TRADE MARKS – infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) (the Act) – whether the respondent used the plain word mark THE PRACTICE as a trade mark – whether the respondent’s marks are substantially identical with, or deceptively similar to, the applicant’s mark – defence under s 122(1)(b)(i) of the Act – whether the respondent used its logo in good faith to indicate the kind, quality or intended purpose of the services it offers – defence under s 122(1)(f) or (fa) of the Act – whether the respondent would obtain registration of its logo under s 44(3)(a) or (b) of the Act — where respondent’s use of its logo was not in good faith or honest due to inadequate searches – defences not made out – claim allowed – declaratory and injunctive relief granted — damages of $200,000 awarded, including $100,000 in additional damages
Related trade mark cases
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Paco Nominees PL v Ella Secret Australia PL (Default Judgment) [2025] FCA 366
TRADE MARKS – default judgment – respondents’ failure to comply with orders and appear – claim of trade mark infringement – default judgment granted PRACTICE AND PROCEDURE – application for default judgment pursuant to r 5.23 of the Federal Court Rules 2011 (Cth) – whether appropriate to grant injunction – whether satisfied that an order…
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Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12
TRADE MARKS – validity – ownership – where primary judge found appellant (Cantarella) was not the owner of the ORO trade mark and ordered that registrations be cancelled pursuant to ss 88(1)(a) and 58 of the Trade Marks Act 1995 (Cth) (“the Act”) – where primary judge found prior use of trade marks by third…
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Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd (Costs) [2025] FCA 38
COSTS — where the applicants brought a claim of trade mark infringement against the respondent – where the respondent brought a cross-claim seeking the cancellation of the first applicant’s registered trade mark – where both the applicants’ claim and the respondent’s cross-claim failed – where the cross-claim was only ever defensive – whether the respondent…
Original article available at: https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2024/2024fca1299
For more information, see the original judgement.
