Gummow J
26.
- goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
- services that are closely related to registered goods; or
- services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
- goods that are closely related to registered services.
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
(3) A person infringes a registered trade mark if:
- the trade mark is well known in Australia; and
- the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
- goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or
- services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and
- because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and
- for that reason, the interests of the registered owner are likely to be adversely affected.
(4) In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia, one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason." (emphasis in original)
