Melbourne Law School - Theses

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    Empirical analysis of judicial reasoning: all trade mark infringement cases under s 120 of the Trade Mark Act 1995 (Cth)
    Huang, Vicki Tse-Yen ( 2017)
    In Australia, there has been no empirical research examining what legal factors determine a trade mark infringement claim under s 120 of the Trade Marks Act 1995 (Cth) (‘1995 TM Act’). Nor has there been empirical research regarding the impact of litigating collateral, concurrent claims under passing off or s 18 Australian Consumer Law (‘ACL’). This thesis fills that gap and is first Australian study to employ systematic content analysis of judicial decisions to investigate multiple aspects of trade mark infringement law. The thesis findings are based on 78 Australian judgments reported over a 20-year period (1 January 1996 – 1 January 2016). This dataset represents all first instance trade mark infringement decisions reported since the commencement of the 1995 TM Act where a s 120 claim was judicially considered. The thesis method is based on an empirical approach used by Barton Beebe in his study of US trade mark infringement law. The empirical analysis provides insights not available via traditional doctrinal analysis and resolves several uncertainties in Australian trade mark infringement law. With regards to the outcome of a s 120 claim, regression analysis reveals that two statutory elements are determinative — ‘trade mark use’ and ‘deceptive similarity’. Chi-square analysis shows that with regards to trade mark use, the determinative factors are the ‘immediate context’ of the mark, the ‘purpose and nature of use’, and an application of ‘policy’ considerations. With regards to deceptive similarity, the three determinative factors are ‘similarity in ideas’, ‘similarity of impression’, and ‘aural/visual similarity’. These findings are consistent with Beebe’s study (in respect of the cognitive finding) that only three cues are judicially relied upon to determine a trade mark infringement claim. This thesis finds (contrary to the tropes in the literature) that considerations such as reputation, marketplace factors, or estimates of consumer confusion are not strongly associated with a use or deceptive similarity finding. Also, in contrast to the US critique — that the Australian trade mark use test creates inefficiencies caused by a laboured consumer-dependent inquiry — this thesis reveals that the Australian use test actually operates as an efficiency tool. This thesis shows that cases that ‘turn on’ use, resolve 39% more quickly than cases that ‘turn on’ deceptive similarity. The distinctive aspects of Australian law that enable the effectiveness of the trade mark use test are discussed. This thesis also reveals that a collateral claim under s 18 ACL improves the chances of a plaintiff’s net win by up to 10%; but that passing off in this context has become redundant. Importantly, the analysis also reveals a decline in pleading under ss 120 (2) and (3) and an increase in reliance on s 120 (1). A further, original contribution of this thesis is to provide doctrinal and practical implications of this and other findings. Reflections on the method as well as directions for future research are proposed in the concluding chapter.