s 60 – similar to another mark with a reputation

Section 60 TMA provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

• another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
• because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

To succeed under s 60, an opponent must identify “another trade mark” that had acquired a reputation amongst a significant or substantial number of consumers in the relevant market in Australia by the Relevant Date and that as a result of that reputation, use of the Opposed Mark would be likely to deceive or cause confusion.

In summary then, there are three elements:

• another trade mark;
• reputation;
• likelihood of confusion or deceptive.

Reputation in this context means the recognition of the Opponent’s mark by the public generally – although the size and nature of the relevant market must be taken into account.

Confusion must be the result of the reputation of the Opponent’s mark plus some degree of similarity between it and the Opposed Mark – though the marks do not have to be deceptively similar and might be quite dissimilar.