Docstoc

Trademarks Function of a Trademarks – Page 498 The high court

Document Sample
Trademarks Function of a Trademarks – Page 498 The high court Powered By Docstoc
					Trademarks
Function of a Trademarks – Page 498
     1. The high court recognises the broader cultural significance in the modern era such
        that they can „play a significant role in ordinary public and commercial discourse,
        supply vivid metaphors and compelling imagery disconnected with the traditional
        function of marks to indicate source or origin of goods‟.
            a. Campomar Sociedad, Limitada v Nike International Ltd



Step 1 – Is the Trademark Registrable ?
     1. S17 – A sign used or intended to be used to distinguish goods or services dealt with or
        provided in the course of trade by a person from goods or services so dealt with or
        provided by any other person.
           a. A „sign‟ includes any letter, word, name, signature, numeral, device, brand,
               heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or
               any combination of these things.

Elements of the s17 definition
A sign
     1. A sign is defined to include several product attributes (shape, colour, sound and scent
        etc) that has not previously been recognised as the basis for a mark.

Distinctiveness

     2. The mark must be distinctive of the applicants product.
           a. S41(2) – An application be rejected if the trademark is not capable of
              distinguish the applicants goods or services in respect of which the mark is
              sought to be registered.

                b. Distinctiveness - The concept of distinctiveness is familiar to the one of
                   passing off. The whole question of whether a trader can succeed in passing off
                   revolves around providing protectable goodwill in mark or in some other
                   indicium of reputation. Distinctiveness has two aspects, acquired and inherent
                   ability to distinguish.
                        i. Acquired – Acquired capability to disntugish comes from use of the
                            trademark in the marketplace, in the same way that a reputation is
                            generated for the purpose of an action in passing off.




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
                          ii. Inherent – Inherent ability to distinguish requires something about the
                              mark itself which makes it unique in the content of its application to
                              the applicants goods or services.

                c. MID Sydney Ptd Ltd v Australian Tourism Co Ltd
                      i. In deciding the question of whether or not a trademark is capable of
                         distinguishing the designated goods or services from the goods or
                         services of other persons, the Registrar must fire take in to account the
                         extent to which the trade mark is inherently adapted to distinguish the
                         designated goods or services from the goods or services of other
                         persons.


Are names and signatures distinctive ? - PAGE 521

     1. Names
          a. The representation has to be „sufficiently out of the common to strike the eye as
              being peculiar, and by peculiar I mean not likely to occur to somebody who
              merely wishes to represent the word‟.
                   i. Standard Camera Ltds Application
          b. A person whose name is used in a mark might be a company or other business
              entity as well as an individual and their full name must appear.

     2. Signatures
           a. A signature could be registered so long as it was genuinely that of the
               application and was legible and the one normally used by the applicant or the
               applicants predecessor in business.
                    i. Re Application by Belle Jardiniere
                   ii. Barry Artist Trademark

Are invented words distinctive ? - PAGE 522

     1. An invented word must be „clearly and substantially different from any word in
        common use‟
           a. Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd

     2. This infers that a word which was new in the sense of not appearing in any dictionary
        would not be „invented‟ if it had a meaning apparent to the section of the community
        concerned to buy the goods or use the services for which the word was to be used as a
        trademark.




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
Are descriptive words distinctive ? - PAGE 523

     1. If a mark does no more than describe the type or quality of product on offer, it cannot
        fulfil the function of indicating the origin of that product. This includes descriptive
        pictures and devices including sets of initials.
             a. Pictures – Eclipse Sleep Products Inc v Registrar of Trademark
             b. Devices – Re Brandella Pty Ltd

     2. Mark Foys Ltd v Davies Coop & Co LTd
          a. Tub Happy trademark
          b. High court found it to be valid suggesting:
                  i. „They have an emotive tendency, but they do not appear to convey any
                     meaning or idea sufficiently tangible to amount to a direct reference to
                     the character or quality of the goods.‟

     3. Acquired descriptiveness through use –
           a. S41(6) – Marks may be registered if they have acquired distinctiveness
               through use.
                   i. Blount v Registrar of Trademarks
                          1. Evidence was presented that the applicant had used the mark in
                             one form or another since before 1960 and that its products had
                             been strongly promoted under that name and the general public
                             had a solid understanding that power tools were associated with
                             that name.

Are geographical words distinctive ? - PAGE 526

     1. A geographic name is one where the primary and obvious meaning of a word supplies
        a reference to locality.
            a. Magnolia Metals Co Trade mark
                    i. „a word does not become a geographical name simply because some
                        place upon the earths surface has been called by it‟

     2. There is no express restriction upon the registration of geographic names in the 1995
        Act however such names are obvious examples of non-distinctive marks and in most
        cases will be rejected under s41(2).

     3. A trader who appropriates a place name as a trade mark may deny it to others who are
        quite legitimately wishing to use the name to indicate the source of their goods.




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
Are surnames distinctive ? - PAGE 527

     1. S24(1)(d) – According to their ordinary meaning, surnames are not registrable.

     2. As a general practice, the Registrar will raise no objective to a surname that shows up
        less than 750 times in the SFAS (Search for Australian Surnames)
            a. Trademarks Manual of Practice and Procedure

Are shapes distinctive ? - PAGE 528

     1. S6 – The inclusion of terms such as „shape‟ and „aspect of packaging‟ in the
        definition of „sign‟ in s6 suggest that shapes are now registrable.
            a. Coca-Colas Trade Marks –
                    i. Accepted the application for the shape of the bottle

     2. Kenman Kandy Australia Pty Ltd v Registrar of Trademarks
           a. Millennium Bug Candy
                  i. Lindgren J is not convinced that a shape mark can ever be inherently
                     distinctive because consumers would not tend to think of the shape of
                     goods as signifying their origin.

Are colours distinctive ? - PAGE 529

     1. Registration of colours as trademarks does not overcome the difficulty in establishing
        distinctiveness, especially for a single colour as opposed to a combination.
            a. Philmac Pty Ltd v Registrar of Trademarks
                     i. An application as made for the colour terracotta in relation to fittings
                        for irrigation pipes and was accepted.
                    ii. It chose this colour to deliberately distinguish its goods from those of
                        others.
                   iii. Mansfield J:
                            1. A colour would not be inherently distinctive if it served a
                                 utilitarian function or conveyed a recognised meaning
                            2. Inherent distinctiveness would be lacking where there was a
                                 proven competitive need for the colour in the sense that other
                                 traders might legitimately want to use it.




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
Used or intended to be used – Page 505
     1. S7(4) – States that a reference to the use of a mark in relation to goods means to use
        the mark upon those goods or in physical or other relation to them.
            a. S7(5) – Similarly for services.
            b. Mark Foy‟s Ltd v Davies Coop & Co Ltd where it was determined that
                     „trademarks used in a comparative sense, are not considered to be have been
                     used as trademarks‟, or more succinctly, if use of a trade mark is not intended
                     to „indicate the origin of goods or services‟ then there is no infringement.


     2. The property in a mark arises from use or proposed use. In order to apply for
        registration of a mark, an applicant must satisfy one of three criteria set out in
        s27(1)(b):
                     i. That the applicant is using or intends to use the mark in relation to the
                        relevant goods or services;
                    ii. That the applicant has authorised or intends to authorise another‟s use
                        of the mark in relation to those goods or services; or
                   iii. That the applicant intends to assign the mark to a body corporate that is
                        about to be form, with a view to the use by that company of the trade
                        mark in relation to the goods or services.


Distinguish goods or services – Page 507
     1. Trademarks have no life of their own and it is only when used to „distinguish‟ goods
        or services that they fall within the definition of s17.

     2. In order to distinguish goods and services, it is required that they are „distinctive‟ as
        referenced above.



Dealt with or provided in the course of trade – Page 507
     1. The connection in the course of trade which a trade mark indicates is a connection
        between the relevant goods or services and the person who has the right to use the
        mark, either as a proprietor or authorised user.

     2. Aristoc Ltd v Rysta Ltd
            a. The essential nature of a trademark is that it gives an indication of the origin
               and not that someone has dealt with a product in some other way. If the mark
               does no more than indicate by whom or where the product was originally
               made, then the necessary connection will not be established.


Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
Step 2 – Process of Registration ?
General

     1. S19(1) – A trademark may be registered in respect of goods, services or both goods
        and services.

     2. s20(1) – “when a trade mark is registered, the registered owner of the trade mark
        obtains the exclusive right to use the trade mark and to authorise other persons to use
        the trade mark”.

Decision to Accept or Reject – Page 513
     1. S33(1) – Application must be accepted unless the registrar is satisfied that the
        application has not been made in accordance with the Act, or that there is suitable
        grounds for revocation.

     2. The grounds for rejection include:
           a. S10 – Is already on the registrar ?
           b. S39 – Consists of certain prescribed signs
           c. S40 – Cannot be presented graphically
           d. S41 – Lacks distinctiveness
           e. S42 – Is scandalous or contrary to law
           f. S43 – Is likely to deceive or cause confusion because of some connotation in
               the mark or because its similarity to another registered mark (s44).

S44 – Similarity to other Registered Marks **IMPORTANT** PAGE 531

     1. To invoke s44:
            a. There must be another mark which has already been registered or for which
               registration has been sought, and which has an earlier priority date.
            b. The mark must be „substantially identical‟ or „deceptively similar‟ to the
               applicants mark;
            c. If the applicants mark is to be registered in respect of goods, the registration or
               application for registration for the other mark must be in respect of „similar
               goods or closely related services‟ (s44(1));
            d. If a service mark is involved, apply the above logic to services s44(2).




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
Substantial identity or deceptive similarity - PAGE 532

     1. S10 – deems this to exist when one mark so nearly resembles the other that it is likely to
        receive or cause confusion.

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

Propositions set out by Kitto J include:

                           i. To show that a trade mark is deceptively similar to another it is necessary to
                              show a real tangible danger of deception or confusion occurring. A mere
                              possibility is not sufficient.

                          ii. A trade mark is likely to cause confusion if the result of its use will be that a
                              number of persons are caused to wonder whether it might not be the case that
                              the two products or closely related products and services come from the same
                              source. It is enough if the ordinary entertains a reasonable doubt.

                         iii. In considering whether there is a likelihood of deception or confusion all
                              surrounding circumstances have to be taken into consideration. These
                              include the circumstances in which the marks will be used, the circumstances
                              in which the goods or services will be bought and sold and the character of
                              the probable acquires of the goods and services.

                          iv. The question of deceptive similarity must be considered in respect of all
                              goods or services coming within the specification of the application and in
                              respect of which registration is desired, not only in respect of those goods or
                              services on which it is proposed to immediately use the marks. The question
                              is not limited to whether a particular use will give rise to deception or
                              confusion. It must be based upon what the applicant can do if registration is
                              obtained.

Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50

“Deceived” implies the creation of an incorrect belief or mental impression and “causing
confusion” may go no further than perplexing or mixing up the minds of the purchasing
public. Where the deception or confusion alleged is as to the source of the goods, deceived is
equivalent to being misled into thinking that the goods bearing the applicants mark come
from some other source and confused to being caused to wonder whether that might not be
the case”


S44(3) – Honest concurrent use

     1. S44(3)(a) permits the Registrar to accept the registration by different proprietors of
        substantially identical or deceptively similar marks where there has been honest
        concurrent use of those marks, subject to any conditions or limitations the Registrar
        might choose to impose.




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
Step 3 – Infringement, Deception and Confusion ?
S120 – PAGE 554
     1. The integral difference between s44 and s120 is that under s44, a trademark is
        rejected on the basis that it is substantially or deceptively similar to an existing mark
        and therefore rejected – under s120 there has been actual infringement.

S120 provides that a mark may be infringed in any one of three ways:

                a. 120(1) – By use of a sign which is substantially identical or deceptively
                   similar to the plaintiffs mark in relation to the goods or services in respect
                   of which the trademark is registered.
                b. In determining whether the defendant has “used” the plaintiffs registered trade
                     mark in a „substantially identical‟ or „deceptively similar‟ manner which
                     would constitute infringement, it would be prudent to analyse both the
                     statutory and common law definitions of these terms. „Substantial Identity‟ is
                     not defined in the Trade Mark Act 1995, and is measured subjectively through
                     a „side by side test‟ which „assesses the similarities and the differences of the
                     marks essential features‟. Conversely, „deceptively similarly‟ is defined by s
                     10 and is solely based on terms of impression. Propositions set out by Kitto J
                     in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd seek to
                     refine and extend these definitions further.
                c. As in Australian Wine Importers Trade Mark 1989, the „surrounding
                     circumstances‟ relating to the goods, as defined by Parker J in Pianotists Co‟s
                     Appri, are entirely different. This is further extended by Gault J findings in
                     Mainland Products Ltd V Bonlac Foods where it was implied that a direct
                     trade mark infringement can only occur for the use of a trade mark in the same
                     class, and through an examination of „all (the) surrounding circumstances.
                     The intention of any defendant to use a trade mark for description purposes
                     only is irrelevant if its „normal meaning gives no particular description of the
                     product‟.
                d. Furthermore, the description illustrated in the evidence suggests that the
                     likelihood of connection between the plaintiff and defendants markings would
                     not be sufficient to indicate goods of a „substantially identical or deceptively
                     similar‟ nature. In this regard alone, s 120 (1) cannot be substantiated on any
                     „substantially identical or deceptively similar‟ basis in the respect of a „side by

Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
                     side‟ or „impression‟ tests as in Shell Co Aust Ltd v Esso Standard Oil Aust
                     Ltd. Furthermore, the description illustrated in the evidence suggests that the
                     likelihood of connection between the plaintiff and defendants markings would
                     not be sufficient to indicate goods of a „substantially identical or deceptively
                     similar‟ nature.

S120(2) – By use of a substantially identical or deceptively similar sign on goods or
services not covered by the registration but which are nonetheless ‘of the same
description’ or ‘closely related’, unless it can be establish by the defendant that such use
if not likely to deceive or cause confusion.

                a. s 120 (2) specifically implies that if there is no intention to deceive or cause
                     confusion, then there is no infringement. In applying the tests from John
                     Crowther & Sons (Milnsbridge) Ltd Appn which determined whether two
                     products serve the same purpose.......................... - since the two products do
                     not serve the same purpose as each other and nor are they usually produced by
                     one and the same manufacturer.
                b. Thus, as highlighted in Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, the
                     degree to which a “person of ordinary intelligence and memory” is likely to
                     be confused in this instance, is decisively non-existent. It is in this regard, that
                     the plaintiff cannot rely on the pretences set in s 120 (2) as reasonable grounds
                     for infringement.




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
S120(3) – By use of a substantially identical or deceptively similar sign on unrelated
goods or services, but only where the plaintiffs mark is so well known in Australia that
the sign would be likely to be taken as indicating a connection between the unrelated
goods or services and the registered owner of the trade mark, such that the owners
interests are likely to be adversely affected.

     a. Finally, the first plaintiff has also brought action under s 120 (3) regarding a plausible
          “trade connection” between the product and its “well known trademark on unrelated
          goods or services”.
     b. Is there a distinctive trading presence ? If so, to what degree would the product
          cause confusion in the market place ?
                a. This was illustrated in the McIllhenny Company v Blue Yonder Holdings Ltd
                     where there was an “absence of representation of connection between (the
                     plantiff) and the defendant”. The degree to which the plaintiff is known by a
                     “person of ordinary intelligence and memory” for Class 33 goods is distinctly
                     non-apparent, and it is in this sense that s 120 (3) also holds no reasonable
                     grounds for infringement.




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
Tort of Passing Off – Page 424
The broad actions taken under the Tort of Passing Off are designed to prevent a trader from
damaging another traders reputation or goodwill in the sense of causing potential customers
to associate one traders product or business with another‟s where no such connection exists
and this is extended, but not limited to, the „get-up‟ of the product as well as its general
appearance. Passing off has been comprehensively defined by Lord Oliver in Reckitt &
Colman Products Ltd v Borden Inc, and extended by Pearl J in Moorgate Tobacco Co Ltd v
Philip Morris Ltd. It‟s relevance in this case is derived from the plaintiffs belief there has
been a misappropriation made during the course of trade that is sufficient enough to mislead
or confuse a consumer, and as a consequence, would damage the plaintiffs goodwill or
reputation in the marketplace. In Hogan v Koala Dundee Pty Ltd, Pincos J suggested that
there are 3 main tests the must be satisfy to prove passing off. Typically, there is casual
connection between the 2nd and 3rd tests such that if the second test occurs, then the third is
going to as well:

         The plaintiff‟s goods/business have an established reputation;
         The defendant‟s actions will cause purchasers to believe the defendant‟s
          goods/business is that of the plaintiff; and
         The plaintiff has suffered, or is likely to suffer, damage.

First Element – Reputation – PAGE 425

The first element of passing off requires that the plaintiff must have a sufficient reputation in
the market place for misrepresentation or damage to actually occur. ConAgra Inc v McCain
Foods (Aust) Pty Ltd highlighted that it is not necessary to prove specific reputation within an
industry exists, if a broad reputation is already evident. As in Emrik Sporting Goods Pty Ltd
v Stellar International Sporting Goods Pty Ltd, passing off must establish that that (if)
members of the public had purchased a product, or were likely to do so, in the belief that it
emanated from a particular (other) source.

Definition

Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 at 406.

Lord Oliver:

     1. The trader‟s get-up, including the brand name or business name, is recognised by the
        public as distinctive (ie the trader has established a reputation);
     2. There has been a misrepresentation by the defendant to the public (whether or not
        intentional) leading or likely to lead the public to believe that the goods or services
        offered by the defendant are the plaintiff‟s goods or services;4 and



Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
     3. The plaintiff suffered, or is likely to suffer, damage by reason of the erroneous belief
        engendered by the defendant‟s misrepresentation that the source of the defendant‟s
        goods or services is the same as the source of those offered by the plaintiff.

If reputation exists:

     1. The Targetts Pty Ltd v Target decision can be reflected appropriately in this case
          since the defendant already has a well established reputation in the Australian wine
          industry.
     2. Any further contention presented by the plaintiff in respect of damage to their
          reputation by the defendants use of the word „Virgin‟, can be argued by means of
          „descriptive material‟ as highlighted in BM Auto Sales Pty v Budget Rent A Car
          Systems Pty Ltd

Second Element – Intention to Deceive - PAGE 427

     1. Passing off can still occur where, as suggested in A G Spading & Bros v A W
          Gamage LTD, the “defendants conduct has misled, deceived or confused a significant
          number of persons in the market place”.
     2. The description provided of the defendants product, is substantially different from the
          established insignia of the plaintiffs products and reputation. The ability for a “person
          of ordinary intelligence and memory” to be “misled, deceived or confused” in the
          market place is both non-apparent and unfounded. The defendant has produced a
          clearly distinguishable item, and as decided in Cadbury Schweppes Pty Ltd v Pub
          Squash Co Pty Ltd, there is no possibility of “relevant misrepresentation in the sense
          that customer, or potential customers, (would be) led by similarities in the get-up and
          advertising of the two products into believing that the (plaintiffs) products were the
          (defendants) products”. In direct contrast to the Sydneywide Distributors Pty Ltd v
          Red Bull Australia Pty Ltd case, the defendant is in no way attempting to „deceive or
          mislead‟ the public by using the plaintiffs existing reputation or „get-up‟.




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
S52 of the TPA – Page 447
S52 -

     1. A corporation shall not, in trade or commerce, engage in conduct that is misleading or
          deceptive or is likely to mislead or deceive.
     2. Nothing in the succeeding provisions of this Division shall be taken as limiting by
          implication the generality of sub-section 1.

‘a corporation’ – Page 447

     1. As defined by s6 of the Act to mean a natural person or business entity, where the
          conduct is carried on interstate, or with overseas trade or involving a terrority or
          through the use of postal, telegraphic or telephonic services.

‘in trade or commerce’ – Page 448

     1. Re-Ku-ring-gai Co-operative Building Society Ltd
                a. The terms „trade‟ and „commerce‟ are not terms of art. They are expressions
                     of fact and terms of knowledge .... The terms are clearly of the widest
                     import...as being at arms length in the sense that they are within open markets
                     or between strangers or have a dominant objective of profitability‟

‘engage in conduct that is misleading or deceiving’ – Page 448

     1. S4(2) – The phrase „engage in conduct‟ is defined very broadly so that for instance
          even inadvertent omissions are included.
     2. No definition of „misleading or deceiving‟ is provided but the basic notion is clear:
                a. Weitmann v Katies Ltd
                           i. Conduct is misleading or deceptive if it „leads to error‟ or is likely to
                                do so.
     3. As described in Hutchence v South Sea Bubble Company
                a. Who is the person being engaged by the corporation ?
                           i. Is the message to this person likely to cause confusion or lead to error ?
                          ii. If it is, then it is misleading and deceptive conduct




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
Step 4 – Are there any defences for Trademarks ?
Good Faith – PAGE 564

     1. S122(1)(a) - Use in good faith of the defendants own name or place of business or a
        predecessors name or place of business.
           a. Good Faith – As defined in Baume & Co Ltd v A H Moore Ltd
                 i.   „ If the defendant honestly believes no confusion will arise and are not
                      intending to wrongfully divert business‟

     2. S122(1)(b) – Use in good faith of a description of the character or quality, intended
        purpose, geographical origin or some other characteristic of the defendants goods or
        services.
            a. Britt Allcroft LLC v Miller –
                  i.   Some objective description of the goods or services or of a feature of
                       the goods or services by reference to commonly used and understood
                       qualities.

     3. S122(1)(c) – Use in good faith to indicate the intended purpose of goods or services in
        particular use of goods as accessories or spare parts.

Reputation

     1. S122(1)(f) - Use of a mark, or of a substantially identical or deceptively similar mark,
        by a person who the court believes would obtain registration of that mark in their own
        name if they applied.

Descriptive Use

     1. Generic use of a registered trade mark in such a way as to avoid infringement occurs
        when a word or phrase „is capable of being read as descriptive of a characteristic
        quality or function of the goods in question‟.
           a. Top Heavy Pty Ltd v Killin

     2. Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd
           a. The use of „Kettle Cooked‟ in relation to potato chips did not infringe the
               mark Kettle.

For similarity in Product Shape – See page 559




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.
Step 5 – Remedies and/or Damages ?
Remedies for Trademarks – PAGE 565

General

     1. S126(b) – Where infringement is establish, a court may grant an injunction and either
        damages or an account of profits at the plaintiffs option.

Action for Threats

     1. S129 – As with copyrights and patents, it is unlawful to threaten that infringement
        will be instituted.
            a. Note: If infringement proceedings are commenced after much due diligence
                then it is acceptable to institute that infringement will be instituted.
                     i. Dial-An-Angel Pty Ltd v Sagitaar Services Systems Pty Ltd

Criminal Liabilities

     1. s145- Falsifying a mark or unlawfully removing a mark and applying a mark to goods
        or services without authorisation to do so (s146).

     2. S148 – Prohibition of commercially dealing with goods knowing that, reckless or not,
        a falsified mark has been applied or a mark has been removed or a mark has been
        falsely applied.

Remedies for Passing Off – PAGE 435

     1. Principle remedies for passing off are that the defendant is restrained from engaging
        or continuing to engage in the conduct which has triggered the suit.
     2. Besides the injunction the relief, ancillary orders may sometimes be granted such as
        for the transfer to the plaintiff of the right to use a particular name.
            a. As in the instance that domain names have been improperly used
            b. Australian Home Loans Ltd v Phillips

Remedies for S52 TPA - 450

     1. S52 does not attract criminal liabilities but a range of civil remedies are available.
           a. S82 – A person who has suffered loss or damage as a result of contravention
              may recover damages in respect of that loss from the contravener or from any
              person involved in the contravention.
           b. S87 – Injunctions or damages or at the discretion of the court, including
              potential losses that could result from the future activities because of
              infringement.




Notes by All Things Law – http://law.timdavis.com.au - A Law Forum to discuss everything about Studying Law - from Law Subjects, Notes
and Questions to Law Clerkships and Jobs.

				
DOCUMENT INFO
Shared By:
Categories:
Tags:
Stats:
views:37
posted:1/21/2011
language:English
pages:15