Trade Mark Law’s Identity Crisis (Part 1)

The concept of ‘substantial identity’ has not been the subject of sustained critical inquiry in Australian trade mark law, notwithstanding that it plays a crucial role in relation to trade mark ownership, non-use, amendments to representations, and the criminal offences. The first part of this two-part article reveals, through novel doctrinal analysis, how over the course of the twentieth century a settled, strict interpretation of substantial identity took shape in Australian trade mark law. This orthodox interpretation was recently disrupted by the Full Court of the Federal Court in Accor Australia& New Zealand Hospitality Pty Ltd v Liv Pty Ltd and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd. In these decisions the Court reinterpreted earlier High Court authority to set up a new, significantly more expansive test of substantial identity – one that is already starting to have a major, and concerning, impact throughout Australia’s trade marks system.