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O’Brien, Jackie --- "Unauthorised Use of Another’s Trade Mark: A View from Australia" [2006] ELECD 246; in Phillips, Jeremy (ed), "Trade Marks at the Limit" (Edward Elgar Publishing, 2006)

Book Title: Trade Marks at the Limit

Editor(s): Phillips, Jeremy

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845427382

Section: Chapter 18

Section Title: Unauthorised Use of Another’s Trade Mark: A View from Australia

Author(s): O’Brien, Jackie

Number of pages: 13

Extract:

18. Unauthorised use of another's trade
mark: a view from Australia1
Jackie O'Brien

INTRODUCTION
Many Australian trade mark lawyers read the latest European decisions on
third party use with interest but perhaps some antipodean bemusement. Their
bemusement arises from the fact that many of the most interesting cases on
trade mark infringement to emerge from European courts in recent years
would be dealt with simply in Australia and not as a matter of trade mark
infringement. Australians perceive that the difficulties associated with charac-
terising third party use as infringing or non-infringing simply do not arise in
their system. This chapter aims to test that assumption.
The primary reason why cases of descriptive use, use indicating product
compatibility and comparative advertising do not greatly concern Australian
trade mark lawyers is that such uses are not usually characterised as `use as a
trade mark'. Unlike legislation in Europe and the United States, Australian
legislation expressly requires `use as a trade mark' before third party use will
be characterised as infringing.2 Australian trade mark legislation also offers
broader defences to infringement than its foreign counterparts, particularly in
relation to comparative advertising.3
It would be wrong to assume, however, that the issues confronting
European courts in relation to third party use do not arise in Australia. They do
­ but, rather than being dealt with as a matter of trade mark infringement, they
arise in the context of the common law of passing off and consumer protection
legislation such ...