¹ See William Landes and Richard Posner, The Economic Structure of Intellectual Property Law (2003) ch 7; Nicholas Economides, ‘The Economics of Trademarks’ (1988) 78 Trademark Reporter 523Google Scholar, 525–6; Png, I P L and Reitman, David, ‘Why Are Some Products Branded and Others Not?’ (1995) 38 Journal of Law and Economics 207CrossRefGoogle Scholar.

² See Anselm Kamperman Sanders, Unfair Competition Law: The Protection of Intellectual and Industrial Creativity (1997).

³ See Vincent Chiappetta, ‘Trademarks: More than Meets the Eye’ [2003] University of Illinois Journal of Law, Technology and Policy 35; Richardson, Megan, ‘Trade Marks and Language’ (2004) 26 Sydney Law Review 193Google Scholar.

⁴ See Bently, Lionel and Burrell, Robert, ‘The Requirement of Trade Mark Use’ (2002) 13 Australian Intellectual Property Journal 181Google Scholar, 183–4 and the sources cited therein; van Caenegem, William, ‘Striking a Balance between Protecting Commercial Reputation and Promoting Competition’ (2003) 77 Australian Law Journal 598Google Scholar, 608. Admittedly, the role of registration is more commonly addressed in terms of the private advantages that accrue to the trade mark owner, such as the ability to secure protection prior to use or the facilitation of the enforcement of rights in the mark. The advantages conferred by registration provide an incentive for traders to register their marks, but such incentives are only desirable if the registered trade mark system ultimately confers a benefit on the public. It is the value of the register as a source of information that provides the principal public benefit of registration. For a more detailed discussion of the informational value of trade mark registers and of some of the other possible benefits (such as increased security for traders) that registration might be said to provide, see Robert Burrell, ‘Trade Mark Bureaucracies’ in Graeme Dinwoodie and Mark Janis (eds), Trademark Law and Theory: A Handbook of Contemporary Research (forthcoming 2008).

⁵ For example, in the United States the Lanham Act makes express provision for the protection of both registered and unregistered trade marks: see 15 USC § 1125 (2000).

⁶ For example, it is possible to prevent the unauthorised use of an unregistered trade mark in Australia by reference to ss 52(1) and 53 of the Trade Practices Act 1974 (Cth) or equivalent provisions of state and territory fair trading legislation: see Fair Trading Act 1992 (ACT) ss 12(1), 14(1); Fair Trading Act 1987 (NSW) ss 42(1), 44; Consumer Affairs and Fair Trading Act 1990 (NT) ss 42(1), 44; Fair Trading Act 1989 (Qld) ss 38(1), 40; Fair Trading Act 1987 (SA) ss 56(1), 58; Fair Trading Act 1990 (Tas) ss 14(1), 16; Fair Trading Act 1999 (Vic) ss 9(1), 12; Fair Trading Act 1987 (WA) ss 10(1), 12(1).

⁷ There are, of course, other reasons why a mark might be vulnerable to being cancelled or removed from the register. However, conducting a search for the existence of a conflicting unregistered mark is amongst the most time-consuming and expensive enquiries that such a party would be required to undertake.

⁸ Yale Electric Corporation v Robertson, 26 F 2d 972, 974 (2^nd Cir, 1928).

⁹ See further Burrell, above n 4.

¹⁰ In fairness, it might be said that this reflects a long-standing failure of Anglo-Australian trade marks legislation, dating back to the Trade-Mark Registration Act 1875, 38 & 39 Vict, c 91, to come to terms with the relationship between registered and unregistered marks: see generally New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 26 (in particular at 45–8, 55, 63–4 (Gummow J)); Covell, Wayne, ‘Moove: The “Experiment” That Went Wrong’ (1992) 82 Trademark Reporter 341Google Scholar.

¹¹ See Advisory Council on Intellectual Property, Review of Enforcement of Trade Marks Issues Paper (2002) 7–14, 26 <http://www.acip.gov.au/library/Enforcement%20of%20Trade%20Marks%20Issue%20Paper.PDF> at 21 November 2007; Advisory Council on Intellectual Property, A Review of the Relationship between Trade Marks and Business Names, Company Names and Domain Names (2006) <http://www.acip.gov.au/library/TM,%20business,company,domain%20names-%20Final%20Report.pdf> at 21 November 2007.

¹² Section 5(4)(a) of the Trade Marks Act 1994 (UK) c 26 states:

A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented … by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.

¹³ See, eg, Trade Marks Act 1996 (Eire) s 10(4)(a); Trade Marks Act 1998 (Singapore) s 8(7)(a); Trade Marks Act 1999 (India) s 11(3)(a).

¹⁴ See ss 39–44 (with additional provisions in s 177 for certification trade marks, s 187 for defensive trade marks and s 189A (combined with Trade Marks Regulations 1995 (Cth) reg 4.15A) for applications received via the Madrid Protocol). See also s 31(a), which, by virtue of s 33(3), is in effect a ground on which an application may be rejected.

¹⁵ See Olympic Insignia Protection Act 1987 (Cth) ss 24, 36; Australian Olympic Committee Inc v Courier Luggage Pty Ltd (2002) 54 IPR 419; Australian Olympic Committee Inc v ERI Bancaire Luxembourg SA (2006) 69 IPR 135.

¹⁶ See Australian Wine and Brandy Corporation Act 1980 (Cth) ss 40C–40F; Re Application by Southcorp Wines Pty Ltd (2000) 50 IPR 655; Re Lawrence (2005) 67 IPR 455.

¹⁷ Section 52(1) states that ‘[a] corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive'.

¹⁸ IP Australia, Trade Marks Office Manual of Practice and Procedure (2007) ('Trade Marks Manual’) [30.3.4], [29.3.4] <http://www.ipaustralia.gov.au/pdfs/trademarkmanual/trade_marks_examiners_manual.htm> at 21 November 2007, discussing, respectively, ss 42(b) and 43 of the TMA and indicating that these grounds are more appropriately dealt with in opposition proceedings. This would occur by way of s 57, which states that:

The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.

¹⁹ See, respectively, Playgirl Keyclub Inc v Speedlight Pty Ltd (2005) AIPC ¶92–071; Automobile Club de L'Ouest v Gardiakos (2005) 66 IPR 191; GSM (Trademarks) Pty Ltd v Blue Star Holdings Pty Ltd (2005) 67 IPR 194. The opponents in each of these oppositions owned a number of registered marks, but these registrations covered goods and services dissimilar to those that were the subject of the applications. Consequently, these cases illustrate the attitude of the Office in situations where it must have been apparent to the examiner that someone other than the applicant enjoyed goodwill in the sign, but where the search conducted for the purposes of s 44 failed to throw up an earlier conflicting mark.

²⁰ See also Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 ('Woolworths’), 389 [80] (Branson J) (noting that, at the examination stage, ‘the Registrar cannot reasonably be expected to be cognisant of the reputation of registered and unregistered trade marks generally or, indeed, of the extent, for example, to which all Australians, whose circumstances and geographic locations are diverse, may be assumed to be familiar with particular words’).

²¹ Trade Marks Manual, above n 18, [30.3.2].

²² (2001) 52 IPR 24 ('Advantage’).

²³ See, eg, Amalgamated Television Services Pty Ltd v Clissold (2000) 52 IPR 207, 217 (Hearing Officer Forno). This approach had also been taken under the Trade Marks Act 1955 (Cth): see, eg, Titan Manufacturing Co Pty Ltd v Coyne (1991) 22 IPR 613, 629 (Hearing Officer Homann).

²⁴ See Advantage (2001) 52 IPR 24, 30 [23].

²⁵ Ibid 31 [26].

²⁶ This reading of Advantage is shared by others. See Freehills, Review of Enforcement of Trade Marks Issues Paper by the Advisory Council on Intellectual Property (ACIP): Submissions on Behalf of Freehills/Freehills Carter Smith Beadle (2002) 15–17 <http://www.acip.gov.au/submissions/freehills.pdf> at 21 November 2007 (arguing, for example, that ‘[t]o draw a distinction between the respective roles of an examiner and hearing officer is false. Both roles are administrative in character’).

²⁷ Although s 33(1) does not specifically refer to a ‘presumption of registrability', it was said in the Second Reading speech of the Trade Marks Bill 1995 (Cth) that such a presumption was to be reflected in the Act: Commonwealth, Parliamentary Debates, House of Representatives, 27 September 1995, 1909–11 (Michael Lee, Minister for Communications and the Arts). Section 33(1) has since been interpreted in this manner by the Full Court of the Federal Court: Woolworths (1999) 93 FCR 365, 372–3 [24] (French J) (referring to Recommendation 4A of Working Party to Review the Trade Marks Legislation, Recommended Changes to the Australian Trade Marks Legislation (1992) ('Working Party Report’)), 387 [67] (Branson J); Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494, 511 [50] (French J).

²⁸ That is, whether the applicant is the first person to use the mark in Australia in relation to the goods or services in question. This issue is discussed in more detail in Part III(b) below.

²⁹ As a matter of practice, the applicant's claim to ownership will not be investigated by the Office unless the claim is manifestly defective: see Trade Marks Manual, above n 18, [3.1.3].

³⁰ As amended by the Trade Marks Amendment Act 2006 (Cth), with effect from 23 October 2006. The effect of the amendments does not impact on our discussion.

³¹ Health World Ltd v Shin-Sun Australia Pty Ltd (2005) 64 IPR 495, 505 [45], where Cooper J held that the two sections could be considered together ‘in this case as it has been conducted'.

³² [2005] ATMO 47 ('Ownit Homes’), [36] (Hearing Officer Williams). Similarly, see NEC Corporation v Audioxtra International Pty Ltd (2003) 58 IPR 480, 491 [53] (Hearing Officer Skivington); Alto Group Pty Ltd v Sekaku Electron Industry Co Ltd (2004) 61 IPR 151, 158 [37] (Hearing Officer Murray); ACP Masthead Nominees Pty Ltd v Bourne Properties Pty Ltd (2004) 64 IPR 134, 138 [24] (Hearing Officer Thompson); Cadbury Schweppes Pty Ltd v Effem Foods Pty Ltd (2005) 66 IPR 387, 397 [42] (Hearing Officer Williams); Hasbro Inc v Imagination Holdings Pty Ltd (2005) 66 IPR 636 ('Hasbro’), 649 [78] (Hearing Officer Thompson); Pierre Fabre Dermo-Cosmetique v Senator Automation Pty Ltd (2006) 70 IPR 368, 372 [30] (Hearing Officer McDonagh); Rodale Inc v Gardmail Pty Ltd [2006] ATMO 84, [12] (Hearing Officer Williams); Australian Pensioners Insurance Agency Pty Ltd v Brennan & Woodberry (2007) 73 IPR 361 (Hearing Officer Nancarrow); Coloplast A/S v Ezy Products Pty Ltd [2007] ATMO 60, [33]-[34] (Hearing Officer Dunn).

³³ Much the same problem was noted in relation to s 28(a) of the Trade Marks Act 1955 (Cth), which covered similar territory to s 60 of the TMA: see Richard Leahy, ‘Competing Trade Marks and Priority to Registration under the Trade Marks Act 1955’ (1995) 6 Australian Intellectual Property Journal 160, 176.

³⁴ Nor does it mirror the test for infringement of a registered mark set out in s 120(1)–(3) of the TMA: see generally Handler, Michael, ‘Trade Mark Dilution in Australia?’ (2007) 29 European Intellectual Property Review 307Google Scholar.

³⁵ Trade Marks Manual, above n 18, [30.3.2]. It is important to acknowledge that Office decisions are not entirely consistent in adopting this position (see, eg, Mastercard International Inc v Ettridge (Unreported, Australian Trade Marks Office, Hearing Officer Purvis-Smith, 21 October 2002); United Parcel Service of America Inc v United Air Lines Inc (2006) 69 IPR 663, 669 [30] (Hearing Officer Windsor)), but it is nevertheless fair to treat this as the Office's preferred approach. One of the striking things thrown up by a review of opposition decisions in this area is how seldom opponents have sought to rely on passing off in the context of s 42(b), presumably because their legal representatives have been guided by this statement in the Trade Marks Manual.

³⁶ See Alto Group Pty Ltd v Sekaku Electron Industry Co Ltd (2004) 61 IPR 151, 158 [36] (Hearing Officer Murray); Cat Media Pty Ltd v Apex Marketing Group LLC (2004) 63 IPR 207, 214 [27] (Hearing Officer Skivington); ACP Masthead Nominees Pty Ltd v Bourne Properties Pty Ltd (2004) 64 IPR 134, 136 [9] (Hearing Officer Thompson); Hasbro (2005) 66 IPR 636, 649 [78] (Hearing Officer Thompson); Rodale Inc v Gardmail Pty Ltd [2006] ATMO 84, [12] (Hearing Officer Williams); Coloplast A/S v Ezy Products Pty Ltd [2007] ATMO 60, [33] (Hearing Officer Dunn).

³⁷ (1982) 149 CLR 191 ('Parkdale’), 198. See also at 210 (Mason J).

³⁸ See, eg, Pfizer Products Inc v Karam (2006) 70 IPR 599 ('Pfizer’), 610-11 [46]–[47] (Gyles J). While this has become the orthodox view of the relationship between the concepts of ‘deception or confusion’ under the TMA and ‘misleading or deceptive conduct’ under the TPA, and was reaffirmed by the High Court in Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45, 87 [106], it has been the subject of judicial and academic criticism: see, eg, Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177, 201 (Deane and Fitzgerald JJ); Bridge Stockbrokers Ltd v Bridges (1984) 4 FCR 460, 473–4 (Lockhart J); Scotch Whisky Association v De Witt [2007] FCA 1649 ('Scotch Whisky’), [83] (Sundberg J); Colin Lockhart, The Law of Misleading or Deceptive Conduct (2^nd ed, 2003) 63–4, 160; Jill McKeough, Andrew Stewart and Philip Griffith, Intellectual Property in Australia (3^rd ed, 2004) 479–82.

³⁹ Mark Davison, Kate Johnston and Patricia Kennedy, Shanahan's Australian Law of Trade Marks & Passing Off (3^rd ed, 2003) ('Shanahan’) 173.

⁴⁰ Advantage (2001) 52 IPR 24, 31 [26].

⁴¹ See, eg, Pfizer (2006) 70 IPR 599, 609 [38] (Gyles J) and the Office decisions: NBA Properties Inc v Gaunt (1998) 44 IPR 225; Seven Network (Operations) Ltd v All Saints Holding Co Ltd [2003] ATMO 4; Jireh International Pty Ltd v Vladimirovich (2006) 70 IPR 359.

⁴² In particular, it should be noted that UK and other Commonwealth decisions over the last decade or so have continued to exhibit division on the extent to which passing off recognises ‘dilution’ as a head of damage: see Taittinger SA v Allbev Ltd [1994] 4 All ER 75, 87–8 (Peter Gibson LJ), 91 (Mann LJ), 95 (Sir Thomas Bingham MR); Pontiac Marina Private Ltd v CDL Hotels International Ltd [1998] FSR 839, 871 (Singapore Court of Appeal); British Telecommunications Plc v One in a Million Ltd [1998] 4 All ER 476, 496-7 (Aldous LJ); Harrods Ltd v Harrodian School Ltd [1996] RPC 697, 715–16 (Millett LJ); see further Hazel Carty, ‘Dilution and Passing Off: A Cause for Concern’ (1996) 112 Law Quarterly Review 632. Adding to the uncertainty in Australia is the fact that, on the one hand, Australian courts have led the expansion of the passing off action in cases such as Hogan v Koala Dundee Pty Ltd (1988) 20 FCR 314 and Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553, but, on the other hand, have also insisted that damage through mere ‘association’ is restricted to character merchandising cases: Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (1999) 44 IPR 281, 374–6 (Goldberg J).

⁴³ See Ewing v Buttercup Margarine Co Ltd [1917] 2 Ch 1; British Legion v British Legion Club (Street) Ltd (1931) 48 RPC 555; see further Christopher Wadlow, The Law of Passing-Off: Unfair Competition by Misrepresentation (3^rd ed, 2004) 431–3.

⁴⁴ Emphasis added.

⁴⁵ See, eg, GSM (Trademarks) Pty Ltd v Blue Star Holdings Pty Ltd (2005) 67 IPR 194, 198 [18] (Hearing Officer Skivington) ('Section 60 does not require the relevant goods or services to be the same or closely related’). See also General Motors Corporation v Nicholls (2003) 61 IPR 370, 373 [10] (Hearing Officer Skivington); Finaxa Societe Anonyme v Arnedo (2003) 61 IPR 141, 149 [41] (Hearing Officer Murray); Royal Doulton (UK) Ltd v Ghosen (2004) AIPC ¶92–000, 37818–19 [21] (Hearing Officer McDonagh).

⁴⁶ Admittedly, s 60(a) is punctuated in a way that supports the Office's approach (see Amalgamated Television Services v Pickard (1999) 48 IPR 133, 140 (Hearing Officer Thompson)), but otherwise the provision is poorly drafted and the alternative interpretation considered here, which has the merit of attempting to give some meaning to the italicised words, is at least open.

⁴⁷ See Henderson v Radio Corp Pty Ltd [1960] SR (NSW) 576.

⁴⁸ (1996) 66 FCR 451 ('Duff Beer’).

⁴⁹ See also Durkan v Twentieth Century Fox Film Corporation (2000) 47 IPR 651 (producers of the film ‘Braveheart’ unsuccessful under s 60 because of lack of evidence of any use of the term as a trade mark); Metro-Goldwyn-Mayer Studios Inc v Higgs [2007] ATMO 44, [16] (Hearing Officer Lyons) (no evidence that the title of a television series ‘thirtysomething’ had been used as a trade mark).

⁵⁰ See, eg, Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731; Taittinger SA v Allbev Ltd [1994] 4 All ER 75; Chocosuisse Union des Fabricants Suisses de Chocolat v Cadbury Ltd [1999] RPC 826.

⁵¹ [1979] AC 731.

⁵² (2003) 134 FCR 51, 60–1 [46]–[47].

⁵³ For example, it is possible to conceive of a situation where a mark is accepted for registration on the basis of ‘honest concurrent use’ under s 44(3) but where an opposition can be successfully made out under s 42(b), given that honest concurrent use cannot be used to avoid a finding of misleading or deceptive conduct under s 52 of the TPA: Peter Isaacson Publications Pty Ltd v Nationwide News Pty Ltd (1984) 6 FCR 289, 300 (Beaumont J).

⁵⁴ Shanahan, above n 39, 609.

⁵⁵ Ibid 611.

⁵⁶ See also The Kettle Chip Co Pty Ltd v Apand Pty Ltd (1993) 46 FCR 152; Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354; Telstra Corporation Ltd v Royal & Sun Alliance Insurance Australia Ltd (2003) 57 IPR 453 and the judgment of Brennan J in Parkdale (1982) 149 CLR 191.

⁵⁷ It might be argued that in each of the examples mentioned in this Part registration could still be successfully opposed under s 43. However, as will be shown in Part III(b) below, the scope of s 43 is uncertain, such that it would be difficult to make this claim with any degree of certainty.

⁵⁸ Marco Polo Foods Pty Ltd v Benino Fine Foods (Aust) Pty Ltd (2005) 67 IPR 179; Osgaig Pty Ltd v Shigemitsu Industry Pty Ltd (2006) AIPC ¶92–214. See also Automobile Club de L'Ouest v Gardiakos (2005) 66 IPR 191.

⁵⁹ (2001) 52 IPR 24, 32 [28] (Madgwick J).

⁶⁰ See, eg, Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Time Warner Entertainment Co LP v Just Spectacles Pty Ltd (2003) AIPC ¶91–916; GAP (ITM) Inc v General Pants Co Pty Ltd (2004) 60 IPR 486; Greenpeace Australia Pacific Ltd v Taylor (2004) 62 IPR 617; McDonalds Corporation v Lubowski [2004] ATMO 56; Nylex Corporation Pty Ltd v Pencray Pty Ltd (2006) 69 IPR 369.

⁶¹ Once it is appreciated that the TMA requires the opponent to establish that the use of the mark ‘would be contrary to law’ on the balance of probabilities it can be seen that it is far less clear that this provision sets up a higher than normal burden on the opponent. It can also be seen that the alternative canvassed by the Office, namely that use of the mark could be contrary to law on the balance of probabilities, would set up far too low a threshold. In reply, it might be objected that the standard of proof in opposition proceedings has not yet been fixed by the Federal Court: compare, on the one hand, Lomas v Winton Shire Council (2003) AIPC ¶91–839, 35169 [17], 35172 [36] (Cooper, Kiefel and Emmett JJ); Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 132 FCR 326, 330 [18]–[22] (Bennett J); Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, 258 [4] (Finn J) and Kowa Co Ltd v NV Organon (2005) 66 IPR 131, 152–3 [137]–[141] (Lander J) (suggesting that the test is whether the applicant's mark should clearly not be registered) with, on the other hand, Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd (2003) 61 IPR 130, 132–3 [10]–[12] (Gyles J); BP plc v Woolworths Ltd (2004) 62 IPR 545, 549 [8] (Finkelstein J) and Pfizer (2006) 70 IPR 599, 606–7 [21]–[26] (Gyles J) (critical of this higher standard of proof). However, even if it were to be accepted that the higher standard of proof that the mark should ‘clearly not be registered’ were to be applied, the point remains that the alternative formulation, namely that the s 42(b) ground of opposition would apply if it were clear that the use could be contrary to law, would still provide too low a hurdle. More generally, the difficulty with the Office's approach is that the standard of proof in opposition proceedings is not to be found in any (other) ground of opposition, but rather is governed by s 55(1) of the TMA, as interpreted by the courts.

⁶² In particular, as regards the reference to ‘a sign contained in the trade mark'; cf the definition of a ‘trade mark’ in s 17:

A trade mark is 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.

⁶³ Woolworths (1999) 93 FCR 365, 389 [79] (Branson J).

⁶⁴ Cf China-Therm Trade Mark [1980] FSR 21. See also Shanahan, above n 39, 177–8.

⁶⁵ Cf Madgecourt's Application [2000] ETMR 825. See also Shanahan, above n 39, 178–80; Scotch Whisky [2007] FCA 1649, [59] (Sundberg J).

⁶⁶ See, eg, Trade Marks Act 1994 (UK) c 26, s 3(3)(b); Trade Marks Act 1996 (Eire) s 8(3)(b); Trade Marks Act 1998 (Singapore); s 7(4)(b) Trade Marks Act 1999 (India) s 9(2)(a).

⁶⁷ Explanatory Memorandum, Trade Marks Bill 1995 (Cth) 10 (stating that an application would be refused under cl 43 of the Bill if, ‘because of some signification inherent to it', its use would be likely to deceive or cause confusion). See also Luck, Janice, ‘Distinctiveness, Deceptive and Confusing Marks under the Trade Marks Act 1995’ (1996) 7 Australian Intellectual Property Journal 97Google Scholar, 100.

⁶⁸ Woolworths (1999) 93 FCR 365, 389 [79] (Branson J); TGI Friday's Australia Pty Ltd v TGI Friday's Inc (2000) 100 FCR 358, 365 [43] (Wilcox, Kiefel and Emmett JJ); Winton Shire Council v Lomas (2002) 119 FCR 416, 421 [19] (Spender J); Mobileworld Communications Pty Ltd v Q & Q Global Enterprise Pty Ltd (2003) 61 IPR 98, 117 [96] (Allsop J).

⁶⁹ See McCorquodale v Masterson (2004) 63 IPR 582. See also Scotch Whisky [2007] FCA 1649, [13], where Sundberg J considered that ‘[t]here is a degree of overlap between ss 43 and 60’, and the Office decisions: Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632; Amalgamated Television Services v Pickard (1999) 48 IPR 133; RS Components Ltd v Holophane Corp (1999) 46 IPR 451; Durkan v Twentieth Century Fox Film Corporation (2000) 47 IPR 651; Twentieth Century Fox Film Corp v Die Hard (2001) 52 IPR 455; Polo Sport Clothing America v Hill (2003) 57 IPR 288; Hasbro (2005) 66 IPR 636; Marc Chagall Committee v Elite Wine & Spirits [2007] ATMO 29; Turner Entertainment Co v Yo-Merry Todd (2007) 73 IPR 396. It might also be observed that under s 42(2)(b) of the never-commenced Trade Marks Act 1994 (Cth) an application for registration of a mark was to be rejected if the use of the mark in relation to the goods and services the subject of the application ‘would be likely to deceive or cause confusion regarding … any connection or relationship that they may have with any particular person.’ This might be said to provide some support for the expanded interpretation of ‘connotation’ in s 43 of the TMA. Attempting to draw any conclusions from this and similar observations is, however, extremely difficult — changes in wording between the 1994 and 1995 Acts can either be deemed to be largely incidental (such that parliamentary intention can be gleaned from the earlier Act: see generally Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90, 103 [15] (Burchett J)) or treated as evidence of Parliament's desire to achieve a different outcome in 1995 than under the superseded legislation.

⁷⁰ See also s 53(c) of the TPA, which states:

A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services … represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have.

⁷¹ See Wadlow, above n 43, 753–6 and the cases cited therein.

⁷² Ibid 756. Cf Scotch Whisky [2007] FCA 1649, [60]–[62] (Sundberg J).

⁷³ [1896] AC 199.

⁷⁴ See Wadlow, above n 43, 756.

⁷⁵ But note, in the context of European law, the discussion that has occurred over the prohibition of marks that are contrary to public policy or morality which has the effect (as does s 42(a) of the TMA) of leaving such marks freely available for public use, the implication being that such a system offers no disincentive against the use of such marks. This has led to calls for reform so that such marks can be registered defensively by an independent body to prevent their commercial use: see Phillips, Jeremy and Simon, Ilanah, ‘No Marks for Hitler: A Radical Reappraisal of Trade Mark Use and Political Sensitivity’ (2004) 26 European Intellectual Property Review 327Google Scholar; cf van Woensel, Caspar, ‘Führer Wines at Your Local Store: Legal Means against Commercial Exploitation of Intolerable Portrayals’ (2005) 27 European Intellectual Property Review 37Google Scholar.

⁷⁶ Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, 390–1 (Gummow J).

⁷⁷ In particular, there are some uncertainties about the extent to which ‘use’ can be established where there are no dealings in the goods or services that are the subject of the application: see Moorgate Tobacco Co Ltd v Philip Morris Ltd [No 2] (1984) 156 CLR 414, 432–4 (Deane J); Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166; Lomas v Winton Shire Council (2003) AIPC ¶91–839; Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation (2005) AIPC ¶92–132.

⁷⁸ As to the test of use under s 58, see Bently and Burrell, above n 4, 183–4 and the sources cited therein; Robert Burrell, ‘The Requirement of Trade Mark Use: Recent Developments in Australia’ (2005) 16 Australian Intellectual Property Journal 231, 238–9 and the sources cited therein.

⁷⁹ Shanahan, above n 39, 56 (with the proviso that X must have adopted the mark in ignorance of its prior use by Y).

⁸⁰ (1999) 47 IPR 47.

⁸¹ Strong support for this reasoning is contained in McCormick & Co Inc v McCormick (2000) 51 IPR 102, 131–3 [93]–[96], where Kenny J held that s 44(3) does not operate as an ‘exception’ to s 60.

⁸² See Shanahan, above n 39, 249–50; IP Australia, Trade Marks Legislation Review, Paper 3 (2004) 12 <http://www.ipaustralia.gov.au/pdfs/general/recommendations3.pdf> at 21 November 2007.

⁸³ See Ballarat Products Ltd v Farmers Smallgoods Co Pty Ltd [1957] VR 104; Ad-Lib Club Ltd v Granville [1972] RPC 673; Sutherland v V2 Music Ltd [2002] EMLR 28.

⁸⁴ Trade Marks Act 1955 (Cth) s 68. For judicial consideration of s 68 and its limitations, see New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 26, 48 (Gummow J).

⁸⁵ Woolworths (1999) 93 FCR 365, 389 [80].

⁸⁶ Similarly, see Institute of Patents and Trade Mark Attorneys, Submission to ACIP Review of Enforcement of Trade Marks Issues Paper (2002) 7 <http://www.acip.gov.au/submissions/Ipta.pdf> at 21 November 2007:

As a matter of practice the suggestion that examiners continue to apply the more restricted approach at examination has some attraction. There is, however, something unsatisfactory about the ambiguity of having a restricted approach at examination and a wider approach at opposition. However, if that ‘two-faced’ approach works in practice then it may be a fairly sensible solution to a complex problem.

⁸⁷ Such an interpretation would not be inconsistent with the legislative history: see Trade Marks Manual, above n 18, [46.5.5].

⁸⁸ On the current interpretation of ‘reputation’ in s 60, see McCormick & Co Inc v McCormick (2000) 51 IPR 102, 127 [81] (Kenny J) (reputation refers to the ‘recognition of [the mark] by the public generally’); Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd (2000) 100 FCR 166, 175–7 [26]–[31], 194 [94] (Moore J) (evidence of localised use and promotion of the mark held to be sufficient to establish reputation under s 60, even absent any evidence of consumer recognition).

⁸⁹ Cf Working Party Report, above n 27, 45 (Recommendation 6A(1)). In relation to ‘express legislative provisions’ it might make most sense to adopt an approach similar to that used at present in relation to s 39, which prevents certain prescribed signs from being registered. Regulation 4.15 and sch 2 of the Trade Mark Regulations 1995 (Cth) set out a list of signs that are currently prescribed for the purposes of s 39(2). If this approach were applied to a new ground of rejection it would be possible in some cases to identify the precise signs for which registration would be refused because of express legislative proscription (eg, the word ‘Olympic’ or the Olympic rings, cf Olympic Insignia Protection Act 1987 (Cth) ss 19, 24). In other cases, however, only the general legislative prohibition could be listed (eg, where the application contains a ‘captured image’ of a Commonwealth reserve, cf Environment Protection and Biodiversity Conservation Regulations 2000 (Cth) reg 12.38(1)). In any event, we believe that the specific legislative provisions that examiners would be required to consider under an amended test ought to be set out in the Trade Mark Regulations.

⁹⁰ Cf Trade Marks Act 1994 (UK) c 26, s 3(3)(b). See also Working Party Report, above n 27, 45 (Recommendation 6A(3)).

⁹¹ Working Party Report, above n 27, 47 (Recommendation 8A(3)).

⁹² See ACIP, A Review of the Relationship between Trade Marks and Business Names, Company Names and Domain Names, above n 11, 2–5 (in particular, Recommendations 1–6).