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s42 – mark is scandalous or contrary to law

s43 – mark is likely to deceive or cause confusion

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited (1954) 91 CLR 592

Pfizer Products Inc v Karam [2006] FCA 1663 at [27] (1 December 2006)

Scotch Whisky Association v De Witt [2007] FCA 1649 at [48]-[63]

s44 – mark is identical etc to trade mark

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited (1954) 91 CLR 592

Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

(6)Grounds for opposition to registration

Part 5 Div 2 TMA (ss57-62A) sets out the grounds upon which a trade mark application can be opposed:

s57 - same grounds as for rejection of application under Part 4 Div 2, except s40

s58 – applicant not owner of mark

s58A – opponent’s earlier use of similar trade mark (a new ground from 23/10/06))

s59 – applicant not intending to use mark

s60 – trade mark similar to mark that has acquired a reputation (amended from 23/10/06)

s61 – mark consists of a false geographical indication

s62 – application is defective

s62A – application made in bad faith (a new ground from 23/10/06))

(7)Ownership, rights, assignment and licensing

(i)Who can make an application

s27 TMA

*Aston v Harlee Manufacturing Co (1960) 103 CLR 391 (RS 2005 at 495-499; RR 2005 at 988-990)

Moorgate Tobacco Co Limited v Phillip Morris Limited (No 2) (1984) 59 ALJR 77

(ii)Rights of registered owner

s20 – rights given by registration

s21 – trade mark is personal property

s22 – power of registered owner to deal with trade mark

(iii)licensing – the ‘authorised user’

s6 – definition of ‘authorised use’

s26 – powers of authorised user


(i)Overview of infringement principles

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