An unregistered mark which has become very well-known and used in trade for an extensive period of time does not give the person with whom it is connected an exclusive right to use the mark. Any other person is free to use the mark, provided that the user does not constitute passing off or contravention of the Australian Consumer Law.
If a mark has been used to form a connection between a person and the goods or services they supply, an unauthorised use by another person may, even with an unregistered trademark, amount to a misrepresentation which is actionable as passing off or as conduct likely to mislead or deceive under the Australian Consumer Law: Schedule 2 of the Competition and Consumer Act 2010. The difference between the two actions is briefly as follows:
Passing off is a common law tort which can be used to protect the goodwill of a trader from a misrepresentation by another trader. In certain circumstances passing off can also be used to enforce unregistered trademark rights.
The law of passing off prevents a trader from misrepresenting their goods or services as being the goods or services of another. Passing off also prevents a trader from fraudulently holding out their goods or services as having some association or connection with those of another trader.
Three things need to be proven for a cause of action for passing off to succeed:
Goodwill – The plaintiff must prove that there is goodwill or reputation attached to the goods supplied in the minds of consumers, by association with the identifying ‘getup’. Get up is the whole external appearance or look-and-feel of a product, including any marks or other indicia used, including registered or unregistered trademarks.
Misrepresentation – The plaintiff must demonstrate misrepresentation by the defendant which lead or was likely to lead the public to believe that the goods or services offered were those offered by the plaintiff.
Damage to goodwill – Finally the plaintiff must prove that damage has or is likely to have resulted from an incorrect belief due to the defendant’s misrepresentation that the goods and services offered by the defendant are those of the plaintiff.
Passing off is of particular significance where an action for trademark infringement based on a registered trademark is unlikely to be successful (due for example to the differences between the registered trademark and the unregistered mark).
Misleading and deceptive conduct
Misleading and deceptive conduct is designed to protect consumers.
The prohibition on misleading conduct is set out in section 18(1) of the Australian Consumer Law:
A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 4(2)(a) of the CCA defines conduct as:
doing or refusing to do any act, including the making of, or the giving effect to a provision of, a contract or arrangement, the arriving at, or the giving effect to a provision of, and understanding or the requiring of the giving of, or the giving of, a covenant;
If the conduct of a business creates an overall impression amongst it’s intended audience about the price, value or quality of goods or services that is misleading it is likely to be in contravention of the Australian Consumer Law.
In order to establish misleading or deceptive conduct the following elements are required:
1. the impugned conduct was performed in trade or commerce;
2. the impugned conduct was, in all the circumstances, misleading or deceptive;
3. the claimant relied on the conduct; and
4. as a result of its reliance on the conduct, the claimant suffered a loss.
Under the Australian Consumer Law trade or commerce is given its ordinary definition, and applies not only to transactions between corporations and consumers, but to anyone providing or acquiring goods or services. However, purely private or domestic transactions are not likely to be captured within the scope of section 18.
Why Choose Aries?
If you have an idea that you believe can be beneficial and valuable to you in the future, wouldn’t it be for the best to get it trademarked before anyone else gets a similar idea?
The procedure of applying for a trademark can be tedious and getting all the paperwork done can be frustrating. There’s quite a significant contrast in procedures depending on what you’re looking to get patented. Getting a product trademarked is totally different than patenting an idea or a newly invented technology.
With an expert by your side, you ensure that you’re taking the shortest possible route to get all the formalities done and done right! If you consider your idea/product to be really unique and valuable, hiring an expert trademark lawyer will turn out as an investment rather than an expense.