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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Paige LLC v Sage and Paige Collective Pty Ltd [2025] FCA 750
TRADE MARKS – whether composite marks containing the registered mark and other words (Opposed Marks) deceptively similar under s 44 of the Trade Marks Act 1995 (Cth) – whether the appellant’s trade mark acquired a reputation in Australia before the Priority Date and because of that reputation would likely deceive or cause confusion under s…
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Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87
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…
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National Cancer Foundation v Registrar of Trade Marks [2025] FCA 711
TRADE MARKS – appeal from decision of Registrar of Trade Marks to revoke registration of a trade mark – whether requirements in s 84A of the Trade Marks Act 1995 (Cth) (Act) are met – whether there is a basis to be satisfied that the mark should not have been registered – whether mark is…
