Unsuccessful opposition by Intercast Europe to an application for trademark registration of the word mark NEXT filed on 13 October 2009 for various goods and services in classes 9, 14, 18, 25 and 35.

Under the s44 ground, the opponent relied on its prior trademark registration for NXT (Stylised) covering lenses for eyewear in class 9 as well as registrations owned by other parties for OPSM NEXT (Stylised) covering eyewear in class 9 and NEXT G (Stylised) covering various telecommunications related goods and services in classes 9, 38 and 42. The registrations for NXT(Stylised) and OPSM NEXT (Stylised) covered different goods and the delegate did not consider eyewear products to be closely related to general retail services and retail services relating to fashion accessories. Although the NEXT G (Stylised) registrations covered some similar goods, the delegate did not consider the applicant’s NEXT trade mark to be deceptively similar due to the prominence of the letter ‘G’ in the prior registered marks.

The s60 ground also failed because the evidence did not establish the requisite level of reputation in Australia of the opponent’s NXT trade marks.

The s62A bad faith ground of opposition also failed.

This matter was decided on the written record.

Bramco International Pty Ltd v Ampcontrol Pty Ltd [2018] ATMO 2 (10 January 2018)

Successful opposition by Bramco to an application for trademark registration of the word mark BRAMCO filed on 2 September 2015 for various electrical and electronic equipment in class 9 and related installation, maintenance and repair services in class 37.

The opponent prevailed under the s58 ownership ground based on prior use of an identical trade mark for goods and services that are the same kind of thing.

This matter was decided on the written record and the applicant did not file any evidence.

Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd [2018] ATMO 3 (11 January 2018)

The Education Group applied to remove a trademark registration for TEG covering various class 41 services on the ground of non-use during the three year period ending on 10 August 2015.

Although non-use was established, the delegate exercised discretion and allowed the TEG trade mark to remain on the Register. The highly publicised acquisition by Live Entertainment (owner of the Ticketek business) of the relevant businesses from the Nine Entertainment Group and rebranding, combined with use of the TEG trade mark after the relevant date were particularly relevant considerations. The delegate considered that removing the TEG trade mark would only generate the potential for confusion.

Fresh Venture Group Pty Ltd v Box Corporate Food Services Pty Ltd [2018] ATMO 4 (12 January 2018)

Successful opposition by Fresh Venture Group to an application for trademark registration of the word mark THE FRUIT BOX filed on 28 July 2014 for retailing and wholesaling of goods including fruit and vegetables in class 35.

The opponent prevailed under the s41 non-distinctiveness ground. The delegate considered the ordinary meaning by the general consumer of the expression THE FRUIT BOX is likely to be a “box of fruit”. It was also clear from the evidence that ‘the fruit box’ or ‘fruit box’ are commonly understood and used terms within the fruit and vegetable retail and wholesale markets within Australia. A consumer “would not be wrong in assuming that a retailer promoting its retail services under the Trade Mark was in the business of selling fruit”.

Australian Char Pty Ltd v The Kingsford Products Company LLC [2018] ATMO 5 (12 January 2018)

Kingsford applied to remove a trademark registration for MATCHLITE covering all goods in class 4 on the ground of non-use during the three year period ending on 17 April 2016.

Australian Char could not establish any relevant use of this mark. The delegate did not exercise discretion and ordered the trade mark to be removed from the Register.

There was some use of this trade mark up until 2006 when a local factory was closed. Australian Char sought to rely on an intention to relaunch the MATCHLITE barbeque briquettes in the summer of 2016/2017 and stated that trips were made to China and Hong Kong to discuss suitability of the product for the Australian market. However, there were no documents to support this placed into evidence.

Beaches and Bush Properties Pty Ltd v Bush to Beach Real Estate Pty Ltd [2018] ATMO 6 (16 January 2018)

Unsuccessful opposition by Beaches and Bush Properties to an application for trade mark registration of the composite mark shown below filed on 14 October 2015 for various real estate related services in class 36

The opponent relied on use and registration of its BEACHES AND BUSH trade mark.

The s44 ground failed because the delegate did not consider the applied for composite mark to be deceptively similar to the opponent’s registered BEACHES AND BUSH trade mark, particularly as the relevant services are high value and involve care by relevant purchasers.

The s60 ground also failed because the evidence relied upon by the opponent was insufficient to establish sufficient reputation and the delegate observed that evidence on the opponent’s social media sites should be taken with caution. Given this finding, the s42(b) contrary to law ground relying on the Australian Consumer Law also failed.

The s62A bad faith ground also failed. Although the opponents telephoned the applicant on 2 October 2015 (prior to the application being filed on 14 October 2015), the delegate was satisfied the applicant commenced using its trade mark in 2014 and at the time was not aware of the opponent. This was understandable given that the Applicant operated in North Queensland and opponent operated on the South Coast of New South Wales. The delegate considered “the decision of the Applicant to protect its rights in the Trade Mark by seeking registration does not amount to an action that was unscrupulous, underhanded or unconscientious in character; rather it appears to be an entirely appropriate response taken by a business that traded under an unregistered trade mark to protect its rights in the mark it had adopted and traded under”.

Vaishi Enterprises Pty Ltd v GSM Food and Spices Pty Ltd [2018] ATMO 7 (22 January 2018)

GSM applied to remove a trademark registration for the composite mark shown below covering milk products in class 29 and spices in class 30 on the ground of non-use during the three year period ending on 26 June 2012.

Vaishi’s evidence established use of this mark for yoghurt and the delegate exercised discretion in favour of leaving this mark on the Register for all milk products in class 29. This was despite the parties not having filed any submissions on discretion. However, the registration was removed for the class 30 goods.

Volvo Trademark Holding Aktiebolag v 3VOLV Pty Ltd as trustee for the 3VOLV Trust [2018] ATMO 8 (23 January 2018)

Unsuccessful opposition by Volvo to applications for trademark registration of 3VOLV (rendered as a plain word and in stylised script) filed on 5 August 2015 for various transportation related services in class 39.

The opponent relied on its prior use and registration of its VOLVO trade mark. The applicant did not file any evidence.

The s44 ground failed because the delegate did not consider the applied for 3VOLV trade marks to be deceptively similar to VOLVO.

Under the s60 ground, the delegate was satisfied the opponent had established a significant Australian reputation in its VOLVO mark for a wide variety of goods, particularly cars, trucks, buses, construction equipment, marine engines and parts and services related to those goods. However, the delegate was not satisfied the opponent had established a reputation in its VOLVO mark as a provider of transport services. The delegated noted that “this is not a case where the Word Mark is being sought to be registered for the same goods and services for which the VOLVO Mark has a reputation. While there is some connection or nexus between the Applicant’s Services and the goods including cars, trucks and buses for which the VOLVO Mark has a reputation in, the manner in which a consumer obtains transport services, hires or leases a vehicle from the Applicant is significantly different from the manner in which the consumer would normally purchase a vehicle and/or related services from the Volvo Group. I consider that the difference between the respective goods and services is a factor that would tend to reduce the likelihood of confusion.” Given this and the differences in the respective marks, the delegate was not satisfied there would be a likelihood of deception or confusion.

Given this finding under s60, the s42(b) contrary to law ground relying on the Australian Consumer Law also failed.

Tax and Economic Interest Grouping v Rosa Westland & Graham Westland [2018] ATMO 10 (29 January 2018)

Unsuccessful opposition by Tax and Economic Interest Grouping to an application for trademark registration of the composite mark shown below filed on 18 August 2014 for carious accountancy, business consultancy, bookkeeping and taxation related services in class 35

The opponent relied on use and registration of its TAXAND trade marks

The s44 ground failed because the delegate did not consider the applied for  trade mark to be deceptively similar to any of the opponent’s prior TAXAND trademark registrations.

Under the s60 reputation ground, much of the evidence disclosed use of the TAXAND trade marks alongside branding of Corrs and was not satisfied use of the applied for trade mark would be likely to deceive or cause confusion.

Given this finding under s60, the s42(b) contrary to law ground relying on the Australian Consumer Law and passing off also failed.

The s41 ground of opposition also failed. There was no evidence that ‘tax land’ is a commonly used expression and the delegate was satisfied the applicant’s mark is inherently distinctive.

Planet Fitness Pty Ltd atf Planet Fitness Trust and Galactic Fitness Pty Ltd atf the Rosekelly Family Trust v PFIP LLC [2018] ATMO 11 (30 January 2018)

Successful opposition by Planet Fitness to applications for trademark registration of PLANET FITNESS (plain word and composite marks) filed on 11 October 2012 for various clothing in class 25.

The opponents prevailed under the s60 reputation ground based on use of various PLANET FITNESS composite marks since 1996 in connection with the operation of fitness centres. The delegate was satisfied the opponents’ logo trade marks in which the words ‘Planet Fitness’ appear had acquired a moderate reputation within New South Wales and noted that it is not necessary to establish this reputation extends to the whole of the Australian market. The delegate observed that “sports clothing, in particular tee-shirts are more often than not provided by gymnasia and fitness centres as an adjunct to their business whether it be by sales to their members or provision as a part of their membership. Such sports clothing prominently displays the trade mark of the gymnasium/fitness centre concerned”.

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This was a largely unsuccessful appeal by Anchorage Capital Partners Pty Limited (appellant); although it was partly successful on the issue of costs. There was also a successful cross-appeal by ACPA and its US parent company (respondents).

The decision of the primary judge is reported at here

In that decision, the applicant failed to make out its allegations that the respondent and its US parent, Anchorage Capital Group LLC infringed its registered trade mark rights, or engaged in misleading or deceptive conduct, by using names containing the word ANCHORAGE in the financial field.

The appellant is an Australian company which commenced operations in Sydney in 2007 and its business involves raising money from professional investors to acquire a controlling interest in struggling businesses, fix them up and then to on-sell those businesses at a profit. It obtained trade mark registrations for ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL PARTNERS with effect from 26 May 2011 for  “Acquisition for financial investment; administration of financial affairs; advisory services relating to financial investment; conducting of financial transactions; financial advisory services for companies; asset management; financial fund management; financial investment management services; financial transaction services; all the aforementioned services targeted towards special situations and mismanaged or underperforming companies to help improve their financial performance”.

The second respondent is a US company, Anchorage Capital Group LLC, which commenced operations in New York in June 2003 and its business also involves raising money from professional investors, but for the purpose of acquiring distressed debt or equity positions at a discount to their true value and then disposing of them at a profit when the true value is later realised. In June 2011, it set up the first respondent, ACPA Pty Limited as its Australian subsidiary.

The evidence also disclosed that the second respondent had, in early 2007 and prior to the appellant commencing business, made limited attempts to raise funds in Australia.

Complications arose when the appellant moved offices in June 2013 to the very same building as the first respondent which already had signage in the lobby showing ‘ACPA a subsidiary of Anchorage Capital Group LLC’. The first respondent subsequently agreed to remove this signage and this was done in September 2013.

The appellant alleged that the respondents infringed its registered trade marks through use of the names ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL GROUP (the ‘US ANCHORAGE names’) and email addresses of the form @anchoragecap.com and acpa.anchoragecap.com (the ‘ANCHORAGE email addresses’) in the provision of financial services in Australia.

At first instance, Perram J dismissed the appellant’s claims and found that the appellant was not the owner of the ANCHORAGE and ANCHORAGE CAPITAL marks because the second respondent had used them in Australia in January 2007. The relevant use relied upon involved use of the US ANCHORAGE names in relation to funds management services in a slide presentation attached to emails sent to potential institutional investors. His Honour subsequently ordered cancellation of those two trade mark registrations, but not the registration for the ANCHORAGE CAPITAL PARTNERS mark. The primary judge also found that the respondents had not used any of the US ANCHORAGE names in relation to the services covered by the appellant’s trade mark registrations after their date of registration on 26 May 2011.

The appellant contended the primary judge should not have cancelled any of its registered trade marks and infringement should have been found. It also contended that the primary judge should not have ordered the appellant to pay any part of the respondents’ costs on an indemnity basis. There was no challenge to the findings of the primary judge’s rejection of the estoppel defence or rejection of the appellant’s allegations of passing off and misleading or deceptive conduct under the Australian Consumer Law.

The respondents contended, in a cross-appeal, that the primary judge should have also ordered cancellation of the ANCHORAGE CAPITAL PARTNERS mark and postulated a slightly different costs order.

This summary will not discuss the costs issues and will be confined to the trade mark aspects of the case.

On the issue as to whether the second respondent’s slide presentations in January 2007 could be relied upon to defeat the appellant’s claim to ownership of the ANCHORAGE and ANCHORAGE CAPITAL trade marks, there was a focus on whether the second respondent’s use was in relation to the same kind of services as those covered by the appellant’s registrations, particularly having regard to them being limited to “services targeted towards special situations and mismanaged or underperforming companies to help improve their financial performance” (the ‘turnaround proviso’).

The Full Court considered it was entitled to look at other materials in evidence and not just the slide presentation by itself for the purpose of determining what services were being offered to its recipients. These other materials made it clear the second respondent was, at the relevant time in 2007, engaged in the management of funds used to acquire investments that included debt or equity investments in special situations involving mismanaged or underperforming companies. Such services were the same kind as some of those services covered by the appellant’s trade mark registrations.

The appellant also contended that the second respondent did not intend to provide such services in Australia in 2007 because it did not have an Australian financial services licence as required under s911 of the Corporations Act. The Full Court did not have to decide whether the second respondent was carrying on a financial services business in Australia because, its activity would have been covered by an exemption which did not require a licence where the service is provided to wholesale clients only.

The appellant also argued that the slides relied upon did not show the second respondent had an existing intention at the relevant time in 2007 to offer to supply or supply relevant services in Australia, rather such activity could be characterised as mere preliminary negotiations and discussions. However, the Full Court rejected this and could not find error in the primary judge’s reasons. A finding of trade mark use may be open if the foreign supplier uses the mark to indicate a willingness to supply services conditionally or on terms to be agreed. Concepts derived from contract law are of little assistance.

The Full Court also agreed with the primary judge that the manner of use of ANCHORAGE and ANCHORAGE CAPITAL GROUP in the slide presentation was properly characterised as trade mark use and rejected the appellant’s submissions on this point.

On the respondents’ cross-appeal seeking cancellation of the ANCHORAGE CAPITAL PARTNERS mark, the Full Court was satisfied the slide presentations also included trade mark use by the second respondent of these words (seemingly in connection with the funds identified as Anchorage Capital Partners Funds). Further, the second respondent’s use of ANCHORAGE CAPITAL in the slide presentation involved use of a mark which was substantially identical with ANCHORAGE CAPITAL PARTNERS which defeated the appellant’s claim to ownership of that trade mark.

The Full Court then when on to consider whether the decision to cancel a registered trade mark under s88(1) of the Act involves a discretion and agreed with the appellant that it does, except in so far as that discretion is qualified by s89.

The Full Court did not find any error in the reasoning of the primary judge when considering discretion and confirmed that it was for the appellant to persuade his Honour that the discretion not to cancel should be exercised. The fact that the appellant had used its improperly registered trade marks without causing confusion is a relevant consideration in the exercise of discretion, but not determinative or to be given significant weight. There is a public interest in maintaining the purity of the Register and ensuring that trade mark registrations only be made in favour of applicants who are entitled to obtain them. Further, the respondents would be prejudiced in the conduct of its business if the appellant’s registrations remain.

Since there was no error by the primary judge, it did not become necessary for the Full Court to re-exercise discretion, but the Full Court indicated it would also have cancelled the appellant’s relevant trade mark registrations. The Court commented that “the public interest in ensuring that no registration of a trade mark continues if it is found to be invalid is of considerable significance in this particular case” and “if the registered marks are cancelled, both the appellant and the respondents will be able to use their names and marks so long as they not do so in a misleading or deceptive manner or so as to engage in passing off”.

Given the Full Court’s conclusion that the appellant’s registered marks should be cancelled, it was not necessary to consider infringement. However, the Full Court did provide some comments on this aspect.

The Full Court considered the primary judge had taken too narrow a view of what is required to establish infringement and was of the opinion that the respondents did use the US ANCHORAGE names as trade marks in relation to the registered services after the relevant date of the appellant’s registrations on 26 May 2011. There is still trade mark use if the relevant use is in or about the soliciting of a supply of services.

The Full Court then went on to provide comments as to whether the respondents could have availed themselves of any of the statutory defences to infringement.

Under the defence based on good faith use of a person’s name, the Full Court considered that the second respondent’s use of the name ANCHORAGE CAPITAL GROUP was within the scope of this defence, but use of the names ANCHORAGE and ANCHORAGE CAPITAL was not.

Under the defences that the person would be entitled to obtain registration of the same or similar mark as that infringed, the Full Court noted that they posit a hypothetical trade mark application by the respondent, but the relevant provisions do no provide any express indication as to the time at which the hypothetical application is taken to have been made. The Court expressed the opinion that the date this should be considered is the date of the alleged infringing conduct which, in this case, was around the middle of 2011. At that time, it was unlikely for the second respondent to obtain registration of any of the US ANCHORAGE names because it would have been unlikely for it to have successfully resisted an opposition under s60 by the appellant (based on its Australian reputation acquired through use of its trade marks and the second respondent’s use being likely to deceive or cause confusion having regard to that reputation).

Under the defence based on the respondent’s prior continuous use of the same or similar mark, the Full Court considered the second respondent would not have been entitled to this defence due to its lack of continuity of use. The relevant provision (s124) requires continuous use from a date before the date of registration of the appellant’s trade marks on 26 May 2011 or any earlier use of those registered trade marks by the appellant. Here, the second respondent’s first use was in January 2007. The relevant date of the appellant’s trade mark registrations is 26 May 2011, but the appellant commenced operations in 2007. Hence the relevant period for assessing continuity of use ought to have been January 2007 up to later in 2007 when the appellant commenced operations. However, the Full Court referred to the relevant period commencing from a time before the appellant first used its registered marks to the date of the alleged infringements.

Curiously, the Full Court did not discuss its findings arising from these defences in the context of the effective date of the order for cancellation of the appellant’s registered marks. An order for cancellation typically takes effect from the date of the order, so there is potentially a liability for infringement up until then. It would have been neater to find in favour of the respondents under the s124 prior continuous defence which would then have avoided that issue. However, the Full Court considered the only defence established was the own name defence and then only for ANCHORAGE CAPITAL GROUP and not the other US ANCHORAGE names.

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This case concerned an appeal by Autumnpaper against a Registrar’s decision refusing registration of its application for trademark registration of the word mark Mcqueen on the ground of non-distinctiveness under s41 following an opposition by Metropolitan.

Metropolitan took no part in the appeal and Lee J followed previous authority in holding that, since there is no evidence by which the opposition is sought to be maintained and the Registrar has not indicated an intention to appear, the appeal should be allowed.

Costs of the appeal were awarded to Auntumnpaper but Metropolitan was given 14 days to put material before the Court on this issue.

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Laminar sought judicial review of a decision by the Registrar to correct an error in entering particulars of a trademark registration.

The Registrar’s decision was to correct the Register to enter Vokes Limited as the owner of certain trademark registrations for VOKES and UNIVEE. The Registrar had previously acted upon an application made on 15 August 2001 to change the name of the registered owner from Vokes Limited to AES Environmental Pty Ltd (and AES subsequently assigned its rights to Laminar). However, there was not, in fact, any change of name and there was no evidence of any assignment of rights and so the entry to record the change of name was in error.

However, Robertson J found no error had occurred and set aside the Registrar’s decision. His Honour found the earlier decision of the Registrar to act upon the application to record a change of name of the owner did not involve any error which could be corrected under s81. Rather, the error was on the part of the party submitting that application.

Robertson J considered it would not be conducive to the integrity of the Register to amend the owner particulars in circumstances where many years have passed and intervening dealings have occurred with the result that those subsequent dealings would fall as a consequence. Anyone aggrieved by the relevant trade marks remaining on the Register in their current ownership may apply to the court for rectification of the Register under s88.

It should be noted that the Registrar’s current practice is to not require any accompanying documentary proof to record a change of owner name and perhaps, in light of this case, that practice may be reviewed.

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Successful trademark infringement action by JBS. To confine the issues, JBS did not pursue claims for misleading or deceptive conduct under the Australian Consumer Law or passing off under Common Law.

JBS is the owner of a registration for the AMH Logo trademark shown below dating from 20 July 1998 and covering meat and meat products in class 29.

It also owns a registration for the plain word trademark AMH dating from 4 September 2015 and covering a broad range of class 29 goods including meat and meat products.

JBS is the largest meat processing company in Australia with 80% of its meat products exported to 80 countries. It has used the AMH Logo and word marks since 1991 in relation to processed meat and meat products. It changed its name from Australia Meat Holdings Pty Limited in October 2007 and, since that time, has also used other brands for its processed meat products.

Australian Meat Group (AMG) filed an application on 8 April 2014 to register the AMG Logo trademark shown below for various meat related goods and services in classes 29, 35, 39 and 40. That application was accepted but JBS opposed registration of it.

AMG also filed applications on 3 March 2016 to register the composite trademarks shown below for the same goods and services which are also being opposed by JBS.

AMG adopted its company name in March 2014 and subsequently designed the AMG Logo mark. It commenced trading in in January 2015.

AMG sells its meat products under the AMG Logo, AMG word mark and the two composite marks shown above. It was not in dispute that these were signs being used as trade marks in relation to the same goods covered by the trade mark registrations owned by JBS.

A substantial proportion of AMG’s total sales (approximately 70%) were directed to the export market. In the Australian domestic market, AMG’s sales were to wholesalers and food manufacturers using meat as an ingredient. AMG’s evidence was that retailers typically repackage these products and apply their own brands, or affix their own labels over the supplier’s brand, but there was evidence to the contrary where the supplier’s brand was clearly visible to the consumer at a retail level. AMG also contended that buyers of its meat product were “highly sophisticated”, but this was not unequivocally accepted by his Honour, Greenwood J who characterised such buyers as persons who “bring an enquiring mind to purchase transactions”. AMG also contended that buyers attach significant weight to the so called “establishment number” of the meat processor which is also shown on the product labelling, but his Honour did not accept this materially diminishes the role of the trade marks on the labelling.

AMG also relied upon evidence from a linguistics expert, Associate Professor Felicity Cox of Macquarie University, but his Honour did not find this very helpful because “her opinions operate at too high a level of abstraction“ and her evidence “has no contextual application to the engaged field of common human endeavour in question in the case“.

The evidence disclosed that it is industry practice for acronyms to be used to identify the source of a product.

AMG did not contest that the AMH word and Logo marks had acquired a strong reputation at functional levels of the domestic market (which involve buying and selling activity by wholesalers, those acquiring meat products for sale for export, direct export by processors, supermarkets and independent butchers), but AMG did challenge the extent of this reputation at the retail level.

Greenwood J accepted this strong reputation at these functional levels of the domestic market, but did not place it in the same category as Maltesers such that no imperfect recollection of the AMH word and Logo marks would be brought to any engagement with the AMG word and Logo marks.

Greenwood J accepted that the first two letters “AM” were an essential feature of the registered AMH word mark, but the dissimilarity conveyed by the different third letters “H” and “G” meant the AMG mark was not substantially identical.

However, his Honour found that the AMG Logo mark and the variants of it in use (where the AMG Logo was the dominant feature) were deceptively similar to the registered AMH Logo mark and there was a real tangible risk of confusion both at the functional levels of the market and at the retail consumer level.

It is curious why a significant part of the judgment concerned the reputation of the AMH word and Logo marks. Indeed, Greenwood J made a specific finding of infringement in the context of this reputation (at paragraph 279 (21)). There was also a finding ( at paragraph 279 (23)) that the difference in the third letters of the respective AMH and AMG trade marks “is not a sufficiently distinguishing feature of the two marks when AMH has been used in the same market for so long“. However, it is now quite settled that, in infringement proceedings, reputation is a relevant consideration in assessing the nature of imperfect recollection of a registered mark, where the mark, or perhaps an important element of it, “is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services“. His Honour did not assess the reputation of the AMH word and Logo marks to be at this level of notoriety, so the enquiry ought to have been confined to a comparison of the trade marks as used by AMG with the registered AMH word and Logo marks by attributing a notional use to these registered marks.

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This case concerned the modification of patented printer ink cartridges for re-sale in Australia. Calidad obtained spent EPSON branded ink cartridges which were modified and re-filled overseas and then imported and re-sold in Australia. It is a lengthy judgement and this summary mainly deals with the trade mark issues and only touches upon the patent infringement aspect.

Burley J held that the sale of a patented article carries an implied licence to the purchaser which may be extinguished where contractual obligations are imposed on the purchaser (which is rare) or where the purchaser refurbishes the article to the extent that it results in a material alteration to the product, insofar as it is an embodiment of the invention as claimed. Here, there were some modifications which amounted to patent infringement when those refurbished ink cartridges were imported into Australia and sold by Calidad.

Calidad’s use of EPSON on the printed circuit board of two refurbished ink cartridges did not amount to trade mark infringement. In each case the word EPSON was partly obscured and extremely small such that it was only faintly visible. His Honour found that this manner of use was not use of EPSON as a trade mark. It is probable that a consumer will purchase the Calidad product with an appreciation that it is a product of Calidad that will replace an Epson cartridge. After opening the outer packaging and inner plastic wrap, a consumer is unlikely to discern the word Epson on the circuit board of the cartridge and, if they did, would not regard it to be used as a trade mark.

The process of obscuring the word EPSON on the refurbished cartridges did not constitute an offence under s148 of the Trade Marks Act (which involves altering, defacing, adding to, wholly or partly removing, erasing or obliterating a registered trade mark on the goods). Burley J construed this provision as requiring the reference to “a registered trade mark on the goods” meaning a registered trade mark used as a trade mark on the goods. Here, the EPSON trade mark was never used on the Calidad products as a badge of origin. The process of blacking out this word did not take place on an original Epson cartridge but on a Calidad product and, before this word was obscured, its presence was an artefact of the process by which it was manufactured. Consequently, there was never any removal of a trade mark that could serve as a badge of origin. His Honour also commented that Calidad could not rely on material published on Seiko’s US website for the purpose of Seiko giving consent to the sale of re-filled cartridges in Australia. In any event, s148 is a criminal penalty provision and Burley J considered it does not confer a private right of action. A trade mark owner may display a notice of prohibition on the goods and has a remedy for infringement if those restrictions (which includes altering, partially removing or obliterating its trade mark) are breached.

Finally, Seiko alleged that Calidad’s website reference to certain of its refurbished cartridges as being new products was misleading or deceptive under the Australian Consumer Law because it is an implied representation that the relevant products are not made from recycled Epson cartridges, when in fact they are. However, Burley J rejected this and found that, in the context of the relevant webpage as a whole, a reasonable consumer would understand the word “new” to be an assertion of a recently available Calidad product.

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Unsuccessful appeal by Primary Health Care (applicant) against refusal of its applications, filed on 6 October 2009, for trademark registration of the words PRIMARY HEALTH CARE and the Logo version shown below for various class 35 Services:

The Delegate refused registration based on the s43 ground of opposition due to these trade marks containing an inherent connotation which is likely to deceive or cause confusion.

The applicant appealed the Delegate’s decision in respect of s 43. The respondents, by notice of contention, continued to oppose registration of the trade marks based on s 41 (trade mark not distinguishing applicant’s services) and s 42 (use of trade mark contrary to law). The primary judge, Jagot J decided that the respondents established their grounds of opposition under ss 41, 42 and 43 of the Act, with the consequence that the appeal should be dismissed and the trade mark applications refused. The decision of the primary judge is reported here

The applicant sought and obtained leave to appeal to the Full Federal Court, but this appeal failed on all grounds. The applicant largely failed to specifically identify the alleged errors of the primary judge. While an appeal from a single judge is by way of rehearing, it is necessary to show there has been some legal, factual or discretionary error.

The applicant had operated its business under the name Primary Health Care since 1998 (although the logo version of the mark was not used until after filing of the trade mark applications). The applicant’s class 35 Services subject of the trade mark applications related to medical centre business management and administration, as well as various other back office and administrative support services. The primary judge reached the conclusion that the applicant is in the business of operating medical centres and provides a suite of services to health care professionals contracted to work from these medical centres, but as part of that business and not otherwise. These services are “indivisible from or integral to” the provision of clinical care by the health professionals. In reality, the applicant provides its services in a multilateral way as a bundle of services to health care professionals and patients in the overall conduct and operation of its medical centres. Significantly, it does not market or provide these services generally to other health care professionals outside of its medical centres.

The applicant sought to characterise its Services as being in a bilateral way provided only to health care professionals, but this was an artificial characterisation.

It was common ground that the applicant does not supply any clinical care or other professional health care services.

Rangiah J gave the leading judgment on the s41 and s42 grounds of opposition. However, Greenwood and Katzmann JJ disagreed with Rangiah J on the s43 ground.

The Full Court essentially found the findings of fact reached by the primary judge were open on the evidence. An appeal court should not interfere with such findings unless they are demonstrated to be wrong by incontrovertible facts or uncontested testimony, or they are glaringly improbable or contrary to compelling inferences.

Section 41

The Court confirmed that s 41 as it stood at 6 October 2009 (being before the Raising the Bar amendments which took effect from 15 April 2013) was applicable. Of course, the High Court in Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2014] HCA 48 noted that the ordinary signification of a word is crucial in assessing whether a trade mark is inherently adapted to distinguish.

Rangiah J referred to earlier cases and noted, at paragraph 225, that “prior to the amendments, a party opposing registration of a trade mark carried the onus of proving that the mark is not inherently adapted to distinguish under s 41(3) of the TMA, but if that onus was discharged, the applicant for registration bore the onus of proving that ss 41(5) or (6) applied“. His Honour then commented that “the 2012 amendments have altered the position so that the onus remains on the opponent throughout the assessment under s 41 of the TMA. Those amendments do not affect this case“.

In the present case the ordinary meaning of the words “primary health care” to the target audience (which included persons involved in the public health sector, medical professionals and patients) was “that part of the Australian health care system which provides first level health care, being the health care received as a result of the first contact between an individual and a health care system (or, in shorthand, first level or first contact health care)”. The Court did not accept the applicant’s submission that the Services are only provided to health practitioners at the medical centres and that the target audience was so limited. Although these health care practitioners pay for the applicant’s services, they are not the only persons who receive these services or are concerned with the services. Patients of the medical centres consume the services even though they do not directly pay for them. The broader target audience includes all other participants in health care who interact with any medical practitioner in the applicant’s centres. Rangiah J observed that the Cantarella case does not limit the target audience to “persons who will purchase, consume or trade in the goods”, rather “any person in Australia concerned with the goods” is to be considered.

Hence the phrase “primary health care” lacked sufficient inherent adaptation to distinguish the applicant’s class 35 Services. Katzmann and Rangiah JJ observed that “the fact that a term has acquired a secondary meaning through use or by repute is not relevant to the question of whether it is inherently adapted to distinguish an applicant’s goods or services. Inherent adaptability depends on the nature of the trade mark itself and cannot be changed by use or otherwise“.

The primary judge then went on to consider the use of the applied for marks on the assumption that the sign “primary health care” contained some degree of inherent adaptation to distinguish, but was not satisfied that this sign was capable of distinguishing the applicant’s Services under s41(5). While the word mark had been used to distinguish the operation of the applicant’s medical centres, it had not been used to distinguish the relevant class 35 Services. The applicant did not show that the primary judge’s reasoning on this issue was illogical or otherwise wrong and the Full Court was not prepared to disturb the primary judge’s finding on this aspect. Further, as Rangiah J noted “even if the appellant had been able to show that it used the word mark to market the Services to health practitioners, it did not show that a substantial number of health practitioners were aware of such use in relation to the Services“. As a result there was no error in the primary judge’s conclusion that the applicant failed to discharge its onus under s41(5).

The primary judge’s findings under s41(5) also answered the enquiry under s41(6). Assuming the sign “Primary Health Care” is not to any extent inherently adapted to distinguish, then the applicant’s pre-filing use of the word mark was insufficient to demonstrate this sign had acquired a secondary meaning in relation to the relevant class 35 Services. The applicant’s use referred to the applicant as a corporate entity which operates medical centres, but the secondary meaning acquired from such use is not in connection with the relevant class 35 Services. Again, there was no basis for the Full court to disrupt the primary judge’s conclusion under the s41(6) ground.

Section 42

The Full Court upheld the primary judge’s conclusion that use of the trade marks would be contrary to the Australian Consumer Law as conduct likely to mislead or deceive due to a false representation that the applicant provides primary health care services. However, the Full Court agreed with the applicant that there was a lack of clarity or ambiguity in the formulation of the second misrepresentation by the primary judge that the applicant is responsible for the health and medical services provided by the practitioners within the applicant’s medical centres. This was particularly attributable to the lack of clarity in the words “responsible for”. However, this error was not material in light of the finding that there was a false representation that the applicant provides primary health care services.

The applicant also argued that the primary judged erred in finding likelihood of confusion under s43 and then using this as a basis for the finding of misleading or deceptive conduct with the higher standard of proof required under s42. However, the Full Court considered the primary judge did properly consider misleading and deceptive conduct as well as mere confusion.

Section 43

Greenwood and Katzmann JJ construed s43 by reference to “denotation” being the role of the relevant sign to be inherently adapted to function as a trade mark (in the sense of being capable of distinguishing the applicant’s Services from those of others) and “connotation” being an implied or secondary meaning to that which is denoted. Hence, s43 is concerned with whether the mark subject of the application (or a sign contained in the mark) connotes something other than a connection in the course of trade between the relevant Services and the person who applied (or intended to apply) it to those Services. It is not necessary, as Rangiah J considered, to isolate a primary meaning of the relevant word or words as a pre-condition to identifying a relevant connotation.

The applicant’s trade marks were contrary to s43 because they connote the applicant is the provider of first level or first contact health care. This connotation is likely to deceive or confuse because the applicant does not provide such services to patients.

Proposed amendments

The applicant’s proposed amendments to the specification of services as well as the entry of a limitation or disclaimer directed to limiting the services to those provided to medical professionals and not to patients or other members of the public attending the medical centres were rejected. There was no reason to depart from the primary judge’s findings that such amendments lacked utility and would introduce unacceptable ambiguity. Consequently, they did not assist in making the trade marks distinctive of the Services. The applicant also tried to introduce a new condition which was not put to the primary judge, but that was also rejected.

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This is another case about a business using a copyright image on its website and involved similar issues to the Tylor v Sevin case reported here . Businesses do need to be aware of, and take responsibility for, copyright considerations when using photographic images on their websites. An article on managing website content can be found here .

Mr Briner is a professional photographer and owner of the copyright in a photograph taken by him in 2001 and first published in the USA in 2004.

Happy Herb, without obtaining Briner’s authorisation or giving him any attribution, reproduced the photographic image and communicated it to the public on its website from at least 21 April 2013 until shortly after 15 October 2015 when it received a demand from Briner for payment of a licence fee in the amount of US$1,180.

The evidence disclosed Briner had previously charged another party US$200 as a licence fee. He argued a comparable image from Getty Images would cost AU$1,115, but that is for a corporate and promotional site. The amount reduces to AU$485 if the image is used for a commercial blog. Judge Driver found the photograph was only incidentally related to the business of Happy Herb to illustrate general information about the camomile herb and considered compensatory damages of AU$500 to be appropriate.

Judge Driver accepted that the image was obtained from the internet by an unknown employee or contractor of Happy Herb but, at that time, Happy Herb did not know the image was subject to copyright, let alone who owned the copyright. Furthermore, the infringing image was removed from the website immediately after Happy Herb was notified of Briner’s copyright. There was no real doubt that, if a licence fee had been negotiated, Happy Herb would have been willing to attribute Briner as author. As a result, Judge Driver did not award any damages for breach of moral rights.

On the issue of additional damages, Judge Driver awarded a modest amount of AU$1,000. His Honour was not critical of Happy Herb’s conduct in the proceedings and commented: “It is a pity that it has taken a contested hearing in order to provide Mr Briner with appropriate compensation for the use of the Work. Persons downloading photographs from the internet should recognise that there may be a risk of copyright infringement and, once notified of an infringement, they should act promptly and reasonably in order to arrive at an appropriate fee as compensation for the use of the Work.“

There was no award for pre-judgment interest and a costs order will be separately determined. Judge Driver did comment that “both the respondents and the applicant could have shown more flexibility in order to resolve the dispute without the need for litigation“.

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Moroccanoil Israel Ltd (Israel) was partly successful in restraining the sale by Aldi of various hair care products, brushes and appliances containing or infused with argan oil. Israel was also successful in overturning the Registrar’s decision refusing registration of its MOROCCANOIL word mark and in defending the validity of its existing registrations for composite marks containing the word MOROCCANOIL; although the specifications of its registered marks were restricted on the ground of non-use.

Background

Israel was incorporated in October 2007 with its hair care products, including an oil treatment product, shampoo and conditioner have been sold in Australia under the MOROCCANOIL brand since September 2009. These products achieved considerable commercial success and are currently marketed in almost 80 countries and, in over 20 of these countries (but not Australia) the product range has expanded into skin care. Some examples of the current labelling for a small selection of these products are shown below:

Israel is the owner of 2 registrations for the composite trade marks shown below dating from 24 January 2008 and 4 August 2010 respectively, each covering a relatively broad range of class 3 goods including hair care products, skin care products, toiletries, cosmetics, dentifrices, shaving and sunscreen products.

Israel also filed an application to register the MOROCCANOIL word mark on 7 December 2011 for hair care products in class 3 and Aldi was successful in its opposition before the Registrar on the ground this word mark lacked inherent adaptation to distinguish. Israel appealed that decision.

Aldi sells a range of hair care products, brushes and appliances under its PROTANE and VISAGE brands with reference to MOROCCAN ARGAN OIL. Some examples of the labelling for a selection of these products are shown below:

By January 2016, Aldi had substituted “Argan oil of Morocco” for “Moroccan Argan Oil” on all the products in its range and, with the exception of shampoo, also changed the colour of the packaging.

Aldi’s evidence disclosed that its practice was to introduce its own version of a product in an on-trend product category. Aldi identifies a “benchmark” product to evaluate cues that customers may associate with the product type generally and considers packaging used by competitors as part of the process for developing its own house brand packaging with the objective of achieving a product consistent with its advertising slogan “Like Brands. Only Cheaper”. Health and beauty products containing argan oil were identified by Aldi as being on trend by mid to late 2011 and at least some of Israel’s products were known to Aldi at that time and were benchmark products along with some Organix products. Aldi’s policy objective was “to match the clear market leader in quality attributes including size and packaging design cues”. The intention was to replicate the benchmark product but in a way that would distinguish the Aldi product. A rule of thumb was to have “at least 10 points of difference” in the packaging of the respective products. Much of Aldi’s evidence was directed to its PROTANE hair care products with very little evidence directed to the development of its VISAGE hair care appliances.

Israel’s evidence included affidavits from a number of witnesses who were apparently confused by the Aldi products. There was also expert evidence in the specialist areas of lexicography, marketing and industrial chemistry.

Tendency evidence

Israel gave notice, under section 97 of the Evidence Act 1995, of its intention to rely on evidence consisting of photographs comparing a number of Aldi’s house brand products resembling those of other well known brands purchased from other supermarkets to show that Aldi has a tendency to copy elements of the get-up of other brands and, because of this tendency, it is more likely that it copied elements of Israel’s get-up and/or Aldi’s purpose was to appropriate or capitalise on the reputation of the other brands.

Katzmann J decided this notice was given too late in the proceedings and was inadequate because the description of the alleged tendency lacked the necessary degree of specificity. Her Honour also considered this evidence lacked significant probative value. Consequently, this evidence was inadmissible.

Trade Mark Infringement

Katzmann J was satisfied Aldi was using MOROCCAN ARGAN OIL as a trade mark (i.e. as a badge of origin) and not as a descriptor having regard to the context and setting in which these words appear. In doing so, her Honour was not impressed with the opinions of the marketing experts on this issue. The fact that a phrase may be descriptive does not mean that its use is not use as a trade mark. Further, the proper description is “argan oil” and not “Moroccan Argan Oil”. Her Honour also noted that these words were rendered in a stylised manner on various product lines with an oil drop replacing the first letter “O” in “MOROCCAN” and the “O” in “OIL” and the case for trade mark use was stronger for this stylised version.

However, Katzmann J did not consider Aldi’s MOROCCAN ARGAN OIL mark to be deceptively similar to either of Israel’s registered marks. These registered marks were composite marks where both the large letter “M” and the word “Moroccanoil” are essential features. Furthermore these trade marks, although filed in colour, were not limited to any specific colours and are deemed to be registered for all colours; so colour is not a feature of these registered marks. The comparison is between the mark as used by Aldi and Israel’s registered marks. Similarities in colour or get-up, though relevant under the Australian Consumer Law and passing off, are irrelevant to trade mark infringement and any deceptive similarity arising from get-up or aspects of packaging are to be disregarded. Her Honour scrutinised Israel’s evidence of instances of alleged confusion, but considered it lacked probative value.

After taking all relevant matters into account, Katzmann J was not satisfied that the hypothetical consumer would mistake the Aldi “Moroccan Argan Oil” mark for either of Israel’s registered marks or wonder whether the Aldi products originate from the same source.

In the context of considering Aldi’s sale of brushes and other hair care apparatus, her Honour did comment that she regarded such goods as being similar (of the same description) to Israel’s registered class 3 goods. However, her Honour went on to comment that Aldi’s manner of use of the MOROCCAN ARGAN OIL trade mark in relation to such goods is not likely to deceive or cause confusion and Aldi would be entitled to the defence to infringement in any event. However, these comments were obiter as Katzmann J had previously found the respective trade marks were not deceptively similar and so infringement did not arise.

Aldi’s cross claim for cancellation and partial restriction of Israel’s registered trade marks

It was accepted that Aldi had standing to seek cancellation as a ‘person aggrieved’. Aldi argued that Israel’s composite trade marks should not have been registered as they lacked sufficient capacity to function as badges of origin and distinguish Israel’s relevant class 3 goods from those of others. Section 41 as it stood prior to the 15 April 2013 amendments was applicable and Aldi carried the burden of proof.

Katzmann J had no hesitation in dismissing Aldi’s claims. Her Honour was not persuaded that these composite marks, when considered in their totality, were not capable of distinguishing and adapted to qualify for registration as at their filing dates. At the very least, they possessed some degree of inherent adaptation to distinguish and Israel’s use of these marks reinforced that they did so distinguish the relevant goods.

Aldi also sought to restrict Israel’s trade mark registrations on the ground of non-use insofar as they covered non-hair care products.

Israel admitted that it had not sold certain goods anywhere in the world and had no intention of doing so. These goods were skin toners, non-medicated foot cream, nail enamels, talcum powders, antiperspirants, dentifrices and sunscreen and suntan oils (but not creams). Hence, there was no issue that these goods should be removed. However, Israel defended its registrations to the extent they covered other skin care, facial products, fragrances and toiletries. It sought a favourable exercise of discretion and submitted the skin care products had been on sale overseas since 2012 at least under the later registered mark and that facial products, fragrances and toiletries are in its product development calendar. Israel also relied on the Australian reputation derived from use of its registered marks for hair care products and that consumers are well accustomed to a variety of hair care and skin care products under well-known brands being sold alongside one another.

Katzmann J considered that Israel’s evidence supported its submissions and also considered that the skin care, facial products, fragrances and toiletries were similar goods to hair care products. Her Honour concluded that the later registered mark should remain on the Register for goods other than shaving preparations, shaving creams and soaps, after shave creams and lotions. Israel had not shown any intention to use either registered mark for these shaving goods and, to all intents and purposes, had abandoned the registered mark for these goods. However, her Honour considered the earlier registered mark had only ever been used for hair care products and directed that mark be removed for all goods other than the hair care goods.

Incidentally, Aldi also pointed out that Israel had, on some occasions, wrongly asserted the MOROCCANOIL word mark was registered in Australia and sought to bring this into the exercise of discretion, but did not allege any contravention of the Trade Marks Act or Australian Consumer Law. Katzmann J considered this had no relevance to the non-use claim as it involved a different trade mark.

Australian Consumer Law and Passing Off claims

Israel argued three claims, namely (i) the get-up of the entire Aldi range is misleading or deceptive in falsely representing a relationship with Israel or its goods, (ii) the use of the word NATURALS amounts to a misrepresentation that Aldi’s products contain only or substantially natural ingredients and (iii) the use of the words “argan oil” in connection with certain products in the Aldi range falsely represents the performance benefits of argan oil.

For the first claim, Katzmann J regarded the ordinary or reasonable consumer to be someone who shops or may shop at an Aldi supermarket, is aware of Israel’s brand and products, and is attracted by the prospect of purchasing them at a bargain price. The parties agreed the notional consumer is a woman. Her Honour was satisfied that, as at September 2012 when the Aldi products first went to market, Israel had a substantial, valuable and exclusive reputation and goodwill in each of its registered marks, the sign MOROCCANOIL, the get-up of its oil treatment and box, and the get-up of all products in its range. The question to be resolved is whether the get-up and/or branding of the Aldi products or any of them was so similar to Israel’s products that a not insignificant number of ordinary or reasonable consumers in the relevant class would, or would be likely to, mistake the Aldi products for Israel’s products or would, or would be likely to, believe that the Aldi products were related or affiliated in some way with Israel or that they were sold under licence from Israel or with its approval or sponsorship.

Katzmann J concluded that, in adopting the particular get-up for the Aldi oil treatment bottle and box, Aldi copied from the get-up of Israel’s oil treatment and box and that it did so in order to appropriate part of Israel’s trade or reputation. However, the mere fact that one trader copies aspects of the get-up of another does not mean that the rival trader’s conduct is misleading or deceptive or likely to mislead or deceive. That will depend on whether the copyist has sufficiently distinguished its products and made it clear that they are not the goods of the manufacturer whose design or get-up is copied. In this case, her Honour noted there are a number of differences in the get-up of the respective products and, in her opinion, the get-up of the respective Oil Treatment products are similar, but not deceptively so. Also, for the most part, the get-up of the other products, particularly of the shampoos and conditioners, are not even similar. Her Honour did not attach any weight to the evidence of confusion relied upon by Israel. As a result, the first claim was dismissed.

Israel relied on the same facts to allege passing off, but that was also dismissed.

The second claim related to all products in Aldi’s PROTANE NATURALS Moroccan Argan Oil range except the hair brushes.

In its pleadings, Aldi admitted that the word “naturals” on the products in question is intended to convey to consumers that the products contain or feature one or more ingredients derived from a plant or animal source. A primary issue concerned the meaning of “natural” and Katzmann J found the expert evidence on this to be of little assistance. It is necessary to determine what the word “natural” or “naturals”, in the context in which it is used, connotes to the ordinary or reasonable member of the relevant class of consumer, not to a scientist. That must depend, not on any particular scientific meaning, but on the ordinary English meaning. In her Honour’s opinion, the ordinary or reasonable consumer shopping for hair care products, seeing the reference to “naturals” on the bottles or their containers, would consider that they were made, either wholly or substantially from natural ingredients.

After reviewing the evidence, Katzmann J concluded that Israel failed to discharge its burden of proof in relation to Aldi’s conditioner, renewing treatment mask, heat protection spray and hair spray products. However, the oil treatments, shampoo and dry shampoo products were each made up of substantially synthetic ingredients and Aldi’s representation that they were natural is misleading or deceptive or likely to mislead or deceive.

The third claim related to Aldi’s oil treatment, shampoo and conditioner products, as well as its hair brushes and appliances. Israel alleged that Aldi has falsely claimed that the argan oil in each of these products makes a material contribution to the product’s performance.

Katzmannj was satisfied that there was no reasonable foundation for the performance claims made with respect to the first version of Aldi’s oil treatment, shampoo and conditioner. In all likelihood the argan oil was used for emotive effect, the claims were made for marketing purposes, and Aldi was indifferent to the truth of them. This was misleading or deceptive.

In relation to the hair brushes and hair appliances, Israel alleged that Aldi represented that the argan oil infused in the bristles of the brushes and in the heating elements of the appliances makes a material contribution to the performance of the products. Her Honour was satisfied these representations were made by Aldi and were false or misleading.

Israel’s appeal against Registrar’s decision refusing registration of its MOROCCANOIL word mark

Israel’s application to register the MOROCCANOIL word mark for hair care products in class 3 was filed on 7 December 2011. Aldi’s opposition was successful with the Delegate finding this mark had no inherent adaptation to distinguish and the pre-filing evidence was insufficient to support registration.

In the appeal (and also before the Registrar), the onus was on Aldi to establish MOROCCANOIL was not capable of distinguishing the relevant hair care products.

Katzmann J accepted much of the lexicography evidence presented by Israel’s expert, but was not satisfied on this evidence alone that “Moroccanoil” had no ordinary signification at the filing date and was inherently adapted to distinguish Israel’s goods. There was some evidence to indicate that “Moroccan oil” had been used descriptively before December 2011.  However, the onus was on Aldi to prove that “Moroccanoil” was not inherently adapted to distinguish and Israel did not need to prove anything.

Her Honour ultimately considered that MOROCCANOIL is to some extent inherently adapted to distinguish Israel’s hair care products from the goods or services of others. This was because there was no evidence to suggest that the single word “MOROCCANOIL” has an ordinary meaning to the Australian consumer, purchaser or trader. Furthermore, although “Moroccan oil” could be descriptive, it is not necessarily or self-evidently descriptive of the designated goods. The word “Moroccanoil” connotes (or the words “Moroccan oil” connote) a relationship between Morocco and oil but not, on the face of things, a relationship with the relevant goods. Her Honour was also satisfied that, before Israel took its goods to market, it is unlikely to have occurred to an honest competitor to use MOROCCANOIL in relation to hair care products.

Katzmann J then went on to consider the use of MOROCCANOIL by Israel and, after reviewing the evidence, was satisfied that it supported trade mark registration. Evidence as to this word being registered by Israel in other countries was irrelevant, but Israel’s use of this word mark in other countries was relevant. Her Honour was satisfied that a significant number of consumers, purchasers, and traders in the Australian hair care market identify MOROCCANOIL as coming from one trade source and in this market the word MOROCCANOIL is distinctive of Israel’s goods.

Consequently, her Honour consider the MOROCCANOIL word mark qualified for registration under section 41(5) but, if she was wrong and this word had no inherent adaptation to distinguish at all, then her Honour would still have found in favour of registration under section 41(6) on the basis that, because of the extent to which Israel had used this mark before the filing date, it does in fact distinguish Israel’s hair care products.

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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 consisting of the words SHAPE and SHAPE SHOPFITTERS since that time in relation to shopfitting services, particularly in the retail food sector. It operates the website at http://shapeshopfitters.com.au/  and is the owner of a trade mark registration for the composite mark shown below dating from 30 October 2015 covering a broad range of shopfitting, construction and renovation services in class 37.

The Respondent operated a much larger business and re-branded to Shape Australia in late 2015, without knowledge of the Applicant’s business. It uses various trade marks containing or consisting of the word SHAPE or that word represented in a stylised manner (with a stylised “A” resembling an upside down “V”) as shown below in relation to large scale fit-out and refurbishment services; although it was also involved in a fit-out of a pizza retail business in Perth. It operates the website at http://www.shapegroup.com.au/ .

The Applicant’s case, at trial, was confined to allegations that the Respondent’s conduct (i) contravened the Australian Consumer Law and constituted passing off in that it falsely represented that the Respondent has the sponsorship or approval, or an affiliation with the Applicant and (ii) infringed the Applicant’s trade mark registration.

Australian Consumer Law

An important consideration under the Australian Consumer Law and passing off claims was the identification of the class of persons to whom the false representations were allegedly made. The Applicant characterised this class as participants in the commercial construction industry, whereas the Respondent characterised this much more narrowly as buyers of head contracting or construction management services for commercial building projects. Mortimer J agreed with the Applicant and identified the relevant class as participants in the commercial construction industry, including subcontractors and others who provide services to either or both of the parties.

Her Honour characterised the representation which could be said to arise from the Respondent’s conduct as being a representation that the Applicant is a (smaller) part or subsidiary of the Respondent’s group: that is, of the “Shape Group”.

After reviewing the evidence, Mortimer J accepted that since adopting the name Shape Shopfitters Pty Ltd in 2012, the Applicant has developed a reputation in the commercial fit-out and refurbishment industry under that name, and that there is some evidence that some participants have come to refer to the Applicant simply as “Shape”, but was not satisfied that the word “Shape” has come to have a secondary meaning associated with the Applicant. Further, each party uses the word “Shape” to different effect, both in terms of the other words it is combined with (“Shopfitters” and “Australia” respectively) and in terms of how the word is represented on logos and other corporate identification or promotional material.

Her Honour concluded that, while there is some overlap in the parties’ business activities, it is of a small proportion and is not the kind of overlap which is likely to lead any participants in the industry into error about a business connection or relationship between the Applicant and the Respondent, so that the Applicant would be perceived to be part of the Respondent’s group. At the most, there is the potential or opportunity for confusion, and perhaps misidentification which can be quickly dispelled on inquiry or further investigation. There was no resulting sustained or ongoing belief in a connection or relationship between the Applicant and the Respondent and this did not establish the case pleaded by the Applicant.

The Respondent also relied on ASIC searches which disclosed a number of other businesses with SHAPE in their corporate names. Although Mortimer J accepted that the evidence of the bare existence of these entities cannot take the matter very far, her Honour considered “the number of such entities using the word “shape” in their corporate names, and (I am prepared to infer) trading activities, is not without significance”. Indeed, to accept the Applicant’s case under section 18 of the Australian Consumer Law would be approaching an acceptance that the Applicant has a statutory monopoly in the word “shape”, an otherwise ordinary English word. Her Honour found no real risk of error as between the Respondent’s use of the word in its business activities and that of all the other businesses identified in the ASIC searches.

Passing Off

Mortimer J accepted the Respondent’s contention that, on the evidence, the Applicant’s reputation is more limited than it claims. However, even on a wider and more favourable view of the Applicant’s reputation, her Honour did not consider the Respondent’s business activities using the name “SHAPE” threaten to damage or otherwise adversely affect that reputation and goodwill. That is because the use of the word “SHAPE” by the Respondent is not likely to convey to the potential class the misleading impression that the Respondent’s business is connected or related to that of the Applicant (or vice versa). That is so whether the class is defined narrowly, as participants in retail food shopfitting, or widely, as participants in the commercial construction industry.

Her Honour did comment that, if she had been persuaded there was misleading or deceptive conduct by the Respondent’s use of the word “Shape” in its corporate name and business activities, then the absence of proof of actual damage (in terms of established economic loss or the like) would not have prevented the Applicant succeeding in passing off.

Trade Mark Infringement

Mortimer J dismissed the infringement claim because, in her opinion, none of the trade marks used by the Respondent were deceptively similar to the Applicant’s registered mark. Her Honour considered that the relevant target market for the respective service is different from the general public, but it is comprised of a broad range of suppliers, contractors and clients and cannot be considered a specialist market. Nonetheless, her Honour did not accept that the reasonable industry participant of ordinary intelligence and memory would be caused to wonder whether the Respondent’s services, and the business it markets and promotes, come from the same source as that of the Applicant.

In considering the Applicant’s registered mark, Mortimer J did not accept that the word “SHAPE” is the essential, eye-catching and memorable feature. Rather, the word “Shopfitters” would also be recalled in conjunction with the word “SHAPE” and the “bottle cap border” is also something which would stick in a person’s memory. In other words, even though the word “SHAPE” was rendered prominently, it would be wrong to construe such a complex composite mark as conferring exclusive rights in the word “SHAPE”.

Rather curiously, by way of obiter, Mortimer J did comment that if she had otherwise been persuaded on trade mark infringement, the fact that the Applicant’s mark was rendered in the colour blue could give rise to significant issues of statutory construction notwithstanding that the registered mark was not limited as to colour and, by virtue of section 70, deemed to be registered for all colours.

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