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Mainly intellectual property (IP) issues Down Under

Unregistered design or registered design – UK

Over at the IpKat, Darren Meale has an extensive post explaining some of the intricate differences that arise when litigating an UK unregistered design right versus a registered design right. As he explains:

But UKUDR is quite powerful. As noted above, a designer can essentially make up what it says its rights are once it has seen an alleged infringement appear on the market, and it can lawfully do so in an immensely complex way. Only robust case management can deal with the menace….

Definitely well worth reading!

The case is Neptune v DeVol Kitchens [2017 EWHC 2172 (Henry Carr J)

Government response to Productivity Commission IP report

The Government has published its response to the Productivity Commission’s Intellectual Property Arrangements – Final Report.

Further comment will have to await. In the meantime, the media release notes:

A key priority will be to align Australian inventive step law with international best practice to ensure that the necessary protections are available to deserving inventions. The Government has also accepted the Productivity Commission’s recommendation to phase out the Innovation Patent System.

and, in not accepting the proposal to adopt a general “fair use” defence to copyright:

It is important copyright reform is considered in a holistic context rather than focused on individual issues. We will continue to work closely with stakeholders over the next 12 months to develop effective options for copyright reform.

The Australia Copyright Council is very pleased.

There will also be a new IP Policy Group (within government) to, er, monitor IP policy!

According to the Government’s Media Release, the Government is still considering the merits of a number of other proposals and “will work on these further”.

Australian Government Response to the Productivity Commission Inquiry into Intellectual Property Arrangements (pdf)

Media release 25 August 2017

More third party website blocking injunctions

Nicholas J has granted another round of injunctions ordering ISPs to block access to offshore copyright infringing sites.

Having established the ground rules in the earlier applications (here and here), the ISPs didn’t turn up; essentially just filing submitting appearances and agreeing to be bound by the orders.

According to this News report, once these orders are implemented a total of “65 piracy sites and 340 domains” will be blocked in Australia. That is claimed to be “95 per cent of the criminal trade blocked”.

Apparently, the film companies:

plan, later this year, to sue any individual that continues to download pirated content.

Roadshow Films Pty Ltd v Telstra Corporation Limited [2017] FCA 965

A real estate franchise agreement

2The Court of Appeal has ruled that Century 21 Australia’s arrangements permitting Victorian Realty Group to trade as “Century 21 Complete Properties” was a franchise agreement for the purposes of the Estate Agents Act 1980 (Vic.).

Section 43(5) of the Victorian Estate Agents Act has its own definition of a “franchising agreement”:

franchising agreement means an agreement whereby an estate agent is authorized to carry on business under any name in consideration of any other person entitled to carry on business under that name receiving any consideration whether by way of a share in the profits of the estate agent’s business or otherwise (emphasis supplied)

One of the reasons this is significant is that each party to the franchising agreement is jointly and severally liable for any defalcations, or negligence, by the estate agent : s 43.

Victorian Realty Group (VRG), while trading as “Century 21 Complete Properties” in Craigieburn, had committed a number of defalcations which resulted in 13 of its clients losing money. Those clients were compensated out of the Victorian Property Fund. The Secretary brought proceedings against Century 21 Australia, the franchisor1 under s 43 to recover those payouts.

Under the terms of the franchise agreement, and the incorporated Policy and Procedures Manual, Century 21 Australia granted VRG the right and obligation to trade exclusively under the name Century 21 Complete Properties. There were other rights and obligations to use “Century 21” in the various ‘trademarked’ forms, and to use various systems and participate in the Century 21 marketing plan. In other words, you and I would consider it a pretty typical example of a franchise arrangement.

The trial judge, however, found that the arrangement was not a “franchise agreement” as defined in s 43 because of the words in the definition “under that name”. VRG was authorised only to carry on business under the name “Century 21 Complete Properties”, not just “Century 21”; and “Century 21 Australia”, the franchisor, did not carry on business under that name.

The Court of Appeal unanimously allowed the Secretary’s appeal. As a matter of practicality and commercial reality both VRG and Century 21 Australia were carrying on business under “Century 21”, not just their respective formal names:

50 In its written case, the respondent seemed to accept that the Franchise Agreement was an agreement that would ordinarily be described as, and understood to be, a franchise agreement. The respondent’s written case described the Franchise Agreement as ‘the unambiguous franchise agreement in this case’. That description was, with respect, apposite. While that description does not relieve the Court of its obligation to properly construe and apply the definition of ‘franchising agreement’, it brings into focus the question of what legislative purpose might possibly exist in differentiating between franchise agreements that have different provisions as to trade names and the terms upon which their use is or is not permitted. That said, it is of course the text of the statutory definition that is paramount in the resolution of this proceeding.

51 ‘Century 21’ is a name. Equally, one might describe the relevant circumstances in this case as involving the use of a name being ‘the Century 21 name’. When one examines the Franchise Agreement (including the P&P Manual) it seems to us that that agreement authorised VRG to carry on business under the name ‘Century 21’ or the Century 21 name. Like any franchise agreement, it did so on particular terms. We have already set out the relevant terms in the present case. The existence of those terms does not gainsay the fact that the Franchise Agreement was one which authorised VRG to carry on business under the Century 21 name.

52 Similarly, in our view, the International Agreement entitled the respondent to carry on business under the name ‘Century 21’ or the Century 21 name within the meaning of the statutory definition. In our view, this conclusion accords with the text of the definition construed, as it must be, in its context and by reference to the legislative purpose of the provisions of the Act.

The focus on commercial reality is no doubt to be welcomed. The decision, however, has little direct relevance to the broader definition of “franchise agreement” for the purposes of the Franchising Code of Conduct as that is not tied just to a name. Instead, clause 5 of schedule 1 to the Competition and Consumer (Industry Codes – Franchising) Regulation 2014 applies to agreements which satisfy 3 requirements including (by way of contrast to the Estate Agents Act) the rather more broadly expressed operation of a business substantially or materially associated with a trade mark, advertising or commercial symbol. More fully, a franchise agreement is an agreement:

(b) in which a person (the franchisor ) grants to another person (the franchisee ) the right to carry on the business of offering, supplying or distributing goods or services in Australia under a system or marketing plan substantially determined, controlled or suggested by the franchisor or an associate of the franchisor; and

(c) under which the operation of the business will be substantially or materially associated with a trade mark, advertising or a commercial symbol:

(i) owned, used or licensed by the franchisor or an associate of the franchisor; or

(ii) specified by the franchisor or an associate of the franchisor; and

(d) under which, before starting or continuing the business, the franchisee must pay or agree to pay to the franchisor or an associate of the franchisor an amount including, for example

Secretary to the Department of Justice and Regulation v Century 21 Australia Pty Ltd [2017] VSCA 205

  1. Century 21 Australia had been appointed the master franchisee for Australia by Century 21 International with powers to appoint and manage “Century 21” franchisees here. ??

Shape not misleading

Last week, we looked at Mortimer J’s reasons for dismissing Shape Shopfitters’ allegations of trade mark infringement against Shape Australia. Presumably, given the colour and stylistic constraints of the registered trade mark, Shape Shopfitters’ main attack was based on the prohibition against misleading or deceptive conduct under the Australian Consumer Law. It too was unsuccessful.

Shape Shopfitters’ contention was that, by changing its name from ISIS to Shape Australia, Shape Australia was misrepresenting to the public that the two businesses were affiliated in some way with Shape Shopfitters being the specialist shopfitting arm of the Shape Australia. The descriptive nature of the common term, Shape Shopfitters’ fairly confined reputation and the fact that most of its dealings were with well-established contacts combined to mean that there was no such misrepresentation.

In about October 2016 when Shape Australia changed its name, Shape Shopfitters had annual turnover of between $10 million to $13 million a year. Almost all of its business was in fitting out, or the maintenance of, retail food outlets; especially quick service restaurants. Two thirds of its jobs were for contracts under $5,000; over 90% was for jobs under $200,000. Most of its business was in Victoria. 88% of its business outside Victoria was for the same seven clients: Grill’d, Nando’s, Sumo Salad, San Churro, Mad Mex, Schnitz or Coco Cubano. All of whom were well-established customers. Most of its work came from invitations to participate in closed tenders requested by established clients or directly negotiated contracts, once again with established customers.

In contrast, Shape Australia had annual revenues of around $400 million and the average size of its contracts was $1.55 million. Its role was usually as head contractor and construction manager, contracting out the work to specialist sub-contractors. It did do, however, some shopfitting work.

Mortimer J rejected Shape Australia’s argument that the relevant public was restricted just to the purchasers of construction services. Section 18 is not limited just to consumers; it provides protection to all people dealing with the respondent. In this case, including suppliers such as architects and subbies.

Mortimer J also rejected Shape Australia’s argument that none of its customers would mistakenly think that there was a connection with Shape Shopfitters. That was irrelevant. The question was whether people aware of Shape Shopfitters’ reputation would be misled or deceived.

However, there was no real, practical risk that the public would be misled or deceived. The businesses were simply too different and those dealing with Shape Shopfitters were well aware of its identity: At [216] – [217]:

I am not satisfied that participants in the industry would be led into such an error [i.e. thinking that Shape Shopfitters was an arm of Shape Australia]. The parties’ business activities are too different, they operate in different areas, with the applicant being far more specialised and more geographically contained. The link the applicant posits is possible and not fanciful in a theoretical sense, but it is without any foundation in the reality of the way the parties’ business activities are conducted, and in the way the “participants in the commercial construction industry” encounter the two businesses. That is especially so when one considers evidence such as that from Mr Billings that the applicant secures a lot of its business through word-of-mouth referrals.

The most that can be said is that there is a likelihood that participants in the industry, on isolated occasions, may be led to confuse the two entities because they both have the word “Shape” in their name, and occasionally communications may be directed to one when meant for the other. That is what the evidence discloses has in fact occurred, from time to time, in relatively few instances.

While there was some evidence of confusion, confusion itself is not enough and they were isolated instances only. Quickly dispelled.

You might recall that her Honour excluded evidence of print outs of websites of various businesses as hearsay and prejudicial. Evidence of the registration of such businesses as companies or business names was admitted, however, because the evidence was official ASIC records. There were 12 such businesses.[1] While Mortimer J accepted that this evidence did not take the matter very far, nonetheless it showed that the public could well come across other “Shape” entities in circumstances which undermined the potential for Shape Shopfitters to be seen as an “arm” of Shape Australia:

I accept that evidence of the bare existence of these entities cannot take the matter very far. However, the number of such entities using the word “shape” in their corporate names, and (I am prepared to infer) trading activities, is not without significance. Even without more information about those entities, the relative prevalence of the word “shape” in corporate and trading names, frequently in conjunction with construction-related words such as “joinery” and “projects” suggests that “participants in the industry” (including potential clients, purchasers and subcontractors) might well come across other entities using the word “shape” in the provision, sale and promotion of their particular services. That possibility cannot be discounted, and it tends against the linear proposition on which the applicant’s case relies: namely, the likelihood that the applicant (and it would appear, only the applicant) will be perceived to be part of the respondent’s larger group, and perhaps as its specialist shopfitting arm. That linear proposition must depend, it seems to me, on the applicant occupying something of a unique place in the market so that such a representation by the respondent’s use of the word “SHAPE” could only be made in respect of the applicant, and not other entities. This evidence tends against such a conclusion.

There was also some evidence from a search engine optimisation expert. It showed that neither business had very active websites. Those people who searched for Shape Shopfitters, however, typically did so by reference to the term “shopfitters”. This reinforced her Honour’s impression that it was its shopfitting specialty that identified Shape Shopfitters. On the other hand, Shape Australia did not typically generate hits in searches on terms related to “shopfitting”. If it did come up, it was invariably placed below the result for Shape Shopfitters:

Because of this, people searching for the Shape Shopfitters Website through searches for these terms are very unlikely to be misdirected to the SHAPE Australia website.

The passing off allegations failed similarly for want of the necessary misreprensation.

Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 3) [2017] FCA 865


  1. Shape Building Pty Ltd; Shape Design; Shape Property Developments; Shape Consulting; Shape Constructions Pty Ltd; Shape Project Management Pty Ltd; Shape Builders Pty Ltd; Shape Joinery & Design Pty Ltd; Shape Fitouts Pty Ltd; Shape Projects Pty Ltd; Shape Construction; the 12th, Shape Developments Pty Ltd changed its name in the course of the litigation although the reasons for that were not known.  ?

Shape shopped

Mortimer J has dismissed Shape Shopfitters claims against Shape Australia for misleading or deceptive conduct, passing off and trade mark infringement.

Much of the focus of the decision is on the misleading or deceptive conduct claim (and will have to be the subject of a future post). This post will look at the trade mark infringement claim.

Shape Shopfitters has registered Trade Mark No. 1731525 for shopfitting, construction and advisory services relating to construction in class 37 for this trade mark:

TM No. 1731525

It alleged that Shape Australia infringed that trade mark by using these signs:

Shape Australia provided construction services, apparently on a much larger scale, but was not specifically engaged in shopfitting – sub-contracting out those parts of its jobs. Also, Shape Australia did not provide its services to the particular people who were customers of Shape Shopfitters.[1]

Mortimer J found that Shape Australia’s trade marks were not deceptively similar to Shape Shopfitters’. Her Honour considered that the imperfect recollection of the relevant public would recall not just the word SHAPE, but also its collocation with the word Shopfitters (albeit it was subsidiary) and the distinctive “bottle cap” shape of the border.

Of the four elements comprising Shape Shopfitters’ trade mark (apart from the blue colouring), Mortimer J explained:

  1. The use of capitals for the word “SHAPE” in the applicant’s Mark is, I accept, a feature likely to be recalled. In part, it is the use of capitals which is likely to make the word “shape” stick in the memory, as well as its proportionate size in the Mark. It is also correct that the word “Shopfitters” is much smaller, as is “Est 1998”. I see no basis to find that the latter phrase would be generally recalled, however I consider the word “Shopfitters” may well be recalled in conjunction with the word “SHAPE”. There is an alliterative effect between the two words, as well the positioning of “Shopfitters” underneath the word “SHAPE”. An industry participant’s eye (to take the applicant’s wider class of people) will, in my opinion, be drawn to that word as well and what is just as likely to be recalled is the phrase “SHAPE Shopfitters”, rather than just the word “SHAPE”.

As a result, the prospect that the word mark would be deceptively similar was roundly dismissed. The two devices with the word in a circle were closer, but the absence of the word Shopfitters and the difference between a circle and the “bottle cap” border were decisive.

  1. The Circle Mark and the Transparent Mark have a closer similarity, because of – in combination – the use of capitals of the word “SHAPE”, the placement of that word inside a circle, and the use of a circle itself. However, as I have set out, in my opinion even imperfectly, a reasonable industry participant of ordinary intelligence and memory is likely to recall the word “Shopfitters” in conjunction with the word “Shape”, especially because of the alliteration involved. I also consider such a person will recall the applicant’s Mark has a distinctive border that is not a smooth circle.
  2. I do not consider the evidence about several industry participants referring to the applicant as “SHAPE” affects these findings in a way which means that word would be recalled as the only essential feature of the applicant’s Mark. Rather, that evidence is evidence of the contraction of the applicant’s business and trading name in ordinary speech, and such a contraction does not necessarily carry over to what a reasonable person is likely to recall of the applicant’s Mark. It goes only to how industry participants might refer to the applicant in conversation.

Given these findings, it was unnecessary for her Honour to express an opinion on whether the registration of Shape Shopfitters’ trade mark with the blue background imposed a limitation on the scope of the registration.[2]

Mortimer J’s conclusions do not explicitly turn on the fields of activity of the respective parties, apparently a closely fought battle in the context of the misleading or deceptive conduct case. Indeed, at [258] her Honour expressly said it made no difference whether the relevant public was defined as the “buyers” of construction services or participants in the commercial construction industry.

Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 3) [2017] FCA 865


  1. Although Shape Australia was much larger than Shape Shopfitters, you might recall that for much of its life it had operated under the name ISIS Group Australia and had changed its name after Shape Shopfitters came on to the scene and the name of the ancient Egyptian goddess took on some rather unfortunate (to say the least) connotations.  ?
  2. Referring to s 70 read with the definition of “limitation” provided by s 6.  ?

Should Michelin’s X block Continental’s Xking?

Over at the IPKat, there is a report about a CJEU decision upholding Michelin’s opposition based on its “X” trade mark to the registration of Continental’s “XKING” mark (below on the right), both in respect of tyres.

Michelin X v Continental Xking

You should read the report, if for no other reason, than the revelation of the EU’s “scientific” approach to trade mark conflicts.

Putting to one side the peculiar procedural posture the CJEU seems to take in these kinds of ‘appeals’, Merpel quite rightly thunders about scope afforded to ‘descriptive’ marks. After pointing out that it has taken 5 years to get to this point, Merpel says:

The end result here is that one trader with a weakly distinctive trade mark for the single letter X, distinguished from the letter of the alphabet only by the merest stylisation, can prevent the registration (and potentially use) of a stylised mark XKING. It must also follow that the same trader can prevent other X-formative marks, especially if the other element is in some way laudatory (and the word “king” is hardly at the top of the laudatory scale). Might it be said that this hands too strong a right to the trader?

Merpel makes a cogent case for the rejection of the opposition. What I wonder about, however, is what is the ordinary consumer likely to recall imperfectly? Would the ordinary consumer recall the mark is just an “X” alone so that the inclusion in Continental’s mark of rather bland “KING” is sufficient to dispel any potential for confusion? Or is the putative consumer likely to be struck by the common use of the hollow (or white) X? Under our version of trade mark law, all that is required is a (significant?) number of people being caused to wonder and the nature of the recollection is explained by Latham CJ:[1]

They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form… The court must endeavour to put itself in the position of ordinary purchasers of goods who have noticed a trade mark as being distinctive of particular goods, but who have not compared that mark with any other mark, and who are quite probably not aware of the fact that another more or less similar mark exists.

If you’re really motivated, leave a comment explaining why!


  1. Jafferjee v Scarlett [1937] HCA 36; 57 CLR 115 at 122.  ?

No damages for unjustified threats

Following on from the Full Court’s warnings in Australian Mud Company v Coretell, Dowsett J has now dismissed Morellini’s claim for damages for unjustified threats. This is a short point, but it bears notice as people often come to me thinking it is enough to show there has been an unjustified threat – it isn’t, if you want monetary compensation.

Mizzi and Morellini are both in North Queensland and came up with machines for planting sugar cane. Mizzi patented his. Dowsett J found that Morellini’s machine did not infringe Mizzi’s patent and Mizzi had made unjustified threats of patent infringement. On appeal, the Full Court also ruled that Mizzi’s patent was invalid for false suggestion.

There was no dispute that Mizzi had made unjustified threats. On 5 April 2010, it had caused to be published in the Canegrower trade magazine a notice about its pending patent and an article by “Invention Pathways” about the consequences “[i]f the patent owner decides to pursue his rights ….” Then in June 2011, Mr Mizzi made oral threats to a Mr Girgenti about the use of a Morellini machine.

The problems for Morellini were essentially two fold. First, much of the evidence about people’s reluctance to deal with Morellini related to things which happened before the threats were made or in circumstances where Dowsett J could not attribute them to the actual threats as opposed to just rumours circulating in the industry:

There is no direct evidence that anybody declined to deal with Mr Morellini as a result of the threats. It seems that even before the newspaper article on 5 April 2010, there was a degree of reluctance concerning any such dealings. That reluctance cannot have been attributable to the threats. Mr Morellini has not demonstrated that any adverse effect resulted from either of the threats.

Secondly, Dowsett J accepted that damages could be available for lost sales opportunities and delayed sales, if they could be linked to the threats. However, Morellini did not provide detailed evidence about how he would have exploited his machine commercially and why he had not been exploiting it “in more recent times”. That is, Dowsett J wanted to know what was Morellini’s plan (if he had one) for exploiting his machine commercially and why he had not been doing so.

Mizzi Family Holdings Pty Ltd v Morellini (No 3) [2017] FCA 870

Widespread dissatisfaction in US with Supreme Court’s patentable subject matter tests

The USPTO has published a report on its public review of the rules patent eligible subject matter under US law – what we would call a “manner of manufacture”.[1]

The Report does not appear to be the US Commissioner’s recommendations, but rather the results of consultations with the public.

As the Report notes, it is widely accepted in the USA that the Supreme Court’s decisions between 2010 to 2014 in Bilski, Mayo, Myriad and Alice have substantially altered what is patentable subject matter under US law and what not. The most dramatic effects being experienced by the life sciences and computer-related technologies.

While some submissions considered that it would sufficient to let the common law process of evolution unfold or the Commissioner could take administrative action to alleviate the effects of the Supreme Court’s decisions, “a majority, however, recommended legislative change”:

According to these participants, the Court’s precedent is having such a harmful impact on innovation and business development that a legislative solution is critical. ….

There appears to have been rather less uniformity about what the legislative solution should be.

  1. Some submissions called for a legislative requirement only that the claim be for a technological or useful art, without a requirement for “newness”.
  2. Some submitted that the requirement should be something having a practical application.
  3. Some submissions argued that express legislated exceptions should replace the Supreme Court’s common law exceptions. AIPLA for example contended for an exception:

    A claimed invention is ineligible … only if the claimed invention as a
    whole exists in nature independent and prior to any human activity, or
    can be performed solely in the human mind.

  4. Some submissions called for the legislation to make it clear that patent eligibility is a separate requirement to the other requirements such as novelty and obviousness, and to be considered separately from those requirements.
  5. Several commentators thought that the problem of “pre-emption”[2] could be addressed by introducing a specific exemption from infringement for research.

Our High Court in its own Myriad decision managed to adopt an even more alarming approach to patentable subject matter notwithstanding that Parliament had introduced an explicit research defence in s 119C. While it would appear likely to be some time before a clear solution emerges in the USA, maybe these developments should also give us pause for thought, given how enthusiastically the Patent Office and, under its guidance, the Full Court has jumped on the Alice type bandwagon, albeit drawing on the even more curious European approach.

Lid dip: Patently-O

Patent Eligible Subject Matter: Report on Views and Recommendations from the Public (pdf)[3]


  1. Patents Act 1990 s 18(1)(a)  ?
  2. That is, “concerns that patents on foundational technological tools may stifle scientific progress by tying up the basic building blocks of human ingenuity”.  ?
  3. For a rather more humorous take, see IP Musings.  ?

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].  ?
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