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Reputation in Trade Mark Infringement: Why Some Courts Think it Matters and Why it Should Not

Published online by Cambridge University Press:  24 January 2025

Mark Davison
Mark Davison*
Affiliation:
Monash University; Knightsbridge Lawyers
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Extract

Australian case law on infringement of registered trade marks has placed an increasing emphasis on the reputation of the owner of the registered trade mark in determining whether infringement has occurred. Consideration of the trade mark owner’s reputation has been included in determining whether the sign used by the defendant is deceptively similar to the registered trade mark and, more recently, in determining whether the defendant has used its allegedly infringing sign ‘as a trade mark’. Neither development is consistent with either the law relating to registered trade marks or the underlying policy reasons for the system of registration. This article discusses the case law which has introduced the tendency of the courts to consider the reputation associated with an owner of a registered trade mark in determining infringement proceedings, the reasons why such an approach is not consistent with the legislation nor with the rationale underlying our registered trade mark system.

Type
Research Article
Information
Federal Law Review , Volume 38 , Issue 2 , June 2010 , pp. 231 - 253
Copyright
Copyright © 2010 The Australian National University

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References

1 Robert, Burrell and Michael, Handler, ‘The Intersection between Registered and Unregistered Trade Marks’ (2007) 35 Federal Law Review 375Google Scholar.

2 For the purposes of this article, passing off and related statutory causes of action such as those relying on s 52 of the Trade Practices Act 1974 (Cth) will be treated as identical. See Mark, Davison, Kate, Johnston and Patricia, Kennedy, Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, 2008) 823–31Google Scholar.

3 (1915) 84 LJ Ch 449.

4 Spalding v Gammage (1915) 84 LJ Ch 449, 284–5.

5 In Australian law, the relevant inquiry is whether the plaintiff has a reputation associated with the trade mark in question rather than a goodwill. The former does not require the plaintiff to have traded in the relevant jurisdiction. See Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302.

6 (1980) 2 NSWLR 851.

7 Ibid 444.

8 Ibid 444–6.

9 Pub Squash Case (1980) 2 NSWLR 851, 475–84.

10 Ibid 484.

11 Ibid 483.

12 Ibid 435.

13 See, eg, Andrew, Griffiths, ‘A Law and Economics Perspective on Trade Marks’ in Lionel, Bently, Jennifer, Davis and Jane, Ginsburg (eds), Trade Marks and Brands: An Interdisciplinary Critique (2008), 241, 255Google Scholar. See also the comments of Gummow J (then of the Federal Court) in Wingate Marketing Pty Ltd v Levis Straus (1994) 49 FCR 89, [11]–[17].

14 In particular, ss 20, 21, 22 and 120 of the Trade Marks Act 1995 (Cth).

15 (1991) 30 FCR 326.

16 Ibid 332.

17 Ibid.

18 (1999) 96 FCR 107.

19 Ibid 115-6.

20 Most of the decisions considered in this article are Federal Court decisions and, as such, the correct terms are ‘applicant’ and ‘respondent'. For the sake of consistency, the terms ‘plaintiff’ and ‘defendant’ are used to refer to the ‘applicant’ and the ‘respondent'.

21 Registered Trade Mark No 63697.

22 Coca-Cola Co v All-Fect Distributing Co trading as Millers Distributing Co [1998] FCA 1638 (Unreported, Merkel J, 18 December 1998).

23 Ibid.

24 (1963) 109 CLR 407.

25 Coca-Cola Case (1999) 96 FCR 107, 115-6.

26 [2009] FCA 1299.

27 Ibid [155].

28 Another example of the point may be the decision in Pepsico Australia Pty Ltd (trading as Frito-Lay Australia) v The Kettle Chip Co Pty Ltd (1996) 135 ALR 192 where evidence was led that the term ‘kettle’ in respect of potato crisps referred to a particular style of cooking of crisps resulting in a particular texture and flavour. Evidence as to the descriptive use of ‘kettle’ was relevant to determining whether the defendant was using ‘kettle’ as a trade mark or in its descriptive meaning.

29 Under the Trade Marks Act 1955 (Cth) which was the relevant legislation for the Shell Oil Case, a trade mark could not be registered unless it had at least some inherent distinctiveness.

30 Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (1999) 91 FCR 167, 182-3.

31 Trade Marks Act 1995 (Cth) ss 41, 88.

32 See generally Burrell and Handler, above n 1.

33 (2000) 100 FCR 90.

34 There were other allegations that part of Remington's packaging also infringed the trade mark but these are not relevant for present purposes.

35 See, eg, the first instance decision, Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (1999) 91 FCR 167, 178-9.

36 See, eg, ibid 204 [111] and 206 [117], and the appeal decision Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited (2000) 100 FCR 90, 116.

37 See, eg, E & J Gallo Winery v Lion Nathan Australia Pty Limited (2009) 175 FCR 386, 409 [78].

38 Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 414–5.

39 Section 10 of the Trade Marks Act 1995 (Cth).

40 See, eg, Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 539.

41 (1937) 57 CLR 115.

42 Ibid 121–2.

43 (1999) 93 FCR 365.

44 Woolworths Ltd v Registrar of Trade Marks [1998] FCA 1268.

45 Ibid 14.

46 Registrar of Trade Marks v Woolworths (1999) 93 FCR 365, 386 [61].

47 Ibid 395 [104].

48 Ibid 394 [98]–[100].

49 Burrell and Handler, above n 1.

50 [2009] FCA 606 (Unreported, Perram J, 5 June 2009).

51 Ibid [97]–[98].

52 See, eg, William, Landes and Richard, Posner, The Economic Structure of Intellectual Property Law (2003)Google Scholar ch 7; Griffiths, above n 14, 246. ‘Trademark law … aims to promote rigorous, truthful competition in the marketplace by preserving the clarity of the language of trade': Stacey, Dogan and Mark, Lemley, ‘A Search-Costs Theory of Limiting Doctrines in Trademark Law’ in Graeme, Dinwoodie and Mark, Janis (eds), Trademark Law and Theory: A Handbook of Contemporary Research (2008) 65, 69Google Scholar.

53 Coca-Cola Case (1999) 96 FCR 107, 123.

54 Ibid.

55 See Registered Trade Mark No 63697 which is a contour drawing of a bottle without any mention of or reference to colour or words.

56 [2000] FCA 1539 (Unreported, Ryan, Branson and Lehane JJ, 31 October 2000).

57 Ibid [53].

58 Ibid [52].

59 Ibid [53].

60 John, Dyson Heydon, Cross on Evidence (8th ed, 2010)Google Scholar [3025].

61 Brisbane City Council v Attorney-General for Queensland [1979] AC 411, 423.