No CrossRef data available.
We use cookies to distinguish you from other users and to provide you with a better experience on our websites. Close this message to accept cookies or find out how to manage your cookie settings.
We use cookies to distinguish you from other users and to provide you with a better experience on our websites. Close this message to accept cookies or find out how to manage your cookie settings.
Subject to this Act, the registration of a trade mark in Part A or Part B of the register, if valid, gives to the registered proprietor of the trade mark the right to exclusive use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
The Australian scheme of Intellectual Property Law includes the registration and protection of trade marks pursuant to the Trade Marks Act I955 (Cth) (the Act).
Section 58(1) of the Act, reproduced above, grants the right to exclusive use of the registered trade mark to the registered proprietor. Section 62(1) deems that such a trade mark is infringed as follows:
A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user of the trade mark using by way of permitted use, uses a mark which is substantially identical with, or deceptively similiar to, the trade mark, in the course of trade, in relation to the goods or services in respect of which the trade mark is registered.
1 Section 58(1) Trade Marks Act 1955 (Cth)
2 It may be noted that the word “mark” rather than “trade mark” is used in parts of this subsection. Although this may seem tobe of significance, it is contended that it is merely the draftsman's means of distinguishing between the registered “trade mark” the the alleged infringing “mark”.
3 (1956) 95 CLR 190.
4 Ibid 204per Williams J (with whom Dixon CJ agreed).
5 Supra, n 3.
6 (1964) 37 AUR 82, 84per Kitto J (with whom Dixon CJ, McTieman, Taylor and Owen JJ agreed) followingMark Fay's, supra n 3, which appliedIrving's Yeast-Vite v Horsenail (1934) 51 PRC 110.
7 Section 6(1) of the Act provides that, with the exception of trade marks registered in Part C, “trade mark” means “a mark used or proposed to be used in relation to goods or services for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right, whether as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person”.
8 Supra, n 6, 85per Kitto J.
9 Yeast-Vite, supra n 6, cf s 4(1) (b) Trade Marks Act 1938 (UK).
10 The Shell Company case supra n 6, 85, per Kitto J.
11 Supra n 3.
12 Ibid,197per Williams J.
13 Ibid, 204.
14 (1982) 43 ALR 349.
15 Ibid, 352.
16 Ibid, 369.
17 Ibid, 371.
18 Section 38(1) of the Act provides as follows: “Where, under this Act, use of a trade mark is required to be proved for any purpose, the Registrar or a prescribed court may, if and so far as he or it thinks right, accept use of an associated registered mark or of the trade mark with additions or alterations not substantially affecting the identity of the trade mark, as equivalent for the use required to be proved.”
19 Supra, n 3.
20 (1941) 58 RPC 147.
21 Mark Foy's, supra n 3, 445per Williams J.
22 Supra, n 14.
23 Supra, n 20.
24 TA Blanco and Robin Jacob, Kerly' s Law of Trade Marks and Trade Names ( I0th Ed 1972) 289.
25 Eg Baume & Co Ltd v Moore (AH) Ltd [1958] RPC 225, 234 per Romer U: “inasmuch as 'Baume & Mercier, Geneva' is not identical with 'Baume', the answer ot the question depends on whether 'Baume & Mercier, Geneva' nearly resembles 'Baume' in the manner mentioned in section4(1). In our view, this question must be answered in the affirmative inasmuch as the Defendants have incorporated the whole of the plaintiff's registered mark and the addition of the words '& Mercier, Geneva' does not avoid the prohibited resemblance.”
26 Eg. Lever Bros (Port Sunlight) Ltd v Sunniwite Products Ltd (1949) 66 RPC 84.
27 Supra, n 20.
28 (1983) 48 ALR 511.
29 Supra, n 14.
30 Ibid 513per Franki J.
31 British Trade Mark Law and Practice, Report of the Committee to Examine British Trade Mark Law and Practice (“Mathys Committee”), Cmnd 5601, 1974.
32 P Meinhardt and KR Havelock, Concise Trade Mark Law and Practice, (1983), 5 where the authors give the example of Caxton using the trademark W74C when he started printing in England in 1474.
33 Halsbury's Law of England, (4th Ed 1984) Vol 48, 5.
34 OM Kerly, The Law of Trade-Marks, Trade-Name and Merchandise Marks, (1984), 71 714, listing early marking statutes.
35 Mathys Committee, supra n 31, 59.
36 Id.
37 See the discussion of Southern v How in TA Blanco-White and R Jacobsupra n 24, 2.
38 Crutwell v Lye (1810) 17 Yes Jun 335, 34 ER 129.
39 Sykes v Sykes (1824) 3 B & C 541, 107 ER 834.
40 Edelsten v Edelsten (equity) andBlofeld v Payne (common law), referred to in Blanco-White and Jacobsupra n 24,3.
41 Millington v Fox referred to in Blanco-White and Jocob supra n 24, 3.
42 Blanco-White and Jacob, supra n 24, 4.
43 The Leather Cloth Company v American Leather Cloth Company (1865) 11 HLC 523; 35 LJCh 57; 11ER 1435, 1440 per Lord Cranworth.
44 Farina v Silverlock (1856) 6 DeGM&G 214; 26 UCh 12; 43 ER 1214, 1216per Lord Cranworth.
45 Trade Marks Act 1876 (Vic) and the Merchandise Marks Act 1876 (Vic), later to be consolidated J into the Trade Marks Act 1890 (Vic); Designs and Trade Marks Act 1884 (WA); Trade Marks Act 1864 (Qld); Patents, Designs and Trade Marks Act 1884 (Qld); Trade Marks Act 1863 (SA); TradeMarks Act 1864 (Tas); Trade Marks Act 1865 (NSW): S Ricketson, The Law of Intellectual Property, (1984), 601.
46 Kerly, supra n 34, 9.
47 Eg, s 4 Trade Marks Registration Act 1876 (Vic) and s 5 Trade Marks Act 1890 (Vic).
48 ln the matter of an Application of the Eastman Photographic Materials Company Ld,for a Trade Mark (1898) 15 RPC 476.
49 Second Reading Speech of Senator McGregor, Vice-President of the Executive Council; Parliamentary Debates 1904, Vol xx, 3538 (27 July).
50 Second Reading Speech of Senator Spicer, Victorian Attorney-General; Parliamentary Debates 1955, Vol 85, 16 (20 April).
51 Second Reading Speech of Senator McKenna, Leader of the Opposition; Parliamentary Debates 1955, Vol 55, 34 (27 April).
52 Eg, s 3 of the Trade Marks Act 1876 (UK), s 6 of the Trade Marks Registration Act 1876 (Vic) and section 6 of the Trade Marks Act 1890 (Vic).
53 Kerly, supra n 34, 306 (emphasis added).
54 Ibid 312-314.
55 Section 50.
56 Section 53.
57 The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1964) 37 AUR 82, 84 per Kitto J 84, interpreting and approving the decision of the Full Court in Mark Foy' s, supra n 3.
58 See the Parliamentary Debates of both the first and second sessions of the Second Parliament.
59 Parliamentary Debates 1905, Vol xxix, 5083 (14 November).
60 Report of the Committee appointed by the Attorney-General of the Commonwealth to consider what alterations are desirable in the Trade Marks Law of the Commonwealth together with copies of the Report of the Committee previously appointed to consider the same matters (“Dean Committee”) (1954) 9 (emphasis added).
61 Supra n 52 and accompanying text.
62 Dean Committee, supra n 60, 4.
63 Pioneer Electronic Corporation ( Pioneer Kabushiki Kaisha) v Registrar of Trade Marks (1978)52 ALJR 79, 80 per Aickin J.
64 Section 82.
65 Part IX.
66 Section 74.
67 Australia, Industrial Property Advisory Committee, “Legal Protection of Character Merchandising in Australia: A Discussion Paper”, October 1987, 29–30 (“the Stonier Report”).
68 Supra nn 49–51 and accompanying text.
69 If not quality, it at least indicates “the origin of that quality”: DR Shanahan, Australian Trade Mark Law and Practice, (1982), 250.
70 P Meinhardt and KR Havelock, Concise Trade Mark Law and Practice (1983) 3; DR Shanahan,supra n 69, 250.
71 Eg, LN Klar, “An Argument for the Restructuring of the Law of Trademarks” (1974) 12 Osgoode Hall U 223, 231-232; and A Michaels, “The Function of Trade Marks. The Law and the Reality”, (1980] EIPR 13.
72 However, the latter approach seems to be negated by section 74(4) of the Act which prevents reistration which would facilitate trafficking in trade marks cf supra n 67 and accompanying text.
73 P Meinhardt and KR Havelock, supra n 70, 3.
74 LN Klar, supra n 71, 232-233.
75 Stonier Report, supra n 67, 1-2, 29.
76 Although there is the reminder that “the public interest in protecting consumers from deceptive conduct” may be of importance: Stonier Report, supra n 67, 28.
77 The argument from this perspective was dealt with in FI Schechter, “The Rational Basis of Trademark Protection” (1927) 40 Harv L Rev, 813, 830–833.