“The tax office is well known but Madonna is famous”

But of course…everyone knows that Madonna is famous but why is it important that she is famous as distinct from being well known?  The answer lies in the Trade Marks Act, specifically section 120(3) which addresses infringement of “well known” trade marks. 

This provision was analysed in a recent application to the Federal Court, Solahart Industries Pty Ltd & Anor v Solar Shop Pty Ltd & Anor.  Solahart originally claimed that the respondents had engaged in trade mark infringement, passing off and misleading and deceptive conduct.  In this application, Solahart sought leave to amend their statement of claim two weeks before trial, by adding a new ground of trade mark infringement under section 120(3) of the Act.  Section 120(3) deals with infringement of “well known” trade marks in relation to unrelated goods or services.  The respondents argued that they would not have enough time to gather additional evidence to rebut the contention that the applicants’ trademarks were “well known”, and thus the application to amend the statement of claim should be refused.  In response, the applicants argued that no new evidence was necessary, as the applicants’ “substantial goodwill and reputation in the mark” was already an issue in the proceeding. 

Justice Perram began his analysis of these phrases by defining the term “well known”.  He found that “well known” meant “widely or generally known”, but that it did not mean “famous”, which implies a further element of excellence or achievement.  Thus the distinction that, “the tax office is well known but Madonna is famous”. 

His Honour further found that it was possible to show that a trader had “substantial goodwill and reputation” in a mark without that mark being “well known”, citing the examples of manufacturers of lenses, engine cylinders or microscopes, where a mark may have built up significant reputation in the particular field but not be known outside that field.  Accordingly, Justice Perram found that if the amendment was allowed, he would have to allow the respondents extra time to produce evidence to defend the new claim.  As the applicants failed to provide any reason for their delay in amending the pleading, his Honour refused the application to amend the statement of claim.    

Despite the outcome of this application, Justice Perram provided an important analysis of section 120(3) of the Act, particularly in relation to the meaning of a “well known” trade mark.  To access a copy of this decision, please click here.

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