Taxiprop Pty Ltd v Neutron Holdings Inc (No 2)  FCA 1822 (18 December 2020)
In an earlier judgement in Taxiprop Pty Ltd v Neutron Holdings Inc  FCA 1565 (29 October 2020) reported at https://www.selfmark.com.au/trademark-lawyer-sydney-federal-court-lime/ O’Callaghan J found that Neutron’s conduct, since 7 November 2018, in offering Lime branded electric bicycles and scooters for hire through its Lime app did not infringe Taxiprop’s registered LIME mark or constitute misleading or deceptive conduct under the Australian Consumer Law (ACL) or passing off. His Honour upheld Neutron’s cross claim for removal of Taxiprop’s LIME registration on the ground of non-use for all class 39 services other than taxi services. With the LIME registration restricted to “taxi services”, His Honour considered that “the sale of micro-mobility services and taxi services under the same mark by different companies is not likely to lead to confusion or deception.”
The issue in the current proceeding was whether Taxiprop was entitled to declaratory relief for any infringement that may have occurred in the past, before its LIME registration was restricted to taxi services.
Neutron amended its LIME trade mark application, on 11 November 2020, to be in keeping with goods and services relating to bicycles and scooters. However, Taxiprop argued that Neutron originally filed that application for a broader range of goods and services (including those relating to vehicles generally) and that was prima facie evidence of threatened use of the LIME mark for such broader goods and services. Taxiprop also relied on prior public statements by representatives of Neutron supporting an extension of modality to car share services.
His Honour commented that he “fail[ed] to see what possible utility there could be in a court declaring that, at some time in the past, a party intended, or is taken to have intended, to infringe a mark, in circumstances where it never acted upon any such intention (because it never used the mark in respect of taxi services).” Further “declarations are not generally made if they would not serve any practical purpose, including if they relate to academic or theoretical matters.”
Accordingly, his Honour dismissed Taxiprop’s claim for threatened trade mark infringement and declined to order declaratory relief.
However, Taxiprop also argued it was entitled to declaratory relief for infringement arising from Neutron’s actual use of the Lime mark before its registration was restricted.
There is previous judicial authority to the effect that, where a court orders a trade mark to be removed in whole or in part, the removal takes effect from the date that the Registrar makes the necessary amendments on the Register in accordance with the court’s order. In the present case, that date was 1 December 2020. Neutron admitted this and during the trial, conceded that the services it provided under the Lime mark fell within the description of “transport” covered by Taxiprop’s LIME registration before it was restricted.
O’Callaghan reluctantly made this declaration, but commented that “whether Taxiprop will ultimately prove a case for more than nominal damages remains to be seen”.
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