Reputation, Confusion and Discretion in Australian Trade Mark Law: Taylor v Killer Queen LLC

Abstract

In Taylor v Killer Queen LLC, the High Court of Australia will have the opportunity to address three complex and unresolved issues under the Trade Marks Act 1995 (Cth). The first issue relates to one of the key grounds for cancellation of a trade mark registration, namely that another mark had acquired a reputation at the registered mark’s priority date and that the use of the later mark at that time would have caused confusion. The appeal will require consideration of how to determine when a trade mark has acquired a reputation and when the use of a similar mark, but in a different commercial field, will cause confusion. The second issue relates to a separate cancellation ground that applies where the use of the registered mark has come to cause confusion post-registration, and will require the High Court to clarify the nature of the use that needs to be considered. The third issue goes to the interpretation of a provision that gives the court discretion not to order the cancellation of a registration, even if one of the aforementioned grounds of cancellation has been made out. We explore each of these issues, highlighting the main areas of uncertainty on which it would be useful to receive guidance from the High Court. We pay particular attention to the third issue, arguing that the provision in question should be interpreted so that it does not in fact give a court any discretion to refuse cancellation where the application for cancellation is based on the first cancellation ground at issue in this case.