Advanced Intellectual Property Law: Trade Marks Act 1995

This report provides an analysis of the Trade Marks Act 1995 (Cth), focusing on trademark infringement and deceptive similarity. It defines trademarks under section 17 and explains the concept of deceptively similar trademarks as per section 10 of the Act. The report examines the application of these principles, referencing cases such as Australian Postal Corporation v Digital Post Australia and Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, to differentiate between deceptively similar and substantially identical trademarks. The report also discusses the implications of section 57, regarding the right to oppose trademark registration, and section 44(1) concerning deceptive similarity. The analysis concludes that Aldi's products may violate the Act due to deceptive similarity to other companies' products, potentially leading to trademark infringement. The report includes a bibliography of relevant articles, cases, and legislation.

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Advanced Intellectual Property Law

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The Trade Marks Act 1995 (Cth)1 (the ‘Act’) governs the operations of entities operating in
Australia to avoid trademarks infringements. Section 17 of the act defines that trademarks are
referred to signs which are used or intended to use by the parties to distinguish their products
or services from others. Section 6 of the act provides that parties use a combination of various
factors such as letter, words, numeral, brand, heading, pictures, packaging and others while
differentiating their products. Therefore, the purpose of the trademarks is to ensure that
customers are able to differentiate between two products based on their attributes. Section 57
of the act provides that the third parties have the right to oppose the registration of a
trademark based on various grounds and one of which include if the trademark is
substantially identical or deceptively similar to another trademark. In the given case, section
10 of the act plays a crucial role. It provides that a trademark of an entity is considered as
‘deceptively similar’ if it so nearly resembles the other trademarks that it is more likely to
mislead, deceive or cause confusion among parties2. Therefore, it a trademark is considered
as deceptively similar if it is more than just merely similar. The court applied this principle in
the case of Australian Postal Corporation v Digital Post Australia3 in which it was held that
the trademark is infringed by the part because it is deceptively similar to the existing
trademark.
This trademark can confuse or mislead the people that defeat the purpose of having a
trademark because its objective is to differentiate between two products or services. In Shell
Co of Australia Ltd v Esso Standard Oil (Australia) Ltd4 case, the court provided
differentiates between deceptively similar and substantially identical trademarks. The court
provided that the similar is assessed by the parties based on the impression which the existing
trademark creates in the minds of customers. The substantially identical trademark is assessed
by comparing the characteristics and similarities between the two trademarks, whereas, the
deceptive similarly is focused on whether the marks are two similar that they can deceive or
cause confusion between the parties as given under section 10 of the act. Moreover, it was
given in case that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd5 that the
application for deceptively similar trademark is made when the goods are of similar kind.
While filing a suit for deceptively similar goods, section 44 (1) of the act applies. In the given
case, Aldi has violated the provisions of this act since its products are deceptively similar to
1 Trade Marks Act 1995 (Cth)
2 Peter Drahos, A philosophy of intellectual property (Routledge, 2016).
3 [2013] FCAFC 153
4 [1963] HCA 66
5 (1954) 91 CLR 592

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other companies’ products. As discussed in Australian Postal Corporation v Digital Post
Australia case, Aldi has violated the provisions given under section 44 (1) of the act based on
which its products constitute a trade infringement since they are deceptively identical and
belongs to the same category which is more likely to deceptive and confuse customers.

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Bibliography
Articles/Books/Reports
Drahos P, A philosophy of intellectual property (Routledge, 2016).
Cases
Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153
Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Legislation
Trade Marks Act 1995 (Cth)