Trade Marks
| Author | Suzanne C Betink Byrne |
| DOI | 10.1177/0067205X8701700403 |
| Published date | 01 December 1987 |
| Date | 01 December 1987 |
| Subject Matter | Article |
TRADE MARKS
SuzANNE
C
BETINK
BYRNE*
INTRODUCTION
Subject to this Act, the registration
of
a trade mark in Part A or Part B
of
the
register, if valid, gives to the registered proprietor
of
the trade mark the right
to
exclusive use
of
the trade mark
in
relation
to
the goods or services in respect
of
which the trade mark
is
registered and
to
obtain relief in respect
of
infringement
of
the trade mark in the manner provided by this Act. 1
The Australian scheme
of
Intellectual Property Law includes the registration
and protection
of
trade marks pursuant to the Trade Marks Act I955 (Cth) (the
Act).
Section 58(1)
of
the Act, reproduced above, grants the right to exclusive use
of
the registered trade mark to the registered proprietor. Section 62(1) deems that
such a trade mark is infringed as follows:
A registered trade mark
is
infringed
by
a person who, not being the registered
proprietor
of
the trade mark or a registered user of the trade mark using
by
way
of
permitted use, uses a mark which
is
substantially identical with, or deceptively
similiar to, the trade mark,
in
the course
of
trade,
in
relation
to
the goods or services
in
respect
of
which the trade mark
is
registered. 2
Section 62(1) is not, however, the only basis upon which an action for
infringement may be brought -the High Court
of
Australia has held,
in
Mark
Foy' s Limited v Davies Coop and Company Limted3 that where the registered
trade mark has been used by a person other than the registered proprietor, the
Court need look no further than s 58(1). 4
This decision has given rise to some recent judicial controversy as to whether
s 58(1) applies in its own right only where the mark used by the infringing party
is the same as the registered trade mark, or extends to situations where the
infringing party's mark merely includes that trade mark as part
of
a larger mark.
However, as the Courts have been able to conclude actions brought to date by
reference to alternative provisions, the issue awaits judicial definition.
As this is an issue which could forseeably have substantial implications
in
the
market place, it
is
contended that any Court which may decide the issue
in
the
future should have regard not only to the words
of
ss 58( I) and 62( I) and the
judgments
of
the Court in the Mark Foy
caseS,
but also to the historical and
philosophical basis
of
the Act and the way
in
which it applies to society
of
the
present day.
In this regard, I propose to consider the judicial consideration given to 58( I)
in
its own right in order to establish both the extent
of
its application and whether
* BA, LLB (Hons)
1 Section 58(1) Trade Marks Act 1955 (Cth)
2
It
may
be
noted that the word "mark" rather than "trade mark" is used in parts
of
this subsection.
Although this may seem to be
of
significance, it is contended that
it
is merely the draftsman's means
of
distinguishing between the registered "trade mark" the the alleged infringing "mark".
3 (1956) 95 CLR 190.
4 Ibid 204 per Williams 1 (with whom Dixon CJ agreed).
5 Supra, n
3.
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