Same name, different companies: piggybacking off another's reputation and trade marks

Key Points:

Use your trade mark on goods in a regulated way so that a "substantial impression of identity" might arise on consideration of the mark

Foreign entities wishing to take action against Australian companies trading under the same name and effectively piggybacking off their reputation or name have been provided with a clear illustration of the difficulties that can be involved, following a recent Full Federal Court judgment (Optical 88 Ltd v Optical 88 Pty Limited [2011] FCAFC 130).

Background

The appellant is a Hong Kong company, which runs a well known chain of optical stores in the Asia-Pacific region under the business name "Optical 88". It has a significant reputation in Hong Kong. The first respondent is an Australian...