Shedding light on market definition in trade mark cases: Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd

Abstract

The author

• Marina Olsen is a lawyer with Banki Haddock Fiora in Australia.

This article

• An Australian Federal Court judgment from 2017, examining the likelihood of deception or confusion arising between the marks CLIPSAL and CLIPSO used in relation to electrical accessories, has shed light on the complexities of defining the market for goods or services in trade mark, passing off and consumer law claims.

• Where goods or services are traded in a ‘specialized market’, consisting of persons engaged in a particular trade and not generally sold to the general public, evidence from persons accustomed to dealing in that market is essential, and replaces the usual rule of the judge relying on their own assessment of likely deception or confusion. A market might be more accurately described as ‘segmented’, with some parts specialized and other parts not.

• Markets that were once strictly confined and defined might open up to new players and platforms. The advent of online shopping, and the ability for consumers to use the Internet to research areas that were once monopolized by traders, are significant drivers of this change.