National Roads and Motorists’ Association Limited v Construction, Forestry, Maritime, Mining and Energy Union  FCA 1491 (11 September 2019)
The NRMA was unsuccessful in its actions alleging trade mark infringement, misleading or deceptive conduct and injurious falsehood against the Maritime Union of Australia (MUA) branch of the CFMMEU.
This arose as part of an industrial dispute relating to NRMA’s acquisition of the My Fast Ferry business in January 2018 and the wages and conditions of employees of that business.
The NRMA claimed that the MUA used, in its negative publicity campaign, the NRMA’s word mark, one of the NRMA’s device marks, and a logo that incorporates it, and made false or misleading statements which are detrimental to, and designed to injure, the NRMA and its brand. The negative publicity campaign by the MUA included statements and imagery which the NRMA claims convey the representation that it is an unsafe ferry operator, as well as other allegedly false or misleading statements relating to various aspects of the employment conditions of the My Fast Ferry staff and their treatment by the NRMA.
The offending logo used by the MUA is shown below. This logo was usually accompanied by text which included the words “Don’t let wages sink to the bottom of Sydney Harbour”.
The NRMA alleged the offending logo used by the MUA is substantially identical with, or at least deceptively similar to, its registered NRMA word mark and is trade mark use of that logo. The infringement claims were made under s120(1) and s120(3). Griffiths J considered the offending logo to be deceptively similar to NRMA. However, the relevant NRMA word mark registration in class 39 covered information about journeys and MUA’s use was in the context of an industrial campaign.
In any event, the infringement claims turned on whether or not MUA was using the offending logo in a trade mark sense and his Honour found this was not the case. MUA was merely using the logo to identify NRMA as the owner of the My Fast Ferry business which is the target of its industrial campaign. The logo was not being used being used to indicate a connection between goods or services provided in the course of trade by the MUA. Hence, there was no infringement under s120(1).
The absence of trade mark use was sufficient to also defeat the s120(3) infringement claim, but Griffiths J also briefly considered the other elements. The MUA admitted the various NRMA marks were well known. However, this claim also failed because NRMA could not establish that use of the offending logo would be likely to be taken as indicating a connection between the unrelated goods or services of the MUA and it as registered owner of the trade mark. His Honour considered that the context in which the offending logo was used does not suggest a relevant connection between its use and the NRMA. Rather, the context plainly indicated an intention to protest against the NRMA.
The misleading or deceptive conduct claims under the Australian Consumer Law also failed because the relevant conduct of the MUA was not characterised as being “in trade or commerce”. Griffiths J referred to the body of case law finding representations made in the course of public or political debate fall outside of the phrase “in trade or commerce”. While there was no precedent on this issue specifically relating to trade unions, His Honour considered that representations made by a trade union in the context of an industrial campaign in relation to the existing conditions of employment of employees will generally fall outside conduct that is “in trade or commerce”.
In light of this finding, it was unnecessary to consider whether any of the alleged representations of the MUA were misleading or deceptive, but his Honour did provide some comments by way of obiter dicta.
Under the injurious falsehood claim, Griffiths J found that the NRMA had established most of the relevant statements and representations made by the MUA were false, but the NRMA failed to establish they were made maliciously and the NRMA could also not establish actual damage in the required legal sense. Mere reputational damage is insufficient and the NRMA could not establish how this translated into actual economic loss.
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