Case: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191
Outcome: cited
terms of s 52 are well-known but bear repetition. The section provides as follows: Misleading or deceptive conduct (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. (2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1). Principles relevant to the construction and application of s 52 are well settled. For present purposes it is sufficient to note that conduct will be " misleading or deceptive " if it induces or is capable of inducing error: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191 at 198. Gibbs CJ there further observed that " [t]he words 'likely to mislead or deceive' ... add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone ". The function of a trade mark is to identify the source of goods. By way of contrast, " the purpose of s 52 [of the Trade Practices Act ] is to prohibit misleading or deceptive conduct which will affect the recognition or identification of goods ": Parkdale Custom Built Furniture (1982) 149 CLR at 210 per Mason J. Section 120 of the Trade Marks Act provides as follows: When is a registered trade mark infringed? (1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. (2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (a) goods of the same description as that of goods ( registered goods ) in respect of which the trade mark is registered; or (b) services that are closely related to registered goods; or (c) services of the same description as that of services ( registered services ) in respect of which the trade mark is registered; or (d) goods that are closely related to registered services. However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion. (3) A person infringes a registered trade mark if: (a) the trade mark is well known in Australia; and (b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (i) goods ( unrelated goods ) that are not of the same description as that of the goods in respect of which the trade mark is registered ( registered goods ) or are not closely related to services in respect of which the trade mark is registered ( registered services ); or (ii) services ( unrelated services ) that are not of the same description as that of the registered services or are not closely related to registered goods; and (c) because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and (d) for that reason, the interests of the registered owner are likely to be adversely affected. (4) In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia , one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason.