White SW Computer Law
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Trade Marks Information

Trade Mark Legislation

Trade Mark Cases






    • Respondent sought removal of appellant's registered trade mark from Register for non-use during prescribed statutory period
    • Previous foreign registered owner of trade mark authorised by licence attachment of trade mark to goods offered for sale and sold overseas
    • Goods offered for sale and sold in Australia during statutory period without knowledge of appellant, previous registered owner and licensee of trade mark
    • Whether trade mark used in Australia by registered owner or authorised user
    • Whether registered owner or authorised user must knowingly project goods bearing trade mark into course of trade in Australia
    • Whether use in good faith.
    • The principal issue raised on the appeal is whether, within the terms of s100(3)(a), there was use by Gallo or its predecessor in title, Mr Houlihan, of the registered trade mark in respect of wines, in good faith during the alleged statutory period. In our opinion, for the reasons which follow, there was such use.



  • Blount Inc v Registrar of Trade Marks 9)



    • On a literal reading of s52 of the Act, the deliberate creation by the breweries of an association by use of the name “Duff” between the breweries' beer can with “The Simpsons'” program, in circumstances where there is no association and indeed, where such an association is contrary to the express policy of the producers, amounts to misleading and deceptive conduct.
    • There is no necessity to demonstrate that the viewer or consumer must think in specific terms of permission or allowance in order to constitute deceptive conduct.
    • The intentional use of the name “Duff Beer” which produces the false association is sufficient.
    • .. I am satisfied on the balance of probabilities that consumers are in fact likely to assume sanction, permission or allowance on the part of the producers.
    • This is not caused by any erroneous assumption on their part, but by the deceptive conduct of the breweries.


    • 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 identification of an essential feature depends', it has been said,
      • 'partly on the Court's own judgment and
      • partly on the burden of the evidence that is placed before it 14)
    • whether there is substantial identity is a question of fact:
    • … On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question.
    • The marks are not now to be looked at side by side.
    • The issue is not abstract similarity, but deceptive similarity.
    • Therefore the comparison is the familiar one of trade mark law.
    • It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and,
    • on the other hand, the impressions that such persons would get from the defendant's television exhibitions.
    • To quote Lord Radcliffe15)
      • The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and
      • demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him …
      • It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and
      • that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole'
    • In Australian Woollen Mills Ltd v F.S. Walton and Co Ltd 16), Dixon and McTiernan JJ said 17)
      • 'In deciding this question, the marks ought not, of course, to be compared side by side.
      • An attempt should be made to estimate 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.
      • The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same'.“


  • Clark Equipment Co. v Registrar of Trade Marks18)


Trade Mark Articles

1) [2014] HCA 48
2) [2014] FCAFC 75
3) [2014] FCA 418
4) [2014] FCA 373
5) [2013] FCA 905
6) [2013] FCA 559
7) [2011] FCA 279
8) [2010] HCA 15 (19 May 2010)
9) (1998) 40 IPR 498
10) [1996] FCA 1484 (17 May 1996)
11) [1990] FCA 211
12) [1967] HCA 51
13) [1963] HCA 66
14) de Cordova v Vick Chemical Co. (1951) 68 RPC 103 at p 106.
15) de Cordova at p 106
16) [1937] HCA 51; (1937) 58 CLR 641
17) at p 658
18) (1964) 111 CLR 511

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