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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Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd [2026] FCA 161
TRADE MARKS – infringement – container rotation systems – containerised bulk handling field – word mark – “rotainer” – whether “rotainer” is purely descriptive – genericism – where the infringer attempted to genericise the registered trade mark – where purported generic and descriptive meaning of the word mark is uncertain – evolution theory of changes…
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Prezzee Pty Ltd v Epay Australia Pty Ltd [2025] FCA 1662
TRADE MARKS – applicant the registered owner of trade marks comprising or including the word “Prezzee” – applicant using the word “Prezzee” on and in relation to electronic gift cards – respondent incorporating the word “Prezzy” on physical and electronic gift cards – applicant seeking interlocutory relief pending judgment on an action alleging trade mark…
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NCL Corporation Ltd v Norwegian Brand Ltd [2025] FCA 1613
INTELLECTUAL PROPERTY – trade marks – international registration designating Australia – objection to extension of international protection to Australia – whether trade mark applicant had intention to use mark in Australia – where trade mark applicant did not participate in appeal proceeding – no intention to use found PRACTICE AND PROCEDURE – international service –…
