Re: Australian trade mark question

Norman,

You have it right. It was introduced in the 1995 Act for the first time but prior to that comparative advertising was not considered as "use of a trade mark as a trade mark". Under the old Act of 1955, it was an infringement to use a trade mark in relation to goods or services in respect of which the trade mark was registered. The High Court interpreted that to mean "use as a trade mark" rather than any use. Shell v Esso 1963 109 CLR 407. This is now spelled out in s120 of the 1995 Act.

Hence comparative advertising was okay. The difficulty with s 122 is that it creates a number of defences but many of the acts described therein would arguably not constitute infringement in the first place. They should probably be considered as declaratory of what is not infringement rather than defences.

If you have any further queries, feel free to mail me directly.

Norman Siebrasse wrote:

> I hope a trade mark question isn't too far outside the scope of this
> list. I have some questions about Australian trade mark law.
>
> The Australian Trade Marks Act 1995 s.122(1)(d) provides that it is
> not an infringment to use a trade mark in comparative advertising.
> As best I can tell, this provision was introduced for the first time in
> the 1995 Act. (Is this correct?) My question is, did this section
> represent a change in the law, or was it simply for the purpose of
> affirming existing law? My understanding is that even prior to the
> enactment of this provision use of a mark in comparative
> advertising would _not_ have been considered an infringment, since
> the Australian courts followed the UK decision in Irving Yeast-Vite v
> Horsenail (1934) 51 RPC 110 holding that use of the mark in
> comparative advertising was not use of the mark "as a trade mark."
> Is this correct?
>
> Thanks
>
> Norman Siebrasse
> Faculty of Law
> University of New Brunswick
> http://www.unb.ca/law/Siebrasse

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Mark Davison
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