Trade marks 

A trade mark protects a sign used to distinguish one trader's goods or services from another's — a brand identity, in ordinary language. Australian law protects that identity in two distinct ways: through a statutory registration system, and, alongside it, through the common law action of passing off.

What a trade mark protects

A trade mark is a sign (s 17)² — a word, phrase, logo, shape, or in principle other signs such as a colour, sound or scent — used, or intended to be used, to distinguish the goods or services of one trader from those of another. Its function is to act as a badge of origin: it tells consumers which trader stands behind a product, and it protects the trader's investment in building a reputation around that sign. This is a different concern from copyright, which protects expressive content, and from patents, which protect technical inventions. A trade mark protects the sign as a marker of trade origin, and, unlike copyright or a patent, registration can in principle be renewed indefinitely for as long as the mark continues to be used and the renewal fees paid.

Registration and distinctiveness

Trade marks are registered through a national register administered by the Commonwealth. To be registrable, a sign must be capable of distinguishing the applicant's goods or services from those of other traders — it must possess distinctiveness, either because it is inherently adapted to distinguish, or because it has acquired distinctiveness through extensive use in the market. Signs that are purely descriptive of the goods or services, generic, or common to the relevant trade generally cannot be registered without strong evidence that the public has come to associate the sign specifically with the applicant. Registration will also be refused where the sign is substantially identical with, or deceptively similar to, an earlier registered mark for the same or similar goods or services, or otherwise falls within a specific statutory exclusion. A mark is deceptively similar to another where it "so nearly resembles that other trade mark that it is likely to deceive or cause confusion", and in evaluating that likelihood the marks are judged as a whole, by look and by sound: Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186³. Once registered, the owner has a nationwide statutory right, presumptively valid, that is considerably easier to enforce than an unregistered claim.

Registration can still be undone. A prescribed court may order the Register rectified by "cancelling the registration of a trade mark" on, among other grounds, "any of the grounds on which the registration of the trade mark could have been opposed under this Act" (s 88(1)(a), (2)(a)), so an opposition ground is also a ground of cancellation. One is reputation: under s 60, registration may be opposed where another trade mark had, before the priority date, "acquired a reputation in Australia", and because of that reputation the use of the opposed mark would be likely to deceive or cause confusion⁴. Taylor v Killer Queen LLC [2026] HCA 5 (11 March 2026) applied ss 60 and 88 as they stand to a clothing mark, "KATIE PERRY", registered to a fashion designer, which the pop singer Katy Perry and her companies sought to cancel⁵. Jagot J, with whose answers on statutory construction Gordon A-CJ and Beech-Jones J expressly agreed, held that a trade mark can acquire a reputation only in respect of particular goods or services, and that a reputation in some goods or services is not for that reason a reputation in others, although use of the opposed mark on other goods may still be likely to confuse because of that reputation, as a question of fact in each case. The Court divided on application. Jagot, Steward and Gleeson JJ, in separate reasons, held that neither the s 60 ground nor the separate ground in s 88(2)(c) was established, allowed the appeal and left the registration standing, remitting undecided grounds to the Full Court of the Federal Court. Gordon A-CJ and Beech-Jones J, in joint reasons, would have dismissed the appeal. Jagot J and Gleeson J each held that the common practice of pop stars in selling clothing could not give the singer's mark a reputation in clothing.

Rights of a registered owner

A registered owner has the exclusive right to use the mark in relation to the goods or services it is registered for, and to authorise others to do so by licence. Infringement occurs where another trader uses, as a trade mark and without authorisation, a sign substantially identical with or deceptively similar to the mark. Section 120 then has tiers, and running them together is the usual error. Under s 120(1) the use need only be in relation to the goods or services the mark is REGISTERED for: there is no separate "closely related goods" element and no separate confusion element, because the likelihood of deception is already inside the s 10 definition of deceptive similarity. Section 120(2) extends the action to goods or services of the same description, or closely related to the registered ones — and there the confusion question returns as a DEFENCE, the defendant escaping liability if it establishes that using the sign as it did is not likely to deceive or cause confusion. So the onus sits with the defendant, not the owner. Section 120(3) reaches unrelated goods where the mark is well known in Australia. The comparison the Act calls for is deliberately artificial wherever it asks whether marks are deceptively similar. Stating it for infringement, the High Court has said the marks "are not to be looked at side by side", and that instead "the notional buyer's imperfect recollection of the registered mark lies at the centre of the test for deceptive similarity"³.

Section 122 then qualifies s 120. "In spite of section 120", a registered mark is not infringed where the court is of the opinion that the defendant "would obtain registration of the trade mark in his or her name if the person were to apply for it" (s 122(1)(f)). Separately, s 122(1)(fa) applies where the defendant uses a substantially identical or deceptively similar mark and the court is of the opinion that the defendant would obtain registration of that mark. Where an earlier registered mark would otherwise bar registration under s 44(1) or (2), registration can still be obtained if the Registrar accepts the application under s 44(3), because "there has been honest concurrent use of the 2 trade marks" (s 44(3)(a)) or because other circumstances make it proper (s 44(3)(b)), or if s 44(4) applies, which stops the Registrar rejecting the application where the applicant's continuous prior use meets its requirements⁶. Zip Co Limited v Firstmac Limited [2026] HCA 16 (13 May 2026), in one set of joint reasons of Gageler CJ, Gordon, Edelman, Steward and Beech-Jones JJ, applied those provisions as they stand and decided two points. The defences are assessed at the time of each alleged potential infringement, not at the filing of the defence or the trial, and they apply separately to each occasion of use. And "honest" in s 44(3)(a) requires a state of mind that is honest by the standards of ordinary, decent people, which the defendant must prove; knowledge of the earlier mark is not necessarily fatal, but a finding of knowledge will ordinarily weigh strongly against honesty⁷. The Zip companies had begun trading under ZIP in November 2013 knowing of adverse examination reports on their own applications, and did not prove honesty from that time, so the s 122 defences failed and the appeal was dismissed.

Passing off: protecting unregistered reputation

Passing off is a common law action that predates the statutory trade mark system and continues to exist alongside it. It protects a trader whose reputation and goodwill are damaged by another's conduct, even where the trader holds no registered trade mark at all. The classic formulation has three elements: the claimant must show a goodwill or reputation attached to their goods or services, usually recognised through a distinguishing name, get-up or mark; a misrepresentation by the defendant, whether intentional or not, that leads or is likely to lead the public to believe the defendant's goods or services are those of, or connected with, the claimant; and damage, or a real likelihood of damage, resulting from that misrepresentation.

Where the complaint is that the buying public has been misled, the statutory misleading-conduct prohibition usually runs alongside passing off, and it asks a question of its own. Because the conduct is directed at a class rather than at identified individuals, the court isolates a representative member of that class and asks why the misconception has arisen or is likely to: Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45¹. Reactions that are extreme or fanciful are not attributed to that hypothetical consumer, even where a witness genuinely held them.

Why both exist

Passing off matters because it protects reputation actually built up in the market regardless of registration — useful where a business has not registered its mark, where a sign could not clear the distinctiveness bar for registration, or where the protection needed extends beyond the specific goods or services a registration covers. Registration, in turn, gives a trader clearer, more certain, and more easily enforced statutory rights, without having to prove reputation and public confusion afresh in every dispute. A well-advised trader will usually register, while keeping passing off available as a fallback for the many situations registration does not reach.

Applying this in a problem question

1. Identify whether the sign in question is registered — if so, start with the Trade Marks Act and the statutory infringement test.
2. If the sign is unregistered, or registration is doubtful, work through passing off: goodwill, misrepresentation, damage.
3. For a registration question, test distinctiveness: is the sign inherently adapted to distinguish, or does it depend on evidence of acquired distinctiveness through use?
4. For an infringement question, compare the marks and the relevant goods or services, and ask whether the use is likely to deceive or cause confusion.
5. Consider whether both a registered trade mark claim and a passing off claim are available on the facts, and identify what each adds that the other does not.