Liability For Invisiblee Use of Trade Marks on the Internet

Abstract

This article critiques the proposed introduction of a US style doctrine of initial interest confusion (IIC) into Australian trade mark law. Specifically, it rejects the proposal put forward by Mahmoud Mando in a previous issue of this journal that legislative recognition of an IIC doctrine is needed to proscribe unseen uses of a plaintiff’s mark by a defendant on the internet. It argues that the IIC doctrine is both doctrinally and normatively inconsistent with Australian trade mark law. In making this argument, this article provides an overview of the development of internet search technology and a review of the Australian case law relating to unseen trade marks under s 120 of the Trade Marks Act 1995 (Cth) (‘TMA’). It concludes by arguing that the creation or adoption of new laws for invisible trade mark use represents a form of reactionary ‘cyber-exceptionalism’ which has the potential to lead to the unnecessary distortion of robust legal principles developed in the analogue environment.