The Australian Bar Association (the ABA) has obtained declarations that Australian Barristers Chambers Pty Ltd and associates (the Chambers entities) have infringed the ABA’s registered trade marks:
- No 1587902 – AUSTRALIAN BAR ASSOCIATION; and
- No 1558252 – for the ABA “logo”:
by using the names:
- Australian Barrister Chambers;
- AustBar Chambers; and
- Australian Barrister,
in close proximity to an image of the scales of justice. For example:
The ABA has also obtained declarations that the Chambers entities have engaged in misleading or deceptive conduct contrary to s 18 etc. of the Australian Consumer Law by using those names and also by using:
- the URL ?www.austbar.com.au?;
- the name AustBar Chambers;
- the name AustBar ADR;
- the tweet identifier ?Australian Barrister@AustBar?;
- and all of the above in in proximity to, the scales of justice.
The NSW Bar Association has also obtained declarations that its trade marks for BARADR have been infringed, and s 18 of the ACL contravened, by the Chambers entities by the use of BARADR and the domain names ?www.baradr.com.au? and ?www.austbaradr.com.au?.
As James McDougall points out, the decision is 360 paragraphs long and so will no doubt require further, careful consideration. A few points caught my eye skimming through:
One point which should be noted (as clients often raise it) is Greenwood J’s orthodox rejection of the claim that Chambers’ name(s) were defensible because the business name registration or domain name registration system permitted them. Greenwood J pointed out at :
The circumstance that a domain name registration might or might not meet the eligibility criteria for registration is no answer to the question of whether use of such a domain name is either confusing or misleading or constitutes infringement of a registered trade mark, in Australia. Prior to the introduction of the dispute resolution protocols governing domain name registrations, it had become something of an art form for registrants to register, as domain names, the names of traders who had developed a reputation for a name or mark within a jurisdiction and often internationally. Processes were adopted as a result of that practice to try and address that conduct. Whatever the perceived “validity” might be of the domain name registration ?www.austbar.com.au? within the confines of that system and its protocols, austbar and AustBar are terms, names or indicia associated, particularly electronically, with the ABA.
The signpost point
Greenwood J was prepared to find that AUSTRALASIAN BARRISTERS CHAMBERS by itself, or even in the logo form:
by itself for a virtual chambers of barristers would not have infringed the ABA’s rights. However, traffic to the website was directed by the “signpost” <www.austbar.com.au> and that conduct was infringing:
 As to the use of the name Australasian Barrister Chambers, I do not regard the use of that name as being either substantially identical with or deceptively similar to either TM 902 or TM 252. However, traffic is directed to a website for and on behalf of that company (and later Austbar PL) by use of the domain name ?www.austbar.com.au?. Use of that domain name involves use of a mark or sign in the course of that company’s trade in services for which TM 902 is registered. I regard the use of austbar in this context as a use of a mark or sign deceptively similar to TM 902. Once a person engages with austbar as the conduit to the website operated by Australasian Barrister Chambers, the sense of confusion or wonderment about whether the person is engaging with the ABA or a provider connected with the ABA remains.
 However, by itself, the name Australasian Barrister Chambers might be thought to suggest a set of chambers occupied by barristers “virtually” (and in this case only a virtual presence is relevant), engaged or seeking to be engaged, in work in the Australian and Asian markets for legal services, by seeking direct electronic access to those who engage barristers in that work. In this case, of course, the key electronic point of connection is a domain name using austbar. Barristers might seek greater direct access to the legal profession in this way but it is also important to remember that the website addresses clients and the community directly through the website. Mr Minus, entities controlled by him (or over which he has influence) and other barristers would be entitled, plainly enough, to engage in an undertaking of establishing an online virtual presence for barristers associated together in some way, shape or form. The difficulty is the use of sign, mark or signpost which directs traffic to the site under or by reference to the dominant domain name descriptor austbar associated with the Australian Bar Association. The use of austbar as a mark signposting the electronic route to the site operator is the vice and the infringing conduct.
It will be very interesting to see what form of injunction is fashioned in response to these findings.
Unincorporated associations and ownership trade marks
Greenwood J rejected various attacks on the ABA’s title to its registered trade marks. When the applications for the ABA’s registered trade marks were filed in 2013, “it” was still an unincorporated association, so the 12 members of “its” executive council were the applicants, each described “as trustee for the Australian Bar Association”. Subsequently, three of the original applicants retired from the executive council and assigned their interests to the remaining members. Greenwood J held:
 I accept that as a matter of construction of the TM Act, a joint owner may assign his or her “share” or “interest” in the trade mark to another with or without an assignment by any other joint owner. Mr Colbran QC, Mr Traves SC and Mr Walker were joint owners (with the other nine AB Council members) and joint applicants as trustees for the ABA for each trade mark. When they assigned their interest in each trade mark, the incoming assignees took, between them, that aliquot share of the three assignors impressed with the same trust upon which that interest had been held by them. The interest of each of the remaining nine applicant owners as trustees remained entirely as it was.
 There is no defect in title in the sequence of transfers as discussed.
Chambers’ disclaimer did not help
Chambers’ website seems to have various forms of disclaimer appearing at different times – his Honour considered the evidence was not fully clear about all the forms or timings.
Greenwood J considered that none of the forms sufficiently proved were sufficient. His Honour explained at  that to be effective the disclaimer had to satisfy the following test:
the critical matter in relation to the efficacy of the disclaimer is whether the respondents have discharged the onus of demonstrating that the disclaimer is likely to be seen and understood by all those reasonable fair minded members of the various cohorts engaging with the website (leaving aside extreme and fanciful reactions and isolated exceptions), who would otherwise be misled. In order to be effective, the disclaimer must be such as to leave the fair minded reasonable member of the class in no doubt about the source or origin of the services provided under and by reference to the website; in no doubt about whether the ABA is associated or affiliated with the site operator or the services offered by the operator; and in no doubt about whether the ABA is in some way, shape or form standing behind the website operated by the respondents.
Chambers’ disclaimer did not achieve that. By the time the reader had reached the website, there had already been infringement and misleading or deceptive conduct:
: First, by the time a person engages with the website, they have already been taken there by a sign, the use of which involves an infringement of TM 902 and taken there by reason of conduct in contravention of s 18(1), s 29(1)(g) and s 29(1)(h) of the ACL. The user is already drawn to the site. He or she is already attracted and engaged by the conduct. At that point, the disclaimer needs to operate in such a causative way that it cures an existing problem (if able to do so at all which is likely to be difficult and rare), by making it absolutely clear to the reader who is looking at the site electronically for particular information that this site is not a website operated by the ABA and nor are the services provided by the website the services of the ABA or services associated with or approved by the ABA. One imagines that the disclaimer would need to capture the eyes of the viewer with significant text with appropriate emphasis. Small text located two thirds of the way down the page is never likely to be sufficient and in the facts of this case, it is not sufficient. It is a classic example of the message being “in the small print”.
 Second, in the facts of this case, the truth of the matter is that the unlawful conduct was complete once the trade mark infringement had occurred and once the misleading conduct had taken the person to the site. At that point, the disclaimer had to be powerful enough to undo the harm.
Thirdly, some of the public who would land on the website would be consumers looking to access the views of a national body like the ABA, but misdirected there by Chambers’ cues.
One might also question the relevance of any disclaimer to infringement under s 120(1) as opposed to s 120(2) or s 120(3).
Selth v Australasian Barrister Chambers Pty Ltd (No 3)  FCA 649