Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd  FCA 719 (24 May 2019)
Successful action by Sensis for trade mark infringement.
Sensis carries on a direct marketing and data processing business under the trade mark SENSIS and owns trade mark registrations for SENSIS covering a broad range of services in class 35. These registrations were assigned to Sensis from Telstra with effect from 28 February 2014.
Senses carries on a direct mail business under word and logo versions of the trade marks SENSES DIRECT and SENSES DATA.
Senses did not contest the claims relating to use of the SENSES DATA trade mark, but cross- claimed seeking removal of certain services from the registered SENSIS mark on the ground of non-use.
Davies J considered the SENSES DIRECT word and logo marks were deceptively similar to the registered SENSIS mark. Sensis admitted the direct mail services it provides fall within the scope of the registered SENSIS mark and so infringement was found. There was also evidence going to actual confusion.
Senses sought to rely on the defence to infringement under s122(1)(fa) and argued that it would be entitled to obtain registration of its SENSIS DIRECT trade mark. Davies J had to decide the time at which the availability of defence is to be assessed and followed the Full Federal Court in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd  FCAFC 6 in finding that the relevant time was when the first infringing conduct occurred in May 2013 and so reliance on honest concurrent use was not available to Senses.
Nonetheless, in case she was wrong on the relevant date, her Honour went on to consider whether Senses could avail itself of the honest concurrent use and/or other circumstances provisions to obtain registration. Senses had, in fact, filed a trade mark application on 2 February 2016, so her Honour used this date as well as the later date of 11 August 2016 when Senses raised the s122(1)(fa) defence; but the dates made no difference.
Davies J was satisfied the SENSES DIRECT mark was adopted honestly and Senses had conducted relevant searches prior to adopting this mark. Indeed, the trade mark examiner did not raise the SENSIS registered mark as an objection to the application filed on 2 February 2016. Nonetheless, there was evidence the SENSES DIRECT mark was referred to as ‘Sensis Direct’ or just ‘Sensis’ by some customers of Senses. Her Honour considered there was a high potential for confusion and was not prepared to exercise discretion in favour of Senses.
Davies J also considered the contention by Sensis that, even if honest current use was found, registration of SENSES DIRECT would still be refused due to the reputation of the SENSIS mark and the likelihood of confusion under s60.
The evidence clearly established Sensis had acquired a substantial reputation in its SENSIS mark in relation to directory services, but her Honour was not satisfied this reputation extended beyond that as at May 2013. Further, although Sensis undertook a rebranding campaign in 2014 to increase awareness of its business extending to other marketing and business services, her Honour was not prepared to infer a broader reputation even at the later dates of 2 February 2016 or the date of the hearing. Consequently, Davies J considered that s60 could not apply to preclude trade mark registration of the SENSES DIRECT mark.
For the cross-claim by Senses relating to non-use of the registered SENSIS mark, the relevant period was the three year period ending on 11 July 2016. Senses was seeking to excise direct mail related services from the scope of the SENSIS registrations. However, Davies J was satisfied Sensis had shown use of its SENSIS mark in respect of some of the proposed excised services during the relevant period. Her Honour also commented that, to the extent the evidence disclosed use of logo versions of the SENSIS mark, it could be relied upon to show use of the SENSIS word mark.
In case she was wrong on this issue, her Honour went on to consider whether discretion could be exercised in favour of Sensis and whether it is reasonable not to restrict the SENSIS trade mark registrations and found in favour of Sensis.