Section 53 of the Trade Marks Act (Chapter 385) defines the wrong that a registration exists to prevent.
Section 53(1)
A registered trade mark is infringed by a person who, not being the registered proprietor of the mark or a registered user using by way of permitted use, uses a mark which is substantially identical with, or deceptively similar to, the trade mark, in the course of trade, in relation to goods in respect of which the trade mark is registered.
| Element | What must be shown |
|---|---|
| 1. A registered trade mark | A subsisting registration — proved by a certified extract, and presumed valid under section 50 |
| 2. Not the proprietor or a permitted user | The defendant is neither the registered proprietor nor a registered user using by way of permitted use as defined in section 1 |
| 3. Uses a mark | Use of a printed or other visual representation; in relation to goods, use on, or in physical or other relation to them (s 1(2)) |
| 4. Substantially identical or deceptively similar | Near-identity on a side-by-side comparison, or resemblance likely to deceive or cause confusion (s 1(3)) |
| 5. In the course of trade, on the registered goods | Commercial use, in relation to goods in respect of which the mark is registered — and “goods” includes services |
Unlike passing off, section 53 does not require proof of reputation, of actual deception, of damage, or of any intention on the defendant’s part. Innocence is not a defence to liability, though it may bear on the choice between damages and an account of profits.
The comparison — substantially identical, or deceptively similar
A trade mark is deemed to be deceptively similar to another if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion.
Substantially identical is a direct comparison of the two marks, side by side, weighing their similarities and differences and the importance of each. Deceptively similar is a different exercise: the marks are not compared side by side, but judged by the effect on a person with an imperfect recollection of the registered mark, encountering the defendant’s mark in the market.
What is weighed in practice: appearance; sound, which matters greatly where goods are asked for by name across a counter; idea or meaning, since two different words conveying the same idea can deceive; the essential or dominant feature of each mark; and the nature of the goods and the market — the more ordinary and inexpensive the purchase, the less careful the buyer.
Section 57 assists: in any action or proceeding relating to a trade mark, evidence is admissible of the usages of the trade concerned and of any relevant trade mark, trade name or get-up legitimately used by other persons. Where a common element is used across the trade, its presence in both marks carries less weight.
“In the course of trade”, and “in relation to goods”
Section 1(2) defines the reach of “use”: references to use of a mark are to use of a printed or other visual representation, and references to use in relation to goods are to use on, or in physical or other relation to, goods. The words “or other relation” carry the section well beyond the label.
Section 81, in the criminal Part, spells out the same idea in detail, and is a useful guide to what counts as applying a mark to goods: application to the goods themselves; to a covering, label, reel or thing in or with which the goods are sold or held for trade; use in a manner likely to lead to the belief that it refers to, describes or designates the goods; and use in a sign, advertisement, invoice, catalogue, business letter, business paper or price list where goods are then delivered on an order made by reference to the mark.
Infringement reaches use in relation to goods in respect of which the trade mark is registered. Unlike section 24 at the registry stage, section 53(1) does not extend to goods of the same description.
Use of a similar mark on different goods is therefore not an infringement of that registration. Where such use damages you, the answers lie in passing off, or in holding registrations across the classes that matter.
Section 53(2) — the Part B defence
In an action for infringement of a trade mark registered in Part B — not being an infringement occurring by reason of an act referred to in section 54 — an injunction or other relief shall not be granted if the defendant establishes to the satisfaction of the Court that his use is not likely to deceive or cause confusion, or to be taken as indicating a connexion in the course of trade between the registered goods and a person having the right, as registered proprietor or registered user, to use the mark.
The burden is on the defendant, but if it is discharged the Part B proprietor recovers nothing at all. A Part A registration carries no equivalent defence — one of the two practical differences between the Parts, the other being the durability of validity under sections 51 and 52.
Who may sue, and where
- The registered proprietor, relying on section 49(1).
- A registered user — but indirectly. Under section 70(1), subject to any agreement with the proprietor, the registered user may call on the proprietor to sue, and if the proprietor refuses or neglects to do so within two months, the user may sue in his own name as if he were the proprietor, joining the proprietor as a defendant. A proprietor so joined is not liable for costs unless he enters an appearance and takes part (s 70(2)).
- Jurisdiction: section 58 confers jurisdiction on the National Court to hear an infringement action, but expressly does not deprive another court of jurisdiction it possesses.
- Pleading: under section 92, it is not necessary to set out a copy or description of the mark — it may be referred to as a registered trade mark and identified by its registered number.
Read section 90. A threat of infringement proceedings, by circular, advertisement or otherwise, exposes the threatener to an action for a declaration that the threats are unjustifiable, an injunction, and damages — unless he satisfies the court that the mark is registered and that the acts complained of would constitute infringement. Section 90(2) provides an answer: the section does not apply where the proprietor, or a registered user acting under section 70(1), with due diligence commences and prosecutes an infringement action.
Building an infringement case
- Obtain a certified extract of the registration under section 9, confirming the goods, the Part, any conditions or limitations, and any disclaimers.
- Buy and preserve samples of the offending goods, with receipts, dates and places.
- Photograph the use — packaging, signage, invoices, advertising, price lists.
- Compare on both tests, and identify the essential feature you say has been taken.
- Confirm the goods fall within the specification.
- Check the defences in section 55 before writing — own name, honest description, continuous prior use, spare parts and accessories, and coexisting registrations.
- Consider the criminal route as well. Part XI creates offences for forgery and false application, and for selling and importing such goods, with forfeiture under section 78.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 9, 24, 49–58, 70, 78, 81, 90, 92; Part XI
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.