Key Points:
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).
Background
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.
