An empirical investigation of 20 years of trade mark infringement litigation in Australian courts

In Australia, there has been little empirical research into the enforcement of trade mark rights under s 120 of the Trade Marks Act 1995 (Cth) (‘1995 TM Act’). Nor has there been empirical research into the common practice of litigating concurrent claims under passing off or s 18 of the Australian Consumer Law 2010 (Cth) (‘ACL’). This article reports on the first study to systematically identify and review all 78 trade mark infringement judgments under the 1995 TM Act over the 20-year period since its inception (1 January 1996–1 January 2016). The analysis reveals that, contrary to initial concerns, there has been a significant decline in pleading under the ‘new’ and expansive ss 120(2) and (3) provisions and an increased reliance on the classic parameters of s 120(1). Significantly, this article finds that passing off in the context of court-resolved s 120 infringement has become redundant. In addition, the analysis reveals that a concurrent claim under ACL s 18 improves the chances of a plaintiff’s net win rate by 21.7%. The implications of these results are discussed in relation to litigation practice and doctrine. This article also demonstrates the utility of empirical research in resolving speculative assumptions about the law and in facilitating better informed legal scholarship and practice.