Marketing & Consumer Law
While marketing and consumer laws provide trade mark owners with a mechanism to enforce their intellectual property rights, care must be taken not to fall foul of these laws when providing goods and services.
In Australia and New Zealand, considerable use of a trade mark in the market place will afford the owner enforceable rights to that trade mark, whether it is registered or not. These rights (often referred to as common law rights) are governed by marketing and consumer laws including The Fair Trading Act and the tort of passing off.
Reliance on common law rights requires the owner to establish that its unregistered trade mark has acquired a reputation, and that there has been customer confusion arising from a misrepresentation. Only then can owners bring an action for passing off or under the Fair Trading Act.
The Fair Trading Act 1986
The Fair Trading Act 1986 is designed to protect consumers against misleading and deceptive conduct in the course of trade, although anyone may make a claim under this legislation including trade competitors. The Fair Trading Act is useful as an alternative course of action if you have an unregistered trade mark that is used in New Zealand, or where damage cannot be proved.
Although not consumer focussed, passing off aims to protect the goodwill and reputation developed by a business. It stops a trader misrepresenting goods or services as being those of another, or having some association or connection with another trader. Unlike a Fair Trading Act action, it is necessary to show that damage has been caused or is likely to be caused under passing off.
Fair Trading Act and passing off claims are often made together. They frequently form part of a broader case in a trade mark opposition at the intellectual property office or in a trade mark, patent or copyright infringement case before the courts.
Our trade mark specialists and dispute resolution lawyers are experienced in advising on Fair Trading Act, Australian Consumer Law, and passing off issues, as well as sending cease and desist letters to alleged rights infringers, and filing court proceedings including injunctions where necessary.