Welcome to our annual round up of key trade mark cases. Here you can find a summary of all major trade mark decisions in Australia in 2014 and a good scattering of New Zealand decisions too.
2014 was a big year for trade marks in Australia, including only the third time a trade mark case has made it all the way to the High Court of Australia under the Trade Marks Act 1995. A key theme in many of the cases is the issue of inherent distinctiveness and overcoming descriptiveness objections through use of the mark. Not easy, as it turns out.
For foreign language trade marks, the Australian High Court has lowered the registrability bar. Conversely, colour and shape marks continue to be difficult to obtain and enforce, which is perhaps appropriate.
2014 also saw the first case in which the Federal Court awarded substantial additional damages against an infringer. This new head of damages, only recently introduced into the Act, is intended for deterrence (or some might say punishment) rather than compensation. For trade mark owners, it offers an additional source of recovery when actual damage may be hard to prove, as was the case in this decision.
In New Zealand, 2014 has provided useful guidance as to the relevant market to consider when determining the likelihood of deception or confusion (particularly useful for specialist markets) and on how to distinguish trade mark use from general descriptive use. The NZ High Court has been prepared to find infringement of even quite descriptive trade marks, suggesting a favourable environment for trade mark owners.
We hope you enjoy our summary of the key ANZ trade mark cases of 2014.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.