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. This second part of a two-part article provides a critique of the Federal Court’s recent move away from a strict approach to, and embrace of an expansive test of, substantial identity. It is argued that the Court’s new interpretation is inconsistent with earlier authority and pays insufficient regard to the historical and normative underpinnings of the provisions of the Trade Marks Act 1995 (Cth) in which substantial identity has vital work to do. It has the potential to destabilise core doctrines of Australian law and unjustifiably privilege the interests of particular parties in the trade marks system. The article concludes with options for reorienting Australia’s law of substantial identity.
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