Trade Mark Infringement

Broadly, trade mark infringement occurs when a trade mark which is substantially identical or deceptively similar to a registered trade mark is used in respect of goods or services for which the trade mark is registered. In some circumstances, this can extend to use in respect to closely related services and goods of the same description to those for which the mark is registered.
A trade mark is deceptively similar to another trade mark if it so nearly resembles the other trade mark that it is likely to cause confusion or deceive. Infringement only applies where a word or device is used as a trade mark or in a trade mark context acting as a “badge of origin” for the goods or services in relation to which it is used.

The question of deceptive similarity is not to be judged by a side by side comparison. What is involved is a comparison, on the one hand, of the impression based on recollection of the one mark that persons of ordinary intelligence would have and, on the other, the impression such persons would get from the other mark. In assessing the recollection of a mark allowance must be made for the frailty of human memory and this means that, when it comes to considering whether one mark so nearly resembles another that it is likely to cause confusion or deception, account must be taken of the imperfect nature of recollections.

In relation to whether a trade mark is used as a badge of origin the changing landscape created by the Internet has extended the category of badges of origin, especially in the field of domain names. The Federal Court firstly, has observed that the registration of a domain name may in certain circumstances constitute trade mark infringement.

In cases where a trade mark is not used on the goods covered by the trade mark registration, but is used on related goods then in order to get to first base in any infringement action it must be established that such goods are goods of the same description to those of the registered mark. Here again the Internet, with the changes it has made to the retailing scene, has created difficulty in this area.

There are a number of defences and possible cross actions to an infringement action involving trade marks. There are also actions that can be taken to protect unregistered marks. CHRYSLEGAL’s attorneys have used such measures in proceedings and a detailed examination of all avenues in such proceedings can prove to be of vital importance.