TRADE MARKS – infringement of registered trade mark established – where registered trade mark is a name – joint tortfeasance – principles discussed
TRADE MARKS – specification of registered goods – meaning of “clothes” – role of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks as an aid to construction
TRADE MARKS – defence to infringement – where infringing mark is a name mark – own name defence – whether joint tortfeasor who does not use the infringing mark can rely on the defence – whether defence applies to the use of an adopted name – where person relying on defence has assigned the name mark – whether assignor can rely on continuing use of own name as a defence
TRADE MARKS – defence to infringement – where infringing mark is deceptively similar to the registered mark – whether person using the infringing mark would obtain registration – honest concurrent use – whether concurrent use established – whether honest use established
TRADE MARKS – cancellation – whether, because of reputation in prior mark, use of the registered mark would be likely to deceive or cause confusion – where ground of cancellation established – whether discretion should be exercised not to cancel the registration of the registered mark
TRADE MARKS – cancellation – whether, because of circumstances applying at the time when the application for rectification is filed, the use of the registered mark is likely to deceive or cause confusion – where ground of cancellation is established – whether discretion should be exercised not to cancel the registration of the registered mark
Related Federal Court cases on trade marks
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Deakin University v Macreadie [2026] FCA 481
CONSUMER LAW – application for permanent injunctions pursuant to s 232 of the Australian Consumer Law restraining the respondents from representing that the second respondent is the owner of the relevant intellectual property and trade marks of the Blue Carbon Lab – application for mandatory injunction requiring the second respondent to change its name –…
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Black Star Pastry Pty Ltd v Richards (No 2) [2026] FCA 383
TRADE MARKS – whether one of two joint owners of a trade mark can apply for registration of the trade mark in own name under section 27 Trade Marks Act 1995 (Cth) – where section 28 Trade Marks Act 1995 (Cth) permits registration of trade mark by joint owners – where section 20(5) Trade Marks…
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Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd [2026] FCA 202
TRADE MARKS – appeal from decision of Registrar – non-use – mark used in relevant period as part of composite marks – “mark within a mark” – appeal allowed TRADE MARKS – whether second word in each of composite marks used after trade mark were additions or alterations “substantially affecting its identity” – held that…
