Intellectual Property - Trademarks and Passing Off

Date: October 10, 2007

Authors: LAC Lawyers

Under the common law, a person who builds up a reputation in connection with the use of a particular mark will have rights to prevent another person "passing off" goods or services as being those of the owner of the mark if such conduct is likely to injure the proprietor's reputation. The proprietor of a common law trade mark may also be able to prevent registration of a similar trade mark by another party.

The most certain way to protect a trade (or service) mark is to register the mark under the Trade Marks Act 1995  (Cth). Registration gives the registered proprietor of the mark the exclusive right to use the mark, and to authorise other persons to use the mark, in relation to the goods or services for which it is registered (subject to another person's continual use of a pre-existing common law mark by which use he or she has built up a reputation). Registration confers Australia-wide protection.

A registered mark may be removed from the register if it has not been used in Australia in good faith by the registered proprietor or an authorised user for a continuous period of three years.

Application for registration of a mark should be made immediately. It is legitimate for a person to "use" an unregistered mark which has been developed by another person (providing that such use does not create deception of the public or constitute "passing off" his or her goods and/or services as those of another) and hence establish prior use or reputation, with the result that the person who has developed the mark may lose the benefits of registration and even the right to use the mark. The registration process may take more than two years but upon registration the applicant's rights run from the date of lodgement of the application.

In Pinetrees Lodge Pty Ltd v Atlas International Pty Ltd (1981) FLR the operator of a guesthouse on Lord Howe Island succeeded in obtaining an interlocutory injunction to restrain a competitor from using an advertising logo similar to the applicant’s logo.

Trade secrets and confidential information

Under the common law, a person to whom information is imparted in circumstances of confidence may not betray that confidence.

In an action for breach of confidence it is necessary for the applicant to establish that the relevant information was in fact confidential, that the information was imparted in circumstances of confidence and that the information was conveyed to another without the owner's consent.

The better approach to protect confidential information is to request all employees and contractors to execute a Confidentiality Agreement to minimise the risk of disclosure of confidential information. Call LAC Lawyers to protect your intellectual property and confidential information today.

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