that party.
Under section 120(1) of the Act a person infringes a registered trade mark if 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 or services in respect of which the trade mark is registered. Section 120(2) of the Act further expands the definition of infringement to:
goods of the same description as that if the goods (registered goods) in respect of which the trade mark is registered; or
services that are closely related to registered goods; or
services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
goods that are closely related to registered services.
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
Section 120(3) of the Act relates to infringement of a well-known trade mark by use in relation to goods or services unrelated to those of the registration of the mark.
Section 120 of the Act specifies that in order to infringe a trade mark, the mark must be used as a trade mark itself.
In the case of Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd  the plaintiff had registered caricatures of a man with a large head that looked like an oil drop. The defendant used an animated cartoon that resembled the plaintiff’s trade mark. On the case facts, the court raised the following question: “whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connection in the course of trade between the petrol and defendant.” The court held that the defendant’s cartoon pictures did not infringe on the trade mark rights of the plaintiff, as the cartoon only conveyed a message about the quality of the defendant’s petrol, and was not related to the plaintiff’s registered purpose.
A primary issue that needs to be determined with trade mark infringement, is whether the party who is claimed against, is actually using the sign as a trade mark. Therefore it is necessary to understand the the impugned use of the party that is claimed to be infringing on the register trade mark, especially where it involves packaging, shape, colour, sound or scent, or which have no inherent distinctiveness.
Raising a claim for trade mark infringement requires careful due diligence, as many factors need to be taken into account to ensure a valid claim is raised. So when concerns are raised that a trade mark has been infringed, call me, and get that legal advice to protect your legal rights and interests.
The comments in the aforementioned do not constitute legal advice and are general in nature, and if legal advice is required please contact: John Melis at Legal AU Pty Ltd (03) 9999 7799 www.legalau.com
Legal AU Pty Ltd Lawyers are “Liability limited by a Scheme approved under Professional Standards Legislation.”