A trademark owner may become involved in a dispute with a competitor because a competitor commences to use their trademark or is accused of using a trademark identical or similar to someone else’s trademark. Such conduct may give rise to other causes of action, such as misleading and deceptive conduct under the Trade Practices Act, now the Competition And Consumer Act 2010 (Cth), or the tort of passing off.
Trademark disputes also arise when domain names are registered which incorporate the trademark owner’s name in a manner which violates the policies set out in the Uniform Dispute Resolutions Policy (UDRP) or the Australian Dispute Resolution Policy (auDRP) rules for the resolution of domain name disputes. A copy of all decisions relating to domain name disputes in the .au domain name space can be found on the auDA website under the auDRP Proceedings Archive. (see also WIPO UDRP decisions)
A registered trademark is infringed if a person uses ‘as a trademark’ a sign which is substantially identical or deceptively similar in relation to the trademark for the goods or services in respect of which the trademark is registered S120(1).
The plaintiff needs to show use of the trademark upon or in physical relation to the goods or services S7(4), (5). Infringement can occur when a trademark is used as a trademark in respect of (i) goods of the same description as that of registered goods, (ii) closely related services to registered goods, services of that same description as registered services or goods closely related to registered services. Whether goods or services can be characterised legally as ‘of the same description’ as the goods of services in respect of the which the trade mark is registered is a question of fact and impression to be determined by a court. A Court won’t confine itself to looking at the inherent nature of the goods or their uses and function, but will broaden their enquiry to examining issues such as the trade channels thorugh which commodities are traded. In the final analysis infringing use must be use which is apt to cause deception or confusion in the minds of the ordinary consumer in the target market for the relevant goods and/or services. There are several specific uses which will be excluded from trademark infringement set out in S122(1)(a)-(g) & under S124 (their use of an unregistered trademark predates the filing date of the trademark).
Well known/famous trademarks
Special protection is conferred upon well known trademarks pursuant to S120(3). If a mark has become so famous or well known that it serves a function beyond the traditional function of trademark in identifying the source or origin of goods it will be afforded additional protection. In this situation, where a trademark is substantially identical or deceptively similar to a well known trademark, even if used in respect of unrelated goods and/or services it may still constitute infringement under S120(3). This form of infringement (known in the US as dilution) is likely to be found if use of the trademark is likely to be interpreted as indicating some connection between the unrelated goods or services and the registered owner of the well known trademark, and for that reason the trademark owner’s interests would be adversely affected. There is no need to prove any risk or likelihood of confusion or deception, and the law is effectively protecting the commercial value of the mark by precluding uses which are thought to tarnish it.
Options available to trademark owners range from sending a cease and desist letter to launching action for infringement. It is unlawful to make unjustified threats of trademark infringement, S129, however if proceedings are launched within a prescribed period no action may lie for such threats. There are criminal offences for removing or falsifying a trademark S145 although the person responsible must have actual knowledge of the registration of the trade mark or be reckless in terms of such knowledge.
A trademark owner may also request goods imported into the country which infringe their trademark be seized by Customs however proceedings for infringement must be commenced within a certain period of time after seizure.
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