Registration of a trade mark gives you exclusive rights to that mark, which makes it easier for you to take legal action to enforce your trade mark rights. The elements that need to be established under the Trade Marks Act 1995 (Cth) (the Act) in order to succeed in an action for infringement of your trade mark registration are significantly less than those required for the actions of passing off, and for misleading or deceptive conduct under the Australian Consumer Law. When enforcing your rights in a registered trade mark pursuant to sections 120(1) and (2) of the Act, it is not necessary to establish a reputation in the relevant trade mark, which is unlike an action for passing off. In light of this, a trade mark registration is an advantage when you wish to protect a trade mark that is valuable to your business, but you have not yet have built up a reputation in the trade mark.
Interestingly, in the recent case of JBS Australia Pty Ltd v Australian Meat Group Pty Ltd  FCA 1421 which involved two competing meat businesses, the role of reputation in a trade mark was taken into consideration by the primary judge when the deceptive similarity of respective trade marks was determined in an action for registered trade mark infringement.
JBS Australia Pty Ltd (JBS) took action against Australian Meat Group Pty Ltd (AMG) in the Federal Court for infringement of its two trade marks for AMH and an AMH Logo registered in relation to meat and meat products (among other things) under section 120(1) of the Act. JBS claimed that the five trade marks used by AMG, each of which contained the letters “AMG,” were substantially identical with, or deceptively similar to its two registered trade marks, and the “AMG” marks were used in relation to the same goods for which JBS’s trade marks were registered.
The primary judge found in favour of JBS, and concluded that each of the AMG marks was deceptively similar to each of the AMH marks. In coming to this conclusion, it was clear that his Honour was significantly influenced by the reputation he found to exist in each of the AMH marks, when determining whether confusion could arise in the mind of a consumer between the respective marks when purchasing meat products in the market in which both parties operated.
However, AMG appealed this decision, and it was overturned by the Full Federal Court in Australian Meat Group Pty Ltd v JBS Australia Pty Limited  FCAFC 207 (27 November 2018). The Full Court noted that the primary judge took into account the strong brand reputation in the AMH trade mark owned by JBS when assessing the deceptive similarity of the respective marks, and held that this approach was incorrect when determining trade mark infringement under the Act. It was ultimately determined by the Full Court that each of the trade marks were not deceptively similar to each other by examining the characteristics of the trade marks themselves, and the context of the transactions within which the marks would be used. JBS applied for special leave to appeal to the High Court, but it was refused by the High Court in May 2019.
This decision of the Full Federal Court confirms that reputation in a trade mark is not relevant when determining the deceptive similarity of trade marks for the purposes of trade mark infringement, when the respective marks at issue are used for the same goods or services (pursuant to section 120(1) of the Act).
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By Erin Cassidy