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University of New South Wales Faculty of Law Research Series 2008

 

Trade Mark Dilution in Australia?

Michael Handler, University of New South Wales

Article comments

This article was first published in [2007] European Intellectual Property Review 307 and republished in (2007) 70 Intellectual Property Forum 36. This paper may also be referenced as [2008] UNSWLRS 48.

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.

Subject Area

Intellectual Property Law

Recommended Citation

Michael Handler, "Trade Mark Dilution in Australia?" (August 2008). University of New South Wales Faculty of Law Research Series. University of New South Wales Faculty of Law Research Series 2008. Working Paper 48.
http://law.bepress.com/unswwps/flrps08/art48

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