INTELLECTUAL PROPERTY – trade marks – originating application alleging infringement of trade marks including the plain word mark mercato – whether the respondent has used, as a trade mark, a sign that is deceptively similar to any one of the applicant’s trade marks sued upon – cross-claim for cancellation of trade marks or rectification of the Register of Trade Marks in respect of them – whether the cross-respondent was the owner of the trade mark mercato at the time that it applied for registration of it – whether the trade mark mercato is inherently capable of distinguishing the goods and services of the cross-respondent from the goods and services of other traders – whether the word mercato, in its ordinary signification, is commonly understood to mean market among those with an interest in the relevant goods and services – whether other traders should be permitted to use the word in its ordinary signification to describe their goods and services – whether evidence of trade usage of the word supports a conclusion that the word has an established meaning among a target audience comprised of English speaking Australians – whether the registration of a trade mark resulted from representations or evidence that were false in material particulars – meaning of “material particulars” in s 62(b) of the Trade Marks Act 1995 (Cth) – infringement action dismissed – cross-claim allowed in part
Original article available at: https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2024/2024fca0138
For more information, see the original judgement.
