Key case considers important trademark issues

Trademarks are an important feature of many modern businesses, establishing a business's presence in a market by assisting it to be recognisable to consumers in that market.

The Trade Marks Act 1995 (Cth) (the Act) enables a person or business to protect, by way of registration, a sign that is 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 sign can include a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

Section 120 of the Act provides that a person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

A key feature of registration of a trade mark under the Act is that a business's interests in and rights to that trade mark are automatically protected by reason of that registration. This can bring considerable commercial advantage when one seeks to enforce its rights in a mark, as the elements needed to be proved under the Act are significantly less onerous than those in the actions of passing off (in tort) or misleading and...