27 Oct 2011

Same name, different companies: piggybacking off another's reputation and trade marks

by Mary Still

Use your trade mark on goods in a regulated way so that a "substantial impression of identity" might arise on consideration of the mark

Foreign entities wishing to take action against Australian companies trading under the same name and effectively piggybacking off their reputation or name have been provided with a clear illustration of the difficulties that can be involved, following a recent Full Federal Court judgment (Optical 88 Ltd v Optical 88 Pty Limited [2011] FCAFC 130).


The appellant is a Hong Kong company, which runs a well known chain of optical stores in the Asia-Pacific region under the business name "Optical 88". It has a significant reputation in Hong Kong. The first respondent is an Australian company which carries on an optometry practice and business in Australia under the same name. The director of that company is a Hong Kong born optometrist.

At first instance, the appellant brought claims based on trade mark and copyright infringement as well as passing off and a Trade Practices Act claim for misleading and deceptive conduct. The respondent sought to expunge the appellant's trade marks on the ground of non-use.

None of the appellant's claims at first instance succeeded, and the court order that the two marks registered by the appellant in Australia be removed from the register.

The appeal

On appeal, the appellant questioned the primary judgment on a number of grounds, including whether its marks should have been removed for non-use, whether the defence to trade mark infringement had been properly made out, and whether the primary judge should have found that the respondents infringed its copyright. No challenge was made to the first instance findings with respect to the passing off or Trade Practices Act claims.

The appellant failed on all grounds, with the Court commenting on a number of occasions throughout the judgment that there was not enough evidence to support appellate intervention in the decision.

Tips & tricks

The appellant had a number of difficulties in this case in protecting its intellectual property. Here are some tips to help protect your own trade marks:

  • use your trade mark on goods in a regulated way so that a "substantial impression of identity" might arise on consideration of the mark;
  • if you intend to expand overseas, make sure it is documented, as a mere "general intention" to use the mark "at some future but unascertained time" will not give evidence of intention to use the mark;
  • make sure your trade mark is registered in the correct category! Use of a trade mark may occur through only a small amount of promotional conduct in Australia, however, use must be in relation to the actual goods or services in relation to which the trade mark is registered.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.