Property Law - Trademark Infringement

Running head: PROPERTY LAW
PROPERTY LAW
Name of the Student
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1PROPERTY LAW
Issue
The issue concerning this present scenario is considered to be whether there has been any
kind of trademark infringement
Rule
Section 17 of the Trade Marks Act 1995 (Cth)1 defines trade mark as a sign which is used
or is intended to be used in order to distinguish and differentiate the goods or the services which
have been dealt with in the course of trade by any individual from any other goods or services
which have been provided by some other individual.
A registration of trademark can be challenged on the ground that such use of trademark is
confusing and deceptive. Under section 43 of the Act2 is applicable to the use of a mark, which is
considered to deceive or cause some kind of confusion. Under section 44 of the Act3, it has been
explained that the deception or the confusion must ascend due to the similarity with another
mark, which has been registered and has a priority date, which has been registered earlier.
Section 60 of the afore-mentioned Act discusses the reputation which has been acquired by a
mark in Australia and based on such mark a similar trademark has been applied for which would
be causing deception or confusion. In order to invoke the section 444 as a ground for the rejection
a mark must be under application or it must be already registered which would have an earlier
priority date and such mark needs to be substantially similar or identical and deceptively similar
to the mark.
1 s.17 Trade Marks Act 1995 (Cth).
2 s.43 Trade Marks Act 1995 (Cth).
3s.44 Trade Marks Act 1995 (Cth).
4 s.44 Trade Marks Act 1995 (Cth).

2PROPERTY LAW
It can be understood from the milestone case of Shell Co of Australia Ltd v Esso
Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407; 35 ALJR 355; [1962] ALR 3045. In
this particular case, Windeyer J had elucidated the dissimilarity between substantially identical
and the deceptively similar concepts. The concept of substantially identical is considered to be
evaluated by comparison of various similarities along with differences side by side whereas, the
deceptively similar is considered to be evaluated where two marks are in resemblance of each
other to such an extent that it has the ability to cause confusion or deception. The assessment is
based on the impact a mark has on the minds of the consumer. It can be observed from the case
of Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 5926.
Application
In this particular scenario, there are two products where one is a Kellogg’s branded
product and the other is considered to be an Aldi product. According to the above-mentioned
rules, it can be promulgated that both the products have a chance to be deceptively similar which
would cause confusion in the minds of the consumers. Therefore, the consumers might be
deceived if they purchase a certain product due to the reputation of one of the branded products
as it has the capability of creating a confusion due to the similar products as both the products
have a slightly similar shade of color and the mascots for the products are same which can cause
confusion in the minds of the consumers. This would cause deception due to the target
consumers being the same for both the products. Based on such, the brand which has had an
earlier priority date would have the benefit to challenge the application of the other for
registration as such a ground would be valid under the trademark law as it has been mentioned in
5 Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407; 35 ALJR 355; [1962]
ALR 304.
6 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

3PROPERTY LAW
the above case Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd. The two products
are considered to be in resemblance of each other to an extent which can cause confusion in the
minds of the consumers. Therefore, it can be understood that Aldi product might constitute a
trademark infringement.
Conclusion
Therefore, it can be understood that the Aldi product has the ability to cause confusion
and therefore, it can constitute a trademark infringement.

4PROPERTY LAW
Bibliography
Case Laws
Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407; 35
ALJR 355; [1962] ALR 304.
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Legislation
s.17 Trade Marks Act 1995 (Cth).
s.43 Trade Marks Act 1995 (Cth).
s.44 Trade Marks Act 1995 (Cth).