Advanced Intellectual Property: Trademark Infringement Report

This report analyzes a potential trademark infringement case involving Aldi and Kellogg's, focusing on whether Aldi's product design infringes on Kellogg's trademarks. The analysis delves into the relevant provisions of the Trademarks Act 1995 (Cth), specifically addressing grounds for challenging trademarks such as identical or deceptively similar designs, and the concept of a 'badge of origin' for consumers. The report examines key case law, including Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd, Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, to determine the likelihood of confusion and deception. The conclusion considers whether Kellogg's can successfully claim trademark infringement, given the similarities in product branding. The report highlights the importance of considering the surrounding circumstances and the exceptions outlined in the legislation, offering a comprehensive understanding of trademark law in the context of this real-world scenario.

Running head: INTELLECTUAL PROPERTY LAW
INTELLECTUAL PROPERTY LAW
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Author Note

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Trademark protection is a way of protecting the goodwill of a business. Trademark act
as a 'badge of origin' for consumers so that they do not face any confusion while buying their
preferable products. This study aims to find out whether Aldi company engaged in any type
of trademark infringement by designing their product in a similar way to that of Kellogg's.
As per the Trademarks Act, 1995(Cth), trademarks can be challenged on various
grounds like ownership, identical or deceptively similar or substantially or decisively similar.
In this case, as we can refer from the picture, Kellogg's company can challenge Aldi's product
for trademark infringement on the ground of identical or misleadingly similar or likely to
deceive or cause confusion due to the same color of two logos. As per section 20(1) of the
Act, a trademark registered owner can exclusively claim relief under this act for infringement
of the trademark. However, as per Section 23 of the Act, the mentioned rule has the exception
in cases wherein cases of similar goods two or more trademark is registered that are
substantially identical or misleading, such goods or service gets no protection under Section
20 of the Act. In the case of Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd1, the court
held while addressing the question of substantially and deceptively similar trademarks, the
1 Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415

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court should take two different approaches by comparing their similarities and differences
side by side. Section 120 of the same Act, states that a person is guilty of infringing a
trademark if they use an identical or misleading sign which is already in the trademark
register. In the case of Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd2, the
court upheld the 'wonderment test' by stating that, to show a trademark is misleading and
similar to other registered trademarks, one must prove that the real latent danger and
confusion. A claim cannot be based on mere suspicion of the danger of confusion and there is
no infringement in using the name or other description unless the badge of the product is
similar to the other. The conclusion regarding the possible deception or similarity must be
made after considering the surrounding circumstances of the case. However, there are some
exceptions to this rule as envisaged in section 123 of the same Act. As per this section, if a
person uses the sign of an already registered trademark good, it will not amount to
infringement if it is done with the consent of the original owner of the actual trademark.
Trademark infringement can also occur in cases of the same color of logo of two different
brands engaged in the manufacturing of the same product subject to exceptions under section
23 of the Act. In Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd3, the
court held that a brand producing similar or identical products with that of other brands in the
market can do the same unless they are not creating any confusion by indicating that they
have any connection with other brands. However, in cases of confusion between two
products, the trademark owner of an original product can bring an action against the parallel
owner for improper quality of goods4.
It can be concluded from the above-mentioned fact that in this case though Kellogg's
can bring action against Aldi for trademark infringement for a similar, identical and
2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, (1954) 91 CLR 592
3 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd[2006] FCA 446
4 Pioneer Electronics Australia Pty Ltd v Woodlands Resources (Aust) Pty Ltd [2000] FCA 1158; 49 IPR 299

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misleading logo in the box of their product provided they are following all necessary
requirements.

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Bibliography:
Case Law:
Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd[2006] FCA 446
Pioneer Electronics Australia Pty Ltd v Woodlands Resources (Aust) Pty Ltd [2000] FCA
1158; 49 IPR 299
Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, (1954) 91 CLR 592
Legislation:
Trademarks Act, 1995 (Cth)