Archive | Federal Court Decisions

Trademark Lawyer-Federal Court- Shape Shopfitters

Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 3) [2017] FCA 865 (1 August 2017) Unsuccessful application by Shape Shopfitters (Applicant) to restrain use by Shape Australia (Respondent) of various trade marks containing the word SHAPE. The Applicant re-branded to Shape Shopfitters in mid 2012 and has used various trade marks containing or […]

Trademark Lawyer – Full Federal Court – Insight Radiology Appeal

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (26 May 2017) The Full Federal Court (Greenwood, Jagot and Beach JJ) dismissed Pham Global’s appeal and, in the process, reinforced the importance of correctly identifying the correct applicant for trademark registration because a subsequent transfer of ownership cannot cure an incorrect […]

Trademark Lawyer – Federal Court – CITYINDEX Appeal

GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 (16 May 2017) Successful appeal by Gain Capital against the Registrar’s decision refusing trademark registration of its CITYINDEX (Stylised) and IFX A City Index company Logo shown below filed on 9 November 2010 for financial services in class 36. The Registrar’s decision upholding […]

Trademark Lawyer – Federal Court – DISCOVER DOWNUNDER Appeal

Bauer Consumer Media Limited v Evergreen Television Pty Ltd [2017] FCA 507 (12 May 2017) Unsuccessful appeal by Bauer against the Registrar’s decision refusing their opposition to trademark registration of DISCOVER DOWNUNDER (Stylised) filed on 9 October 2009 for the production of television programs in Class 41. The Registrar’s earlier decision is reported here Bauer […]

Trademark Lawyer-Federal Court-Chantelle-Similar Packaging

Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd [2017] FCA 403 (20 April 2017) This is an interesting case involving similar packaging. Careline was successful in its action to restrain Homart’s use of misleading or deceptive packaging for a cosmetic product even where quite different trade marks were involved. Background Careline has, since 2008, manufactured […]

Trademark Lawyer-Full Federal Court-Harbour Lights Appeal

Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 (7 April 2017) Accor successfully appealed the decision by the primary judge, Rangiah J reported here . It was able to rely on prior use to demonstrate a superior claim to ownership of the relevant trade marks which were subsequently registered. […]

Trademark Lawyer-Federal Court-Clipsal

Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3) [2017] FCA 60 (3 February 2017) Successful action by Clipsal Australia alleging trademark infringement, misleading or deceptive conduct and passing off by Clipso Electrical through its use of the trade mark CLIPSO. Clipsal Australia also alleged infringement of its trade mark registration for the […]

Trademark Lawyer-Federal Court- Barossa Signature

Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515 (14 December 2016) Samuel Smith was unsuccessful in establishing infringement of its trademark registration for THE SIGNATURE by Pernod Ricard. THE SIGNATURE trademark registration dated from 2 September 1999 and covered “wines, especially still table wines” in class 33. Samuel […]

Trademark Lawyer-Federal Court-Insight Radiology

Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406 (23 November 2016) This was a comprehensive victory for Insight Clinical. Insight Radiology was unsuccessful in its appeal from the Registrar’s decision refusing registration of its application for trademark registration of the IR composite mark shown below: The Registrar’s decision is reported here […]

Trademark Attorney-Federal Court-Privilege

Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 1241 (19 October 2016) This was an interlocutory application involving a claim to privilege attaching to documents produced under subpoena prior to trial. Significantly, the privilege relied upon concerned s229 of the Trade Marks Act and this is the first occasion in which that provision has […]