Pham Global 3: Did Insight have enough reputation?

This third post looks at the Full Court’s rejection of Pham Global’s arguments that its use of its trade mark in NSW and Tasmania was not caught by s 60 because (Pham Global claimed) Insight Clinical did not have a reputation outside WA.

To recap, Pham Global was appealing Insight Clinical’s successful opposition to the registration of Pham Global’s mark (below on the right) on the basis of its own trade mark (below on the left) and the subsequent finding of infringement.[1]

As Insight Clinical had not registered its trade mark before Mr Pham had applied to register the Pham Global trade mark, one of its grounds of opposition was its reputation under s 60.

As you no doubt recall, s 60 now provides:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first?mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first?mentioned trade mark would be likely to deceive or cause confusion.

It was not in dispute between the parties that Insight Clinical had a reputation in its mark in Perth, Western Australia. Pham Global contended, however, that reputation was not enough to succeed under s 60 when Pham Global was operating 3,000+km away in NSW and Tasmania where, it contended, Insight Clinical’s reputation did not extend.

The Full Court first pointed out that s 60(a) required only a reputation in Australia. It did not require a reputation throughout Australia. Accordingly, the first requirement under s 60 was satisfied, and s 60 was engaged.

Immediately following that conclusion, however, the Full Court appeared to accept the basic thrust of Pham Global’s argument, recognising that there had to be a causal link between the proven reputation and the potential for deception or confusion.

The Full Court recognised that what and how much reputation might be required to give rise to sufficient risk of deception or confusion would depend on the relevant field of activity. Much of the Full Court’s consideration concentrates on affirming the trial Judge’s findings that Insight Clinical had a reputation with relevant sections of the public outside WA through its attendance and advertising at national conferences, evidence of some interstate referrals and advertising for staff on national websites and Google search “hits”. In that connection, the trial Judge had recorded evidence of one referral to Insight Clinical from Victoria, two from NSW, four from Queensland and one each from South Australia and the Northern Territory. Her Honour also identified Insight Clinical as having provided services to 237 interstate patients.[2]

At [81], their Honours emphasised the national nature of much commercial activity today:

Conagra was decided 25 years ago. In 1992 the World Wide Web was in its infancy. There were no publicly available internet browsers. There was no Google, no Seek, no web browsing or the like. With the internet and travel both overseas and within Australia now ubiquitous in the lives of Australian people, the essential conceptual underpinning of IR’s case is unsound. IR accepted that, before IR conceived of the IR composite mark, ICI had acquired a substantial reputation in its marks in Western Australia. IR’s case depended on the proposition that ICI’s reputation in its marks did not extend outside Western Australia and IR would accept any condition or limitation not to use its marks in Western Australia. We accept that the Act permits a condition or limitation to this effect to be imposed (discussed below). But the reality of modern life, with widespread use of the internet for advertising, job seeking, news gathering, entertainment, and social discourse and free and frequent movement of people across Australia for work, leisure, family and other purposes, necessarily impacts on both the acquisition of a reputation in a mark and the likelihood of the use of another mark being likely to deceive or confuse because of that reputation. Given current modes of communication and discourse and free and unfettered rights of travel within Australia, a substantial reputation in Western Australia in this national industry constituted a sufficient reputation in and across Australia for s 60(b) to be engaged. IR’s attempts to subdivide the nation into its component States and Territories, in the present context at least, could not succeed. Its approach resonates with sentimental notions of pre or early Federation train track gauge differences. (emphasis supplied)

In similar vein, Pham Global’s offer to accept a voluntary disclaimer that its registration did not extend to WA was rejected. The proposed disclaimer read:

Registration of this trade mark gives no exclusive right to use or authorise the use of the words INSIGHT RADIOLOGY in the State of Western Australia

While s 74 did not provide a statutory basis for the proposed disclaimer as the proposal was not limited to a part of the mark only, s 33 and s 55 did. The Full Court said at [89]:

The national nature of the market and the fact of free and unfettered movement around Australia cannot be ignored. Despite IR’s express willingness not to use the IR composite mark at all in Western Australia, there is one national specialist market for radiological services of which Western Australia forms a substantial part. Given the facts set out above, use of the IR composite mark outside Western Australia will not ameliorate the likelihood of a substantial number of people in the relevant class around Australia being deceived or confused. As a result, the use of the IR composite mark in Australia is a use which would be likely to deceive and cause confusion. Moreover, enforcement of any such condition would be problematic. The prospect that IR’s behaviour could be disciplined by infringement or other proceedings at the suit of ICI if IR used its mark in Western Australia contrary to the condition may not be a satisfactory answer to the deception or confusion that might be caused in the interim. IR’s submissions did not satisfactorily confront any of these matters.

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83


  1. For previous posts on the ruling that the trade mark was invalid because Mr Pham was not the proper applicant see here and the trade mark was substantially identical to Insight Clinical’s see here.  ?
  2. At [78] and [79] respectively. The Full Court referred to 440 patients. The national conferences were directed to the relevant professions: radiographer and radiologists, both of which were registered to practice nationally and regulated and organised on a national basis: [65] – [66].  ?

100 blogs about IP

Not quite 100 flowers, but Feedspot has posted a listing of 100 IP blogs from around the world.

Some of them, I subscribe to myself.

You may find some interesting too!

Cutting the costs of designs litigation

Justice Carr in the UK has weighed into case management of design infringement cases in a big way.

Clingabeez[1] are apparently the runaway toy of the last year or so, being the Activity Toy of 2016 in the UK. They are the subject of a Registered Community Design. So, when what they allege are “copycats” hit the market, the letters of demand started flying. “Bunchem[2] is one such competitor.[3] It sued for unjustified threats and challenges the validity of the Registered Community Design. “Clingabeez” cross-claimed for infringement and denied invalidity.

At the initial case management conference, Clingabeez estimated a six-day trial and £776,000 costs; Bunchem estimated a four day trial and £360,000 costs.

Justice Carr considered both estimates were well out of order. His Lordship considered that a case relating to a registered design for a consumer product should be much simpler, largely dependent on the Court’s visual assessment of the evidence. In line with Court of Appeal decisions,[4] at [6], Justice Carr said:

(i) Registered design cases are concerned with the overall impression of the registered design, the alleged infringement and the design corpus. It is easier to see this than to describe it in words.

(ii) Admissible evidence in such cases is very limited, and is most likely to comprise technical evidence about design constraints. Such evidence is unlikely to require substantial cross-examination. It should be possible to decide a registered design case in a few hours.

(iii) If permission for expert evidence is to be given, then the precise ambit of that evidence should be defined. The expert should be told what question to address and the evidence should be confined to those questions.

(iv) It is clear law that whether the defendant has copied is irrelevant. It is equally irrelevant for the defendant to prove or to give disclosure about how his design was arrived at.

On the question of admissible evidence and further discovery, Justice Carr excluded evidence going to copying at this stage. Copying was not relevant to the question of infringement. However, it could be relevant to the remedy of additional damages. Accordingly, his Lordship postponed discovery and any evidence directed to that issue to any subsequent hearing on remedies if the trial on liability and validity resulted in a finding of infringement.

Both parties had already filed detailed particulars of, respectively, differences and similarities. Justice Carr did not consider the parties’ requests for further information about these matters would be helpful. However, his Lordship directed that each side should exchange concurrently enlarged photographs of the products alleged to infringe marked up to indicate the points it relied on.

His Lordship limited the expert evidence to the following matters;

There are very limited issues upon which expert evidence is admissible. The issues on which I intend to allow expert evidence are as follows. First, are any of the features listed in subparagraphs (1) to (9) of paragraph 6.5 of the Amended Particulars of Claim features of appearance of a construction toy such as Bunchems which are solely dictated by its technical function? Second, to what extent, if any, is the degree of freedom of design limited by the functional nature, if any, of the features of subparagraphs (1) to (9) of paragraph 6.5 of the Amended Particulars of Claim?

Bunchem” was happy with its expert evidence being limited to 10 pages and two pages (excluding exhibits) directed to the design corpus. “Clingabeez”, having asked for 20 pages, was permitted 15.

Justice Carr fixed the trial duration at three days including reading time, and did not think it would be necessary for any adjournment for preparation of final written submissions. His Lordship then set out at [23] eight “lessons for the future” to achieve shorter trials more expeditiously in such matters:

(i) The parties should, in appropriate cases, produce images at an early stage to show the differences or similarities upon which they rely, and in the case of the defendant, those features which are wholly functional or in which design freedom is said to be limited. Requests for further information are unlikely to be helpful.

(ii) Claimants should not try to introduce or seek disclosure in relation to copying. The parties should carefully consider why, if at all, disclosure is necessary, rather than agreeing to standard or even issue based disclosure.

(iii) Expert evidence as to whether the alleged infringement produces on the informed user the same or a different overall impression as the registered design should not be included in cases concerning consumer products.

(iv) The parties should try to limit the length of expert evidence to an agreed number of pages.

(v) If any evidence of fact is to be introduced, the court will need to be satisfied of its relevance.

(vi) The parties should be prepared at the pre-trial review to identify issues on which cross-examination is necessary, and to explain why.

(vii) Where multiple designs, or multiple infringements, are alleged, the parties should each select a limited number of samples on which the issues can be tested.

(viii) The parties should give careful thought to those issues which can be postponed to a damages enquiry, which will only need to be considered if liability is established.

Justice Carr’s approach would no doubt commend itself to Justice Finkelstein, were he still on the bench. It may also be rather more difficult for an Australian court to exclude evidence going to the “ultimate question”, given section 80 of the Evidence Act and the first Cadbury/Darrell Lea appeal. On the other hand, the relevance of copying is exactly the same.[5] Nonetheless, as both the Federal Court and the Federal Circuit Court are striving to make litigation more costs effective,[6] there may well be considerable interest in exploring Justice Carr’s admonitions DownUnder.

Spin Master Limited v PMS International Group [2017] EWHC 1477 (Pat)


  1. Otherwise known as PMS International Group.  ?
  2. Spin Master Limited.  ?
  3. Indeed, a Google search or visit to Youtube might see the two brand names used interchangeably. For example  ?
  4. Procter & Gamble Co v Reckitt Benckiser (UK) Limited [2007] EWCA Civ 936; [2008] Bus LR 801 and repeated and expanded by the Court of Appeal Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206; [2013] Bus LR 328  ?
  5. Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588.  ?
  6. See also chapter 19 of the Productivity Commission’s Intellectual Property Arrangements – Final Report.  ?