The Law Handbook 2024

Chapter 7.7: Trade marks 771 A wholly descriptive trade mark (or one that has become descriptive of a type of goods, rather than indicating the source of those goods) may never acquire a sufficient reputation to found a successful passing off action, since other traders are entitled to use a descriptive term for their own similar goods or services. A third party has made a misrepresentation relating to the trade mark A misrepresentation may arise from using a competitor’s trade mark (or a deceptively similar mark) to suggest that particular goods or services are connected in trade channels with the true owner of the trade mark when that is not true. Indirect misrepresentation may also exist, where the goods or services are falsely associated in some way with the owner of the trade mark, but in either case the misrepresentation must be in the course of trade. The misrepresentation must generally lead to a likelihood of actual deception, although mere confusion has been sufficient in some cases. Misrepresentation has damaged the goodwill in the trade mark Damage to goodwill may include, for example, simple diversion of trade, or damage to the reputation of particular goods as being of a certain standard. The damage must be to the business of the trade mark owner (but this does not have to be a commercial business). Not-for-profit organisations may have goodwill associated with their activities and that goodwill may be damaged by passing off. Passing off and the Australian Consumer Law In some respects, a passing off action is similar to the concept of misleading or deceptive conduct under the Australian Consumer Law ( ACL ) (see Chapter 7.3: Consumer guarantees). Although the ACL is intended primarily to protect consumers, traders can take action against competitors under the ACL for misleading or deceptive conduct where the conduct relates to misuse of a trade mark. Passing off actions are often combined with actions for misleading or deceptive conduct. The owner of the trade mark must show that there has been misleading or deceptive conduct, or conduct likely to mislead or deceive. However, unlike a passing off action (where mere confusion may be sufficient), in an ACL action it must be shown that consumers have either actually beenmisled or deceived or are likely to be misled or deceived – mere confusion is not sufficient unless this leads to a consequent likelihood of consumers being misled or deceived. Because the ACL is intended to protect consumers, not traders, it is not necessary for the trade mark owner to demonstrate a likelihood of damage to their business. The misleading or deceptive conduct must occur in the course of trade. Registered trade marks Trade marks may be registered under the TM Act if they meet certain criteria. All ‘signs’ (see ‘What is a trade mark?’, above) may be accepted for registration if: • they are capable of distinguishing the trade mark applicant’s goods or services from similar goods or services of other traders; • they are not substantially identical or deceptively similar to trade marks that have already been applied for or registered; • they can be graphically represented; • they are not prohibited marks, or marks that would be scandalous, or marks the use of which would be contrary to law; • they are not likely to deceive or cause confusion. Examples of unusual registered trade marks include: • the sound of a band playing ‘Happy Little Vegemites’ registered in relation to food products; • the shape of a Bic ‘Cristal’ pen and cap. Applying to register a trade mark The application To apply to register a trade mark in Australia, an application must be submitted to the Australian Government department, IP Australia (you can apply online at www.ipaustralia.gov.au) . An application must provide details of the trade mark, the name and address of the trade mark applicant, and the goods and/or services for which registration is sought.