Trademark infringement

Defending or enforcing your businesses brand is critical for its ongoing success.  It is important for businesses at all stages to build a reputation and protect their brand over time.  Dundas Lawyers^® has experience initiating and defending trademark infringement proceedings in both the Federal Court of Australia and the Supreme Court of Queensland.  Our skills in forensic investigations and case preparation are particularly relevant in trademark infringement matters.

What does a trademark lawyer do to prove trademark infringement – Australia

Section 120 of the Trade Marks Act 1995 (Cth) (Trade Marks Act) provides for three (3) ways in which a trade mark may be infringed.  Under section 120(1), a registered trade mark will be infringed

“if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar“

to the goods or services for which the trade mark is registered. In short it is a two (2) part test.

Under section 120(2) a registered trade mark will be infringed “if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar” in relation to:

• “goods of the same description as that of 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”.

Under section 120(3) to establish that a registered trade mark has been infringed, the applicant/plaintiff must establish that:

• the trade mark is well-known in Australia;
• that the respondent(s) use of the trade mark is substantially identical or deceptively similar in relation to goods or services unrelated to those in respect of which the well-known trade mark is registered;
• that the respondent(s) use indicates a connection between the unrelated goods or services and the registered owner; and
• that the interests of the registered owner will likely be adversely affected for the above reasons.

The legal test for substantially identical

In the case of Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 (Shell v Esso), Windeyer J set out the test for examining whether trade marks are substantially identical [12]:

“In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.“

The legal test for deceptive similarity

Section 10 of the Trade Marks Act provides the following statutory definition of the term “deceptively similar“:

“For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion“.

In response to the above definition, the Court in Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235 (23 December 2020) posed the following two (2) questions to determine the deceptive similarity between trade marks:

• whether there was resemblance between the competing marks; and
• whether that resemblance was so close as to confuse, if not deceive.

Ultimately, it was held in this case that an infringement occurred because the trade marks were deceptively similar in that they so nearly resembled the applicant’s marks and are likely to cause confusion.

In comparison to the test for substantial identicalness, it was held in Australian Woollen Mills Limited v FS Walton & Co Ltd [1937] HCA 51 that a Court will not examine the mark side by side but instead the:

“effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought” or if “there is a real, tangible danger of deception or confusion occurring”.

This was evident in Shell v Esso when Windeyer J was discussing the test for deceptive similarity and said at [13]:

“…The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances“.

In McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412, the Federal Court of Australia found that McDonald’s registered trade mark for “Big Mac” was not infringed by Hungry Jack’s use of the trade mark “Big Jack“.  It was held that the marks were not “deceptively similar” because, unlike MAC, the word JACK would be unlikely to confuse typical customers as it is an easily recognised first name.  As such, the Court identified the High Court decision of Self Care v Allergan [2023] HCA 8, where it was held that when assessing the deceptive similarity of marks, the Court must not consider the reputation, branding, or surrounding livery that is associated to either mark.  Therefore, in the present case, the Court determined that McDonald’s longstanding reputation with its “Big Mac” trade mark is not relevant to assess deceptive similarity.

Defences to trademark infringement

One of the defences to trade mark infringement is that the trade mark in question should never have been granted in the first place and as a result should be revoked.  The grounds for which a trade mark can be revoked include but are not limited to:

• prior use;
• non-use;
• misleading or deceptive use;
• trade mark has become generic;
• non-ownership; or
• the trade mark was registered in bad faith.

Of course, each case will be different, and the evidence required can be complex.

Trademark revocation

When presented with allegations of trade mark infringement it is usual for a respondent to consider whether the trade mark in question should have been granted in the first place.  If it is considered that this is the case then the respondent may ‘cross claim’ to revoke the trade mark in question on various grounds.  If successful the respondent could not infringe a trade mark that was never granted.

Court decisions involving trade mark infringement by Dundas Lawyers^®

Dundas Lawyers^® has expertise in both initiating and defending proceedings regarding all type of intellectual property.  Court decisions involving trade mark infringement by Dundas Lawyers^® include:

• Campbell v Sutherland [2020] FCA 765 (25 May 2020) – successful defence of interlocutory injunction to restrain the respondent from using its trade mark.
• Express Sales & Marketing Pty Ltd v Snapper Hill Group Pty Ltd [2022] ATMO 93 (10 June 2022).
• Yarrum Group Pty Ltd v iGear.com.au [2020] ATMO 138 (17 August 2020).

Disclaimer
This page contains general commentary only about trade mark infringements.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

Why choose Dundas Lawyers^® to advise on trademark infringement?

Having exerted Blood Sweat and Years^® since April 2010 we are the team you want on your side for the long term to act as the ‘bodyguard’ for your business to complete legal forensic investigations and case preparation.   Some of the reasons client’s choose Dundas Lawyers^® include:

• our Uncommon business acumen;
• our Uncommon expertise in transactional, compliance and litigious matters;
• our Uncommon expertise forensic case preparation;
• our Uncommon customer focus;
• the fact that we don’t just know law, we know business!
• how we leverage our Uncommon Nous^® to provide client solutions.

Considering getting a trademark litigation lawyer lawyer to advise on trademark infringement?

For a confidential, no obligation initial telephone call to find out how we can help your business gain an uncommon advantage in initiating or defending allegations of trademark infringement in an Australian Court please phone our team on either 1300 386 529 or 07 3221 0013.

Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
T: +61 7 3221 0013 (preferred)
M: +61 419 726 535
E: mburrows@dundaslawyers.com.au

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