TRADE MARKS – infringement – s 120 of the Trade Marks Act 1995 (Cth) – use as a trade mark – whether use on information labels is use as a trade mark – whether use on a website is use in relation to goods or use in relation to online retail services – whether goods are of the same description. TRADE MARKS – defences to infringement – s 122(1)(a)(i) of the Act – good faith use of own name – where infringer had knowledge of prior use of mark – whether good faith use established. TRADE MARKS – defences to infringement – s 122(1)(f) and (fa) of the Act – whether person using the infringing mark would obtain registration – s 44(3) of the Act – honest concurrent use – whether honest use established – application of s 58 and s 60 of the Act to honest concurrent use defence. TRADE MARKS – defences to infringement – s 122(1)(e) of the Act – exercising a right to use a trade mark given under the Act – whether products infringed fall within scope of right to use trade mark. TRADE MARKS – cancellation of registered trade marks – s 88(2)(a) of the Act – application to cancel marks on grounds on which registration could have been opposed – s 58 of the Act – whether owner of the mark as at the filing date. TRADE MARKS – cancellation of registered trade marks – s 88(2)(a) of the Act – application to cancel marks on grounds on which registration could have been opposed – s 44 of the Act – substantially identical or deceptively similar to registered mark – whether ss 44(3) or (4) made out in defending cancellation under s 44 – whether honest concurrent or prior use established. TRADE MARKS – cancellation of registered trade marks – s 88(2)(a) of the Act – application to cancel marks on grounds on which registration could have been opposed – s 60 of the Act – whether, because another trade mark had acquired a reputation in Australia, registration would be likely to deceive or cause confusion. TRADE MARKS – cancellation of registered trade marks – s 88(2)(c) of the Act – whether trade mark likely to deceive or cause confusion. TRADE MARKS – cancellation of registered trade marks – s 89 of the Act – whether discretion ought to have been exercised against rectification of the Register of Trade Marks. CONSUMER LAW – alleged breach of s 18 and s 29 of the Australian Consumer Law – passing off.
Original article available at: https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/full/2025/2025fcafc0087For more information, see the original judgement.
