Trade Mark Dilution in Australia?

Abstract

Since the Trade Marks Act 1995 (Cth) came into force there has been an ongoing debate over whether it affords owners of well-known registered marks specific protection against the dilution of their marks. However, there have been relatively few sustained attempts by commentators on either side of this debate to argue their cases in detail. In a recent article, Maurice Gonsalves and Patrick Flynn have contended that for a variety of reasons the infringement provision contained in s.120(3) of the Act is, without doubt, an explicit anti-dilution provision. I wish to suggest that this argument is misplaced. Rather, a careful analysis of the legislative history of s.120(3), combined with a close reading of its text and a consideration of how it operates within the Act as a whole, reveals that the provision has a more limited scope than that envisaged by Gonsalves and Flynn. Equally importantly, an investigation of the meaning of s.120(3) helps to shed light on broader questions as to how various provisions of the Act intersect with each other, and, more generally, how the Australian registered trade mark system ought to function as a whole - issues that have not to date received the attention that they deserve.

Keywords: Intellectual Property Law