Trade Mark Law’s Identity Crisis (Part 1)

Abstract

The concept of ‘substantial identity’ has not been the subject of sustained critical inquiry in Australian trade mark law, notwithstanding that it plays a crucial role in relation to trade mark ownership, non-use, amendments to representations, and the criminal offences. The first part of this two-part article reveals, through novel doctrinal analysis, how over the course of the twentieth century a settled, strict interpretation of substantial identity took shape in Australian trade mark law. This orthodox interpretation was recently disrupted by the Full Court of the Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd. In these decisions the Court reinterpreted earlier High Court authority to set up a new, significantly more expansive test of substantial identity – one that is already starting to have a major, and concerning, impact throughout Australia’s trade marks system.