What the UK Knows About Trade Mark Law in the Commonwealth

What the UK Knows About Trade Mark Law in the Commonwealth Presented by: Mr. Burrell Date: 7th November 2024 Divergence And Its Causes - Attention has inevitably fallen on issues of local drafting / conscious policy decisions, e.g., retention of 'use as a trade mark' as a threshold requirement for infringement: TMA 1995 (Cth), s 120; TMA 2002 (NZ), s 89(2); graphic representation as purely administrative requirement: TMA 1995 (Cth), s 40. - Other doctrinal differences: recitals as an aid to interpretation. - Differences in mindset: Kerly and the 1994 Act as a 'more or less...a complete break with the past'. - Differences in mode or style of judicial reasoning. - Different approach to legislative interpretation. Policy driven rewriting of the legislation: Case C-292/00, Davidoff & Cie SA v Gofkid Ltd [2003] ECR I-389, [24][30]. Cf. presumption against surplusage (Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2009] SGCA 9); Intellectual Reserve Inc v Sintes [2009] NZCA 305 (capable of distinguishing as a threshold requirement). - Swings and uncertainty in CJEU case law. Paul Sumpter, Trade Marks in Practice (LexisNexis 2018) when interpreting s 18(1) of the TMA 2002 (NZ) (the equivalent to s 3(1) 1994 Act), 'the United Kingdom cases should be treated with caution because of the influence of European law and the fact that decisions of the CJEU may not be producing a body of law that is always coherent'. - Decisions that appear surprising or unorthodox, particularly when divorced from, say, a desire to reduce differences in national competition law via trade marks: Mitsubishi v Duma; L'Oréal v Bellure. Looking Forward - Consequences of divergence: Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44 (Nice classification irrelevant to the scope of protection). - Are there opportunities for (re) convergence? - Should we care?