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What is a Trade Mark?

In Australia, a trade mark is defined under the Trade Marks Act 1995 (Cth) (Trade Marks Act) as a ‘sign’ used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. A ‘sign’ includes words, logos, shapes, colours, sounds, scents, or any combination of those items.

The Trade Marks Act grants trade mark owners exclusive rights to use, license, and sell the mark in relation to the goods and services for which it is registered. This means the owner can prevent others from using the same or a similar mark in a way that might confuse consumers about the origin of goods or services.

There’s an important distinction between registered and unregistered trade marks in Australia. While unregistered marks can gain some protection through common law rights and passing off actions, registered trade marks offer far stronger and more comprehensive protection. Registering a trade mark provides the registrant:

  • Exclusive rights to use the mark throughout Australia
  • A clear public record of ownership
  • The ability to take legal action for infringement
  • A valuable business asset that can be licensed or sold
  • Given these benefits, businesses are strongly encouraged to register their trade marks to secure robust protection for their brand identities.

Trademark Infringement


To establish trade mark infringement in Australia, a plaintiff must establish that the mark is either substantially identical or deceptively similar to the registered trade mark in relation to goods or services under which the trade mark is registered.

Substantially Identical

A mark is considered substantially identical if it’s very closely similar to the registered mark, with only minor differences that wouldn’t impact the overall impression. In the landmark case of Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963), the High Court established that marks should be compared side-by-side, noting their similarities and differences and the overall impression conveyed to determine if they’re substantially identical.

Deceptively Similar

A mark can be deceptively similar if it so nearly resembles the registered mark that it’s likely to deceive or cause confusion. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954), the High Court held that marks should be compared by their look and sound, and consideration should be given to the class of consumer likely to be involved and the circumstances in which the marks would be used.

Use ‘as a Mark’

For infringement to occur, the allegedly infringing sign must be used ‘as a trade mark’ – that is, to distinguish the goods or services of one trader from those of others. In E & J Gallo Winery v Lion Nathan Australia Pty Limited (2010), the High Court clarified that use ‘as a trade mark’ involves use of the mark as a badge of origin in Australia, regardless of the user’s intention.

Australian Consumer Law

Beyond the Trade Marks Act, the Australian Consumer Law (ACL) provides additional protection against misleading and deceptive conduct. This can be particularly useful for unregistered marks or in cases where trade mark infringement might be difficult to prove. Actions under the ACL can be brought in the Federal Court alongside trade mark infringement claims.

It’s also worth noting that common law passing-off actions remain available in Australia. These can protect the goodwill associated with unregistered marks by preventing others from misrepresenting their goods or services as being associated with the mark owner.

Legal Proceedings for Trademark Infringement

If you believe another party is infringing on your trade mark rights, you may initiate legal proceedings in the Federal Court of Australia. First, though, a plaintiff must send a cease and desist letter to the alleged infringer.

Here’s a general outline of the court process:

  • File a statement of claim with the Federal Court
  • Serve the documents on the respondent
  • The respondent files a defence
  • Both parties disclose relevant evidence
  • The matter proceeds to trial if not settled

It’s crucial to act promptly if you suspect infringement, as delays can weaken your case.

Trademark Opposition

Third parties may oppose a trade mark’s registration when it enters the opposition period, allowing interested parties to challenge potentially conflicting marks before they’re officially registered.

To oppose a trade mark application:

  • File a notice of intention to oppose within 2 months of the mark’s publication
  • Submit a statement of grounds and particulars within 1 month of filing the notice
  • Provide evidence supporting your opposition
  • Attend a hearing before a delegate of the Registrar of Trade Marks
  • The statement of grounds and particulars should clearly outline the basis for your opposition, which might include:
  • The mark is too similar to an existing registered mark
  • The applicant is not the true owner of the mark
  • The mark is not distinctive enough to be registered

Strong evidentiary support is crucial in opposition proceedings. This might include evidence of your prior use of a similar mark, market research showing consumer confusion, or expert testimony on the distinctiveness of the mark.

The hearing officer will consider all evidence and arguments before making a decision. This decision can be appealed to the Federal Court if necessary.


Trade mark infringement and opposition are complex areas of law that require careful navigation. With the increasing value of brand identities in today’s market, robust legal protection for trade marks is more important than ever.

Whether you’re facing a potential infringement issue or considering opposing a trade mark application, seeking legal advice is critical. Intellectual property lawyer Ben Waldeck has extensive experience in these matters and can provide the guidance you need to protect your valuable trade mark rights. Don’t hesitate to reach out for assistance in safeguarding your trade mark and other intellectual property.