Trade Mark and Counterfeit Litigation in Australia

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. In this study, we created a database of all trade mark enforcement decisions of Australian courts for the period 1997-2003. Analysing the nature and outcomes of the trade mark litigation, we found a more complex story than previous studies: counterfeit proceedings where the trade mark owner always wins and the alleged infringer often fails to show up in court on the one hand; more contentious proceedings on the other where the trade mark owner only succeeded around a third of the time. The study raises, although it cannot answer, some interesting questions about trade mark owner knowledge and motivations in entering litigation.

Keywords: trade mark, litigation, Australia, counterfeit

JEL Classification: K11