Trade mark and counterfeit litigation in Australia

Kimberlee G. Weatherall, University of Melbourne, Australia
Paul H. Jensen, University of Melbourne
Jason Bosland, University of Melbourne

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This paper was first published in the Intellectual Property Quarterly, 2006. Please cite to published edition.

Abstract

The effectiveness of trade mark protection depends on the enforceability of rights. However, little is known about how trade mark owners actually go about enforcing their trade marks in the civil courts. The few studies which have emerged recently show a high success rate for trade mark owners. By analysing a database of trade mark decisions in Australia, we found a more complex story: on the one hand counterfeit proceedings where the owner always wins, and on the other hand, and more surprisingly, contentious proceedings where the trade mark owner succeeded only around one third of the time. The study raises, though it cannot answer, some interesting questions about trade mark owner knowledge and motivations in entering litigation.