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Published online by Cambridge University Press: 01 January 2025
Reconciling registration and use as mechanisms by which rights can be acquired in a trade mark is inherently difficult. The federal Australian registered trade mark system is built around a hybrid of a registration-based and a use-based model of protection. While it is perfectly possible to defend such a dual model, the two means of acquiring trade mark rights rest on very different logics. In the event of a conflict between a registered mark and a mark that has been used for some time the question of which should take precedence is not necessarily capable of being determined a priori. The relationship between registration and use is mediated by a number of provisions of the Trade Marks Act 1995 (Cth). In this article we focus on one such provision, s 58A, a relatively recent addition to the legal landscape.
Through a close analysis of s 58A, focusing on court decisions and decisions of the Trade Marks Office that have applied this provision, we demonstrate that s 58A has the potential to operate in an entirely unsatisfactory manner. We then use problems with s 58A as a vehicle to explore the relationship between use-based and registration-based rights generally, suggesting a new conceptual framework that might serve to guide future discussion of how the relationship between registration and use ought to be mediated.
Our thanks go to Rob Batty, Lionel Bently, Megan Jones, Jani McCutcheon, Sean McManis and the two anonymous referees.
1 We say ‘came to be built’ because there was a period following the introduction of the first UK registered trade mark system in 1875 during which the relationship between use and registration was entirely uncertain. Specifically, s 1 of the Trade Marks Registration Act 1875, 38 & 39 Vict, c 91 provided that no action for ‘infringement’ could be brought after 1 July 1876 unless the mark had been registered. At first there was real uncertainty as to how this provision impacted on actions for passing off, with many commentators at the time taking the view that registration had become compulsory for any action to lie. We should perhaps add as an aside that we take the advent of the UK registration system as our starting point because although a number of the Australian colonies introduced trade mark registration before the UK the Acts in question seem to have had little bearing on the subsequent development of Anglo-Australian trade mark law.
2 We do not suggest that the relationship between the incentives to register and the scope of the rights afforded to registered trade mark owners is to be accepted at face value. On the contrary, we have argued elsewhere that any suggestion that the public information produced by trade mark registration serves as ‘consideration’ for the scope of the registered trade mark monopoly is deeply problematic. Nevertheless this ‘registration as consideration’ account is the best explanation available with justificatory power (that is, if one leaves aside explanations grounded in public choice theory and the like aside).
3 See, eg, Advisory Council on Intellectual Property, A Review of the Relationship between Trade Marks and Business Names, Company Names and Domain Names (March 2006) 1, 27–30 <http://www.acip.gov.au/pdfs/ACIP_Final_Report_Review_of_Relationship_Between_Trade_Marks_and_Business_Names,_Company_Names_and_Domain_Names_Archived.pdf>(noting evidence that suggests that many small and medium sized enterprises erroneously assume that registration of a business name gives them positive rights over the name in question and insulates them from a claim for trade mark infringement).
4 For example, it is possible that consumers will immediately see a trader's slogan or aspects of the shape or colour of the trader's goods as carrying a source identification function, but such trade indicia will often only be registrable on proof of acquired distinctiveness.
5 It is widely recognised, for example, that the United States attaches much more importance to use as a source of trade mark rights than many other jurisdictions.
6 Trade Marks Act 1905, 5 Edw 7, c 15, s 41 (as enacted). See also Trade Marks Act 1905 (Cth) s 51A, as added by Trade Marks Act 1912 (Cth) s 19.
7 Trade Marks Act 1905, 5 Edw 7, c 15, s 41, as amended by Trade Marks Act 1919, 9 & 10 Geo 5, c 79, sch 2. The shift did not happen until much later in Australia: Trade Marks Act 1955 (Cth) s 34(2).
8 We also discuss the fact that while other grounds of opposition also mediate the relationship between use and registration, such as ss 58 and 60, these will not always be able to keep the applicant's mark off the Register.
9 Perhaps the most notable recent example relates to the Full Federal Court's interpretation of the ‘parallel importation’ defence to infringement in s 123 and its relationship with the use ‘as a trade mark’ requirement in s 120 in cases such as Paul's Retail Pty Ltd v Sporte Leisure Pty Ltd (2012) 202 FCR 286, 296 [71] (Jacobson, Yates and Katzmann JJ) and Paul's Retail Pty Ltd v Lonsdale Australia Ltd (2012) 294 ALR 72, 81–3 [58]–[68] (Keane CJ, Jagot and Yates JJ). In these cases the Court limited the scope of the use ‘as a trade mark’ requirement on the basis of a literal reading of an obiter footnote in the High Court's decision in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144, 161 [34] n 48 (French CJ,
Gummow, Crennan and Bell JJ) and a literal reading of the text of the TMA. This approach seems to have been taken without a broader consideration of the role of the use ‘as a trade mark’ requirement or the consequences of making importers and retailers of genuine goods prima facie liable for infringement, subject only to the operation of s 123 defence. For discussion of how more needs to be done to clarify the operation of the ‘parallel importation’ provisions, see Andrew Stewart et al, Intellectual Property in Australia (LexisNexis Butterworths, 5th ed, 2014) 719–25; Mark Davison, ‘Parallel Importing in Australia: What Is the Objective and Is It Being Achieved?’ (2012) 38 Monash University Law Review 173; Robert Burrell and Michael Handler, Australian Trade Mark Law (Oxford University Press, 2010) 373–9.
10 See also Trade Marks Regulations 1995 (Cth) reg 4.15A(5) (which provides for a ‘prior continuous use’ exception where the cited mark is an earlier trade mark the subject of an international registration designating Australia ('IRDA’) or an earlier protected international trade mark under the Madrid Protocol. See further reg 17A.28 (on the application of s 44 of the TMA as a ground for rejecting an IRDA).
11 ‘Priority date’ is defined in s 12 of the TMA. In most cases the relevant priority date will be the filing date of the already-registered mark or the filing date of the earlier application.
12 Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, 390–1 (Gummow J).
13 Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506, 512–4 [13]–[19] (Kenny J), 529–30 [87]–[89] (Allsop J). Even though what we have described in the text seems to be an orthodox reading of the relationship between s 58 and s 44(4), note the equivocal statements of the hearing officer in Milners Pty Ltd v PI-Design AG (2003) 59 IPR 577, 580-1 [13] n 2 that s 58 might not always prevail over s 44(4).
14 For an early recognition, see Tim Golder, ‘Disclaimers, Associations, Honest Concurrent Use and Prior Use’ (1996) 7 Australian Intellectual Property Journal 93, 97. See also IP Australia, Trade Marks Legislation Review, Paper 3 (30 September 2004) 12–13 <http://www.wipo.int/wipolex/en/text.jsp?file_id=179965>.
15 See, eg, Sanstat Pty Ltd v Muir Electrical Co Pty Ltd (2004) 61 IPR 614 (opponent failed to establish sufficient reputation for the purposes of s 60, despite having the earlier use).
16 Trade Marks Act 1955 (Cth) s 34(2).
17 Working Party to Review the Trade Marks Legislation, Recommended Changes to the Australian Trade Marks Legislation (Australian Government Publishing Service, 1992) 47, Recommendation 8A(4).
18 See Trade Marks Amendment Act 2006 (Cth) sch 1 item 29.
19 (2012) 97 IPR 183 ('Kingsgate’).
20 IP Australia, Trade Marks Office Manual of Practice and Procedure (1 April 2014) pt 28.8 <http://www.ipaustralia.gov.au/pdfs/trademarkmanual/trade_marks_examiners_manual.htm>.
21 Kingsgate Hotel Group Ltd v Millennium & Copthorne International Ltd (2011) 94 IPR 277, 287 [41]. Had KHG raised a s 44 ground of objection this ground would have been established. This is because KHG's mark was considered to have been deceptively similar to MCIL's (at 286 [34]) and was registered in relation to similar services, and because the finding that MCIL had not used its mark before its own priority date meant that s 44(4) would have been unavailable. It is therefore interesting that the outcome of the decision turned on s 58A, a section that presupposes the correctness of the decision on s 44(4). We discuss some of the potential consequences of not raising s 44 as a ground of opposition in such circumstances in Part 4 below.
22 Kingsgate (2012) 97 IPR 183, 186 [14]. See further Part 4 below as to whether the Office is able to take a similar approach where s 44 is not raised as a ground of opposition.
23 Ibid 189–90 [47]–[57]. While, as we explain below, we are not unsympathetic to the outcome reached in the case (namely, that the two device marks are able to co-exist on the Register), the decision on deceptively similarity is somewhat difficult to square with established legal tests. In reaching his conclusion Jacobson J relied on the Full Federal Court's statement in Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd (2004) 61 IPR 212, 234 [100] (Moore, Sackville and Emmett JJ) that ‘some caution needs to be exercised before characterising words in a complex composite registered trade mark as an “essential feature” of that mark in assessing the question of deceptive similarity'. However, the composite mark in question in Crazy Ron's was a logo featuring the words ‘Crazy’ and ‘John’ in a haphazard font, placed on either side of a large cartoon character who was sitting astride a globe featuring the letters ‘M’ and ‘W’ (see registered trade mark 656212). Such a complex mark combining elements of stylised text and detailed image is substantially different from the ‘Kingsgate’ and five-bar logo mark, where the word ‘Kingsgate’ is undeniably the essential feature of the mark. (To the extent that the simple five-bar element has much impact, it can perhaps be seen as a highly stylised crown or a gate, which only serves to reinforce the ‘King’ and ‘Gate’ elements in the word mark and thus further points towards the mark being deceptively similar to the ‘Kingsgate Hotel’ device mark. Compare, eg, Starr Partners Pty Ltd v Dev Prem Pty Ltd (2007) 71 IPR 459, 463 [28]–[29] (Lindgren, Emmett and Finkelstein JJ)). This raises a broader issue: while we accept that deceptive similarity is a highly fact-dependent enquiry, we are concerned about how uncomfortably many Australian decisions on deceptive similarity sit alongside one another: see generally Burrell and Handler, above n 9, 170.
24 See, eg, Cluett-Peabody & Co Inc v McIntyre, Hogg, Marsh and Co Ltd [1958] RPC 335.
25 Kingsgate (2012) 97 IPR 183, 191 [59].
26 Ibid 192 [69], [71] (noting that a company called Kildair had purchased ‘the intellectual property rights … necessary for the conduct of the business, including the business name, the domain name and the website for the Kingsgate Hotel’ in May 2000 and that ‘if Kildair was the predecessor in title of KHG, the date from which KHG's use of the KHG trade mark (or a mark substantially similar to it) commenced in [sic] May 2000’ (emphasis added). It is, however, difficult to be certain that this was what his Honour intended. This is because it appears from the hearing officer's preceding decision that use of the mark as registered could be traced back to December 2001, but that because of a break in the chain of title KHG could only rely on use from 2004: Kingsgate Hotel Group Ltd v Millennium & Copthorne International Ltd (2011) 94 IPR 277, 286 [36].
27 Kingsgate (2012) 97 IPR 183, 196-7 [113]–[126]. In these paragraphs the judge referred to the ‘rebranding’ of the Kingsgate Hotel by Millennium & Copthorne Hotels New Zealand Ltd (MCNZ) after a long period of non-use of ‘Kingsgate'. There is, however, nothing in the judgment to indicate that the ‘rebranding’ also involved the adoption of the five-bar logo in conjunction with the word ‘Kingsgate'.
28 Ibid 197 [127] (emphasis added). For a more orthodox reading, see Kingsgate Hotel Group Ltd v Millennium & Copthorne International Ltd (2011) 94 IPR 277, 286 [37].
29 Finding that this was not the case: Kingsgate (2012) 97 IPR 183, 197–8 [128]–[135], 199 [144].
30 This is true as regards s 44, but is somewhat simplistic because of the problematic sphere of operation of the s 60 ground of opposition. We return to this issue in Part 6.
31 See, eg, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144, 170 [69] (French CJ, Gummow, Crennan and Bell JJ) (noting that use of an image of a foot alongside the word ‘Barefoot’ did not substantially affect the identity of the appellant's registered BAREFOOT word mark). For consideration by hearing officers of the relevance of s 7(1) in the context of s 44(4) and s 58A, see Fry Consulting Pty Ltd v Sports Warehouse Inc (2009) 85 IPR 403, 411–2 [44]–[48], 413 [59]; Deckers Outdoor Corporation Inc v Luda Production Pty Ltd (2010) 89 IPR 561, 577 [60]–[61], 578 [66]. See also Automotive Product Licencing Pty Ltd v Superstop Brake & Clutch Pty Ltd [2012] ATMO 4 (23 January 2012) [34].
32 For example, it might lead to a further liberalisation of the tests for determining whether the use of a mark in a form different from that which appears on the Register is sufficient to constitute ‘use’ of the registered mark for the purposes of ensuring the mark is not removed from the Register under Part 9 on the grounds of non-use. See Burrell and Handler, above n 9, ch 1 and 283–4, 295–6 as to the problems with an overbroad reading of use in this context.
33 Emphasis added.
34 Emphasis added.
35 By way of example, imagine that an applicant applies for registration of a mark in relation to ‘repair services for wind-powered electricity generating devices’ in Class 37, receives a citation objection under s 44(2) based on the existence of a similar mark for ‘voltage transformers’ in Class 9, but, rather than taking the point that the goods and services are not closely related, provides evidence of prior continuous use such that its mark is accepted under s 44(4). The owner of the cited mark then seeks to rely on s 58A. Because of the wording of this section, it appears that the opponent has the possibility of, in effect, expanding its sphere of protection by pointing to the earlier use of its mark in relation to ‘repair services for voltage transformers’ (that is, similar services to those claimed by the applicant), even though such services do not form part of the specification of its registered trade mark. It should perhaps also be emphasised that it will be enough to show isolated use in relation to similar services, such that the opponent may succeed even in circumstances where it could not rely on ss 42(b) or 60. This is a point to which we return in Part 6.
36 We accept that an applicant whose mark is accepted for registration only because of s 44(4) could seek a hearing under s 33(4) to argue that its mark should be accepted without such a condition (on the basis that its mark does not conflict with the cited mark), but it would be extraordinarily rare for an applicant to do so.
37 The third exception is where the Registrar is satisfied that because of ‘other circumstances’ it is proper to accept the application: s 44(3)(b). We do not consider this exception in detail here, because it primarily applies in situations where the applicant might be unable to show that its use, or the use by the owner of the cited mark, was continuous (such that s 44(4) and/or s 58A would not apply in any event), or where the applicant has obtained a letter of consent from the owner of the cited mark to secure registration (such that the owner would not seek to oppose the application). See further Part 5, where we discuss Maier v Asos Plc [2014] ATMO 7 (28 January 2014), which deals with the intersection of these provisions.
38 See, eg, Invecon Australia Pty Ltd v Sasse (2008) 80 IPR 600.
39 (2010) 88 IPR 376 ('Commercial Radio’).
40 Ibid 383–5 [16]–[27].
41 Ibid 385 [27]. Notwithstanding the finding of honest concurrent use, the opponent was ultimately successful under s 60. As we noted in Part 2, there will, however, be occasions where an opponent will fail to demonstrate the necessary reputation for the s 60 ground to apply. More generally, we consider that further attention needs to be paid to the unsatisfactory relationship between the opposition grounds and s 44(3)(a): see Burrell and Handler, above n 9, 221–3, 244; see also IP Australia, Trade Marks Legislation Review, Paper 3, above n 14, 12; Brent Salter and Hilary May Black, ‘Prior Reputation “Trumps” Honest Concurrent Use — Or Does It?’ (2008) 74 Intellectual Property Forum 41.
42 Thus forcing the applicant to appeal the decision to the Federal Court or Federal Circuit Court before being able to raise the issue. See, eg, Kingsgate (2012) 97 IPR 183, 186 [15].
43 This follows from the intersection of ss 57 and 44(4). Under s 57, registration ‘may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act’ (emphasis added). Section 44(4) states that the Registrar ‘may not reject the application because of the existence of the other trade mark’ if the Registrar is satisfied that the applicant has made prior continuous use of its mark (emphasis added).
44 [2009] ATMO 90 (9 November 2009) [16]–[17] (emphasis added). See also Highland Heritage Estate (Sales) Pty Ltd v Le Grand Imports/Exports Pty Ltd [2010] ATMO 4 (18 January 2010) [9] n 1; Bradley v The Goodyear Tire & Rubber Co (2010) 90 IPR 440, 443 [6]; Mad Keen Pty Ltd v Jenkar Developments Pty Ltd [2012] ATMO 99 (26 October 2012) [77]; McIntyre v Cooley Investments Pty Ltd [2012] ATMO 116 (27 November 2012) [70]; Wizard Automotive Systems Pty Ltd v Smart Repair Australia Pty Ltd [2013] ATMO 33 (24 May 2013) [20]; MACH Systems Pty Ltd v BlueScope Steel Ltd [2013] ATMO 40 (11 June 2013) [19]; DNA Products Aust Pty Ltd v Botany Essentials Pty Ltd [2013] ATMO 82 (21 October 2013) [34].
45 Commercial Radio (2010) 88 IPR 376, 381–2 [11] ('the application of s 58A is narrow, in the sense that it is only available as a ground of opposition if the opposed trade mark has been accepted under the provisions of s 44(4) — as has occurred here. The opponent's mark RADIO AUSTRALIA was the conflicting trade mark to the opposed application at the examination stage, and the opponent must now establish that it has used this mark prior to the first use of the applicant's trade mark’). See also Automotive Product Licencing Pty Ltd v Superstop Brake & Clutch Pty Ltd [2012] ATMO 4 (23 January 2012) [31].
46 See also IP Australia, Trade Marks Manual, above n 20, pt 46.4.3 (noting that as a matter of practice the examiner will contact the owner of the cited mark if an application is accepted as a result of s 44(4), and contemplating that s 58A will arise in these circumstances).
47 One of our referees raised the point that, as a practical matter, it is highly unlikely that a court would adopt such an interpretation of s 58A when to do so would deprive it of the opportunity of considering a potential ground of opposition. We agree with the referee, and argue below that it would be absurd for the court to adopt such an interpretation. However, the more interesting issue for us is how the court would go about avoiding a literal reading of s 58A. Our concern is that rather than squarely addressing the policy considerations underpinning a purposive interpretation of the section, the court might seek to point to other, tangential, factors to seek to justify a broader reading. For example, the court might point to the de novo nature of the appeal under s 56, or the breadth of the jurisdiction provisions in ss 191 and 191A, as somehow giving it licence to interpret s 58A more flexibly than the Office. The problem here is that for a court to point to provisions such as ss 56 and 191/191A would simply be to assert the desired outcome, without undertaking a principled engagement with the work that s 58A is meant to do. We thank the referee for prompting us to develop this point more fully.
48 [2014] ATMO 7 (28 January 2014) ('Maier’). Our thanks go to Sean McManis of Shelston IP, which represented Asos Plc in the opposition, for his assistance in providing us with the factual information beyond that contained in hearing officer's decision.
49 The reason for this is complex. In July 2005 Asos Plc had obtained an international registration for ASOS, based on a UK domestic application for the same mark, and had designated Australia as a country in which protection was sought under the Madrid Protocol. That is, the mark became an IRDA under Australian law. When the Office came to consider whether to extend protection to this IRDA in Australia, it raised an objection under s 44(1) and (2) based on Maier's earlier-registered ASSOS mark. Asos Plc provided evidence to overcome this objection under s 44(4). However, before this evidence could be considered, its international registration was cancelled because the UK domestic application was rejected, meaning that the IRDA ceased under Australian law (see Trade Marks Regulations 1995 (Cth) reg 17A.35A). Asos Plc then applied directly to the Office for registration of ASOS as a standard trade mark, and when faced with an identical objection based on Maier's ASSOS mark, asked the Office to consider the same evidence of prior use it had put forward in relation to the IRDA for ASOS. This evidence did not prove use up to the priority date of the new application. However, it justified acceptance under s 44(3)(b).
50 Maier [2014] ATMO 7 (28 January 2014) [44] (emphasis in original).
51 Ibid [45]. The hearing officer considered that if the applicant were to amend its Class 25 and 35 specifications to align with the goods and services in relation to which it had used its mark (namely, ‘fashion and casual clothing, clothing accessories and footwear for men and women’ and the ‘online retailing of fashion and casual clothing, clothing accessories and footwear for men and women', excluding ‘goods for use by cyclists’ in both cases), the s 58A ground would fall away and the applicant's mark should be registered: at [51]. It is debatable whether these amendments would be sufficient to ensure that s 58A could not apply. To our mind, the better approach would have been for the applicant's mark to be registered, possibly with its original specification, on the basis of honest concurrent use under s 44(3)(a). It would have been helpful if this issue had been considered by the hearing officer: not only was it held in Commercial Radio (2010) 88 IPR 376 that a successful opposition under s 58A does not overcome a finding that a mark is potentially registrable under s 44(3)(a), but in Maier s 60 was not established, meaning that a major barrier to the potential application of s 44(3)(a) was not present.
52 [2010] ATMO 89 (22 September 2010) [49].
53 (2011) 91 IPR 394, 397 [12]. While we are sympathetic to the interpretation of s 58A in these three decisions, we are again concerned about the lack of engagement with the text of the section or the policy reasons for choosing to interpret the provision purposively rather than literally.
54 Trade Marks Regulations 1995 (Cth) reg 5.5. See also reg 17A.34A for oppositions to the extension of protection of trade marks the subject of an IRDA.
55 IP Australia, Statement of Grounds and Particulars (11 March 2014) 4 <http://www.ipaustralia.gov.au/forms/trade-marks/tm00034-statement-grounds-particulars.pdf>.
56 See also Trade Marks Regulations 1995 (Cth) reg 17A.34B for oppositions to the extension of protection of trade marks the subject of an IRDA.
57 For example, s 58A could be amended to make clear that it can only be raised in conjunction with a s 44 ground of opposition, and that it can be raised where the examiner accepted the application on the basis of s 44(4) or where the applicant has sought to raise s 44(4) in opposition proceedings.
58 It might well be the case that if the TMA is amended, regs 5.8 and 5.12 of the Trade Marks Regulations 1995 (Cth) would also need to be amended to make clear that an SGP shall not be deemed inadequate on the sole basis that the opponent has merely restated the particulars on which it is relying for the purposes of its s 44 ground of opposition in support of s 58A, and that the opponent is entitled as of right to amend its SGP to add s 58A as a ground of opposition where the applicant raises a claim of prior continuous use after opposition proceedings have been commenced.
59 We have discussed this in relation to issues such as acquired distinctiveness (Burrell and Handler, above n 9, 132–4) and the date at which examination and opposition grounds ought to be assessed and removal orders should take effect (Burrell and Handler, above n 9, 265–8, 289, 298–9; Michael Handler and Robert Burrell, ‘Zombie Marks? Ceased Registrations, Failed Applications and Citation Objections under s 44 of the Trade Marks Act’ (2013) 23 Australian Intellectual Property Journal 206). See also Davison, above n 9, 179 (criticising the Federal Court's departure from pre-TMA case law on use ‘as a trade mark’ in the infringement context); Rob Batty, ‘Parallel Importing and Trade Mark Use: A Tale of Two Uses’ (2013) 25 New Zealand Universities Law Review 467 (criticising the High Court's decision in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 on whether a registered trade mark can be put to genuine use without the conscious resolve of the trade mark owner).
60 That is, Competition and Consumer Act 2010 (Cth) sch 2 s 18(1).
61 Yale Electric Corporation v Robertson, 26 F 2d 972, 974 (2nd Cir, 1928).
62 That s 42(b) can be used is this manner is clear from Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24, 31 [26]. Although s 42(b) is also an examination ground, as a matter of practice examiners will not concern themselves with whether the use of the applied-for mark would constitute passing off or would contravene the ACL: see IP Australia, Trade Marks Manual, above n 20, pt 30.3.4.
63 We acknowledge that the ground of opposition contained in s 62A (that the application was made in bad faith) might also be raised to block the registration of a similar mark. However, we leave this ground to one side here: to the extent that s 62A has independent work to do beyond the scope of s 60, it is likely that it will only be established in unusual circumstances where the applicant's conduct indicates that it is likely to engage in passing off in its use of the mark: see, eg, DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194, 208–9 [70]–[77]. For a recent discussion of this issue in the context of EU law, see Annette Kur, ‘Not Prior in Time, but Superior in Right — How Trademark Registrations Can Be Affected
64 Third-party Interests in a Sign’ (2013) 44 International Review of Intellectual Property and Competition Law 790, 807–12.
65 See, eg, Blackadder v Good Roads Machinery Co Inc (1926) 38 CLR 332, in which a company that imported road-grading machinery from the US bearing the mark, but which removed the mark and replaced it with another prior to sale, was considered to be the owner of the mark, even though final purchasers of the product never saw the mark; Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 where the importation of one prototype power boat and use of the mark on correspondence and in brochures was sufficient use to sustain a claim to ownership. In both cases it would appear that the level of use of the mark, and the lack of consumer recognition, would have meant that the owners would not have been able to bring passing off actions.
66 We acknowledge that this is an entirely ahistorical interpretation of the function of s 58. The principle of ‘ownership’ that underpins this provision has its origins in the idea that it is use in the marketplace, rather than registration, that establishes rights in a mark. However, as the Anglo-Australian trade mark system evolved, registration increasingly took centre stage as the source of rights, leaving s 58 with a strange (and at first sight entirely unjustifiable) sphere of operation. For a trenchant critique of the ongoing operation of the ‘ownership’ ground of opposition, see Rob Batty, ‘The Challenges of Prior Use to New Zealand Registered Trade Mark Law’ (2014) 45 Victoria University of Wellington Law Review (forthcoming), especially Part IV.
67 We use the language of ‘double identity’ as shorthand here to draw a conceptual link between s 58 and other provisions that provide similar procedural and evidential shortcuts. See above nn 12–13 and Burrell and Handler, above n 9, 240–3 for a detailed explanation of the extent to which the applicant and opponent's marks and goods/services can differ for the opponent to be able to make out a s 58 ground of opposition.
68 A clear illustration of this at the international level is art 16.1 of the TRIPS Agreement (Marrakesh Agreement Establishing the World Trade Organization, opened for signature 15 April 1994, 1867 UNTS 3 (entered into force 1 January 1995) annex 1C). Under this article Members are obliged to afford owners of registered marks the exclusive right to prevent third parties from using in the course of trade identical or similar signs for identical or similar goods or services where such use would result in a likelihood of confusion, but that ‘[i]n [the] case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed'.
69 Cf LTJ Diffusion SA v Sadas Vertbaudet SA (C–291/00) [2003] ECR I–2799, I–2833 [50] (holding that the criterion of ‘identity’ between marks contained in the European Trade Marks Directive must be interpreted strictly and not in a manner that extends to cover those cases intended to be dealt with under the provision of the Directive dealing with similar marks where the further requirement of ‘likelihood of confusion’ needs to be established).
70 See generally Burrell and Handler, above n 9, 406–7 and the cases cited therein.
71 See generally Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590.
72 This also extends to rectification proceedings under s 88 if A's mark is already registered.
73 See generally Burrell and Handler, above n 9, 397–9 and the cases cited therein.
74 A similar problem is created if B applies for registration after A commences use, but is able to secure a priority date that predates A's first use because it made an earlier application for the mark in a Convention country (see s 29). Once B's mark is registered, A will not be able
75 take advantage of the s 124(1) defence. Although A is the first user, its first use would not predate B's date of registration (which, under s 72(2), becomes the filing date in the other Convention country). We thank one of our referees for drawing this to our attention.
Section 124(1) of the TMA can be understood in a similar vein. Whereas a party bringing an action in passing off must show sufficient reputation at the date the defendant commenced trading (see, eg, Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851; Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289, 302 (Gummow J)), the owner of a registered mark need only show it had the earlier use of the mark to ensure that a defendant cannot make out a prior continuous use defence under s 124(1).
See the discussion of the operation of s 124(1) of the TMA in Part 6.