Trade mark infringement

Unauthorised use of a sign that is substantially identical with, or deceptively similar to, a registered trade mark, is an infringement. A trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles the other trade mark that it is likely to deceive or cause confusion.

Occasionally, a 'well-known' registered mark can be infringed by the use of a similar mark on dissimilar goods or services, as the mark could indicate an apparent connection between the unrelated goods or services and the registered owner of the trade mark. This adversely affects the interests of the registered owner. For example, using 'Coca-Cola' as a trade mark in relation to sweets could infringe the legitimate 'Coca-Cola' trade mark even if it was only registered in relation to beverages.

Infringement of non-registered trade marks

When infringement of a non-registered trade mark occurs, the owner may be able to take action under the common law to stop the infringement. Common law, trade practices and fair trading legislation provide remedies against people attempting to benefit from the reputation of another business by making unauthorised use of a confusingly similar trade mark on the same type of goods, or engaging in misleading or deceptive conduct. This includes the act of 'passing off' under the common law, a classic example being the offering of a product for sale using marketing similar to that of an established brand, such as 'Pine Action' air freshener with a container and label similar to 'Pine o cleen'.

Taking action under the common law, and legislation such as the Competition and Consumer Act 2010 (Cwlth), requires the trade mark owner to prove that they have developed a reputation in the unregistered trade mark and that use of the infringing mark would be likely to confuse or deceive the public. This can be very difficult and expensive to prove. It is not necessary to prove any reputation or deception in order to enforce a registered trade mark.

Also consider...

• Visit IP Australia for information on trade marks. Topics include: about trade marks; the application process; search for a trade mark; request a TM Headstart; apply for a trade mark; renew your trade mark; pay your trade mark registration fee; payments for existing TM Headstart applications; and opposition to registration.
• Visit the Institute of Patent and Trade Mark Attorneys of Australia – a representative body for Australian patent and trade mark attorneys. This site provides the latest news and resource information about patent and trade mark law in Australia.