Step 3 Infringement, Deception and Confusion ? – S120 PAGE 554 – The integral difference between s44 and s120 is that under s44, a trademark is rejected on the basis that it is substantially or deceptively similar to an existing mark and therefore rejected under s120 there has been actual infringement. – S120 provides that a mark may be infringed in any one of ways: 120(1) By use of a sign which is substantially identical or deceptively – similar to the plaintiffs mark in relation to the goods or services in respect of which the trademark is registered. In determining whether the defendant has the plaintiffs registered trade “used” mark in a or manner which identical’ similar’ ‘substantially ‘deceptively would constitute infringement, it would be prudent to analyse both the statutory and common law definitions of these terms. is Identity’ ‘Substantial not defined in the Trade Mark Act 1995, and is measured subjectively through a which by side test’ the similarities and the differences of the ‘side ‘assesses Conversely, is defined by s marks essential features’. similarly’ ‘deceptively 10 and is solely based on terms of impression. Propositions set out by Kitto J in seek to Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd refine and extend these definitions further. As in the Australian Wine Importers Trade Mark 1989, ‘surrounding relating to the goods, as defined by Parker J in circumstances’ Pianotists Co’s are entirely different. This is further extended by Gault J findings in Appri, where it was implied that a direct Mainland Products Ltd V Bonlac Foods trade mark infringement can only occur for the use of a trade mark in the same class, and through an examination of (the) surrounding circumstances. ‘all The intention of any defendant to use a trade mark for description purposes only is irrelevant if its meaning gives no particular description of the ‘normal product’. Furthermore, the description illustrated in the evidence suggests that the likelihood of connection between the plaintiff and defendants markings would not be sufficient to indicate goods of a identical or deceptively ‘substantially nature. In this regard alone, s 120 (1) cannot be substantiated on any similar’ basis in the respect of a identical or deceptively similar’ by ‘substantially ‘side
Step 3 – Infringement, Deception and Confusion ? S120 – PAGE 554 The integral difference between s44 and s120 is that under s44, a trademark is rejected on the basis that it is substantially or deceptively similar to an existing mark and therefore rejected – under s120 there has been actual infringement. S120 provides that a mark may be infringed in any one of ways: 120(1) – By use of a sign which is substantially identical or deceptively similar to the plaintiffs mark in relation to the goods or services in respect of which the trademark is registered. In determining whether the defendant has “used” the plaintiffs registered trade mark in a ‘substantially identical’ or ‘deceptively similar’ manner which would constitute infringement, it would be prudent to analyse both the statutory and common law definitions of these terms. ‘Substantial Identity’ is not defined in the Trade Mark Act 1995, and is measured subjectively through a ‘side by side test’ which ‘assesses the similarities and the differences of the marks essential features’. Conversely, ‘deceptively similarly’ is defined by s 10 and is solely based on terms of impression. Propositions set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd seek to refine and extend these definitions further. As in Australian Wine Importers Trade Mark 1989, the ‘surrounding circumstances’ relating to the goods, as defined by Parker J in Pianotists Co’s Appri, are entirely different. This is further extended by Gault J findings in Mainland Products Ltd V Bonlac Foods where it was implied that a direct trade mark infringement can only occur for the use of a trade mark in the same class, and through an examination of ‘all (the) surrounding circumstances. The intention of any defendant to use a trade mark for description purposes only is irrelevant if its ‘normal meaning gives no particular description of the product’. Furthermore, the description illustrated in the evidence suggests that the likelihood of connection between the plaintiff and defendants markings would not be sufficient to indicate goods of a ‘substantially identical or deceptively similar’ nature. In this regard alone, s 120 (1) cannot be substantiated on any ‘substantially identical or deceptively similar’ basis in the respect of a ‘side by
Trademarks.docx