RE: Australian trade mark question

Norman 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."

Correct.

Irving Yeast Vite was cited with approval by the High Court on this issue in _Mark Foy's Ltd v. Davies Coop_ (1956) 95 CLR 190. http://www.austlii.edu.au/au/cases/cth/high%5fct/95clr190.html

See also:
_Shell v. Esso_ (1961) 109 CLR 407
http://www.austlii.edu.au/au/cases/cth/high%5fct/109clr407.html _Caterpillar Loader Hire v. Caterpillar Tractor Co._ (1983) 48 ALR 511 http://www.austlii.edu.au/au/cases/cth/federal%5fct/unrep1101.html _Tansing v. Musidor_ (a case about the Rolling Stones) First instance
http://www.austlii.edu.au/au/cases/cth/federal%5fct/unrep6543.html Appeal
http://www.austlii.edu.au/au/cases/cth/federal%5fct/unrep6930.html

The status of Irving in 1995 is summed up in the following passage from _Amalgamated Television Services v. Foxtel_ (1995) Federal Court http://www.austlii.edu.au/au/cases/cth/federal_ct/unrep8047.html

This passage was cited with approval by Gummow and Heerey JJ at 372 in Musidor BV v Tansing (1994) 52 FCR 363. At 373, their Honours said:-

    "As these authorities indicate, and as is significant for the present     appeal, the position under the present Australian legislation that the     phrase in s 58 'the right to the exclusive use of the trade mark ...'     carries with it the implication of use of the mark as a trade mark to     denote origin in the person using it, derives from the construction     placed by the House of Lords upon s 39 of the British Trade Marks Act     1905 (UK) in Irving's Yeast-Vite Ltd v Horsenail (1934) 51 RPC 110 at     116." (emphasis added)

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