Trade Practices

Dying in the FANATICS ditch

The attempt by global online sports merchandise retailer, Fanatics LLC, to expand its operations directly into Australia has resulted in the cancellation of its FANATICS registrations in class 35[1] (but not class 42[2]) and findings that it had infringed FanFirm’s competing registrations in class 25[3]. FanFirm’s own registrations in classes 9, 16, 24, 32 and 38, however, were cancelled for non-use.

The case runs through the gamut of issues: ownership, first use, similarity of goods / services, cancellation under s 88, removal for non-use, honest concurrent user, infringement, defences under s 122(1) and ACL / passing off. Rofe J’s judgment runs to 497 paragraphs so I am not going to try to tackle everything. Rather, I want to pick out three or four issues which I found particularly interesting. In particular, when the US-based respondent sought to expand its business in Australia, it was forced (unsuccessfully) to try to read down the scope of FanFirm’s registered trade marks as mere adjuncts to its tour operator business.

Some background

You might recall watching a sporting event where there were some raucous crowd members wearing green and gold curly wigs. It turns out the original fanatic, a Mr Livingstone, attended the US Open in 1997 where his “enthusiastic support” earned him an invitation to attend a post match celebration with the winner, Pat Rafter.

Beginning with a Davis Cup match in October 1997, Mr Livingstone parlayed this beginning into a business promoting tours to sporting and, eventually, cultural events and selling merchandise. Those attending the tours often wore merchandise such as “FANATICS”- branded t-shirts and caps. In 2004, Mr Livingstone incorporated the applicant and it took over the business which has continued to grow and expand so that, by the time of the trial, there were some 160,000 members in its customer database.

Meanwhile, in 1995, the respondent started life in the United States as Football Fanatics Inc. It formally became Fanatics Inc only in 2010.

The respondent operates around the world selling licensed sports merchandise such as NBA, NFL, F1 and Premier League products and, since 2018, third party merchandise which it manufactures and brands with its FANATICS Marks.

Before 2010, the respondent’s business was operated through a series of audience-specific brands and websites such as www.footballfanatics.com (1997), www.fastballfanatics.com (2006), www.fastbreakfanatics.com (2007), www.faceofffanatics.com (2007), www.fightingfanatics.com (2008), www.surffanatics.com (2008), www.fanaticsoutlet.com (2008), www.kidfanatics.com (2009) and www.ladyfanatics.com (2009).

In 2009, it acquired the domain name <fanatics.com> which initially redirected to the Football Fanatics website. From 2011, however, it became the respondent’s primary website.

It appears the respondent had been making some sales to customers in Australia from its Football Fanatics website since 2000. The respondent also provided what were described in the judgment as modest sales figures from its www.fanatics.com website to Australians beginning in 2014 through till 2020.

In 2020, the respondent’s Australian operations expanded significantly. It began operating the Essendon Football Club’s online store as “A Fanatics Experience” and began selling its FANATICS branded merchandise nationally through Rebel Sports stores.

The trade marks

FanFirm relied on two trade marks of which, TM 1232983, was for FANATICS in classes 9, 16, 24, 25, 32, 38 and 39 which was registered with effect from its filing date on 2 April 2008. (The respondent had unsuccessfully opposed registration back in 2010.)

The respondent also had two registrations for FANATICS, another for FANATICS and Flag device and registrations for FOOTBALL FANATICS and SPORTS FANATICS. The earliest registrations, for FANATICS and FOOTBALL FANATICS, dated from 10 September 2008. That first FANATICS registration was achieved on the basis of continuous prior use under s 44(4).

The respondent’s Flag device:

Who used first (in Australia) and for what

Rofe J’s first crucial ruling was the determination of who was the first user of FANATICS as a trade mark in Australia – and for what.

Her Honour found that FanFirm had been using FANATICS in relation to goods – the merchandise – from its website at www.thefanatics.com from 2004.

Her Honour also found ([151] and [158]) that FanFirm’s use on its website was use in relation to the class 35 services of on-line retail services of sports related clothing and merchandise, order fulfilment services and product merchandising.

In reliance on the CHIFLEY Hotel case, the respondent contended (at [152]) that FanFirm’s sales from its website were neither use in respect of clothing nor retail sales as they were merely an adjunct to FanFirm’s core business of providing tour and event services.

Rofe J rejected this characterisation. At [153], her Honour pointed out that merchandise could be purchased from FanFirm’s website even if no tour or event booking was made. Thus, there was no necessary relationship between tours and events on one hand and, on the other, the merchandise. Her Honour also noted that Markovic J in the Katy Perry case had found that the sale of merchandise at and in conjunction with Katy Perry’s concerts was use in relation to the goods and retail services. Rofe J explained at [155]:

Markovic J’s findings on this issue were not challenged on appeal and I respectfully agree with her Honour. Using a trade mark on goods does not cease to be “use as a trade mark … in relation to goods” for the purposes of s 120(1) of the Act simply because the sale of the relevant goods is “closely tied” or an adjunct to some service offered by the applicant which is their primary or core business. In any event, I do not consider that the sale of merchandise on the applicant’s website to be merely an adjunct to its main business of providing tour and event services.

and at [158]:

…. The applicant’s website provided an online retail service from at least 2004 because customers could visit the website, select a product and then purchase that product. It therefore also provided order fulfillment services and product merchandising within the meaning of the respondent’s class 35 registration. ….

As FanFirm’s use was before the respondent’s earliest use in Australia in 2010 or 2011 (at [144] – [145]), her Honour’s conclusions ultimately led to orders for the cancellation of the respondent’s registered trade marks in class 35.

This conclusion did not extend to the respondent’s class 42 services – setting up, managing and operating an online store for a third party – as her Honour at [159] found such services were not the same kind of thing as online retail services or the class 25 goods.

The respondent’s use infringed FanFirm’s class 25 registration

Next, Rofe J found that the respondent’s sales of clothing merchandise from its fanatics.com website to Australians infringed FanFirm’s registration in class 25.

Some of the goods sold were the respondent’s own products branded with its Fanatics and/or Fanatics Flag mark. The respondent, however, contested that the sales of third party merchandise (i.e., not branded FANATICS) from its website and some products where FANATICS appeared only on the swing tag (or similar) involved use as a trade mark in relation to goods.

The third party merchandise

FanFirm argued that the sale of NBA, NFL and other third-party clothing manufactured by the likes of Adidas and Nike from the respondent’s website constituted not just use of FANATICS in relation to online retail services in class 35 but also use in relation to the goods themselves.

An example is this webpage:

The respondent argued (at [215]) that this was only use of FANATICS in relation to online retail services just as use of REBEL on REBEL SPORTS stores was use in relation to retail services and not the goods themselves.

Rofe J held, however, that this use constituted use in relation to the clothing goods themselves, not just in relation to retail services. In doing so, her Honour relied on the decisions in Sports Warehouse, [Solarhut][sol], [Flexopack][flex], Edgetec and Bob Jane. At least some of these cases involved the sale from the infringer’s website of goods which were not manufactured by (or for) the infringer. Accordingly, her Honour concluded at [220]:

The respondent invites consumers to visit its website at www.fanatics.com. At that website, goods are available for purchase under the name FANATICS as part of the domain name, displayed in page headings and in references to products. I consider that this constitutes use of the FANATICS Marks as trade marks in relation to the goods for which the applicant’s FanFirm Marks are registered, including clothing, sportswear and headgear.

The swing tag use

From 2020, the respondent was offering for sale from sites such as “www.aflstore.com.au” and “www.rebelsport.com.au” shirts and other apparel for 11 AFL teams and also some of its own branded clothing. At least some of the AFL clothing did not bear FANATICS on the labelling or otherwise. The “only” use of FANATICS was on the swing tag:

In addition to the swing tag, the FAQ also stated:

15.1 “When you make a purchase, you are purchasing from rebel. The order is simply being sent from a Fanatics warehouse.”

15.2 “Products shipped by Fanatics will only be available online and will be shipped direct from a Fanatics distribution centre to customers. Rebel does not hold these products in Australia.”

15.3 “Click and Collect is not available for products shipped by Fanatics as they are not stocked in our stores. They will be available for delivery only”

Further, there were other goods on which the respondent’s trade mark had been embroidered or printed on the label (albeit a small proportion of the total).

As with the third party merchandise from the respondent’s own website, the respondent argued this use on the swing tag was only use in relation to retail services, not the goods themselves. Rofe J also rejected this argument in the context of this case.

Given that s 7 defines use as use upon or in physical or other relation to the goods, the fact that the use was on the swing tag and not on the goods themselves was hardly determinative.

At [198], Rofe J considered:

It would be apparent to any reasonable Australian consumer that the Hawthorn Football Club (or any sporting club) does not manufacture clothing, and that the Hawthorn indicia are part of the design of the shirt material. The use of the FANATICS Marks in these instances are being used as “a badge of origin” to distinguish the respondent’s relevant good from goods manufactured by other sports clothing manufacturers such as Nike or Adidas: E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41]–[42] (per French CJ, Gummow, Crennan and Bell JJ).

In any event, her Honour pointed at at [200]:

In this case, the FANATICS Marks on the FANATICS branded goods are being used as a badge of origin and thus the use constitutes trade mark use. The fact that other marks are present on the clothing, such as the logo of the relevant sporting team or league, does not matter. Dual branding is “nothing unusual” and does not have the effect that one of the marks is not being used as a trade mark: see Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (2021) 162 IPR 52 at [66] (per Jagot, Lee and Thawley JJ) and the cases there cited (these comments were not disturbed on appeal in Self Care). See also Anheuser at [189] and [191] (per Allsop J).

Thus, subject to the respondent’s numerous defences, FanFirm’s trade mark for clothing etc. in class 25 was infringed.

Some issues raised by the defences

The respondent raised a number of defences against a finding of infringement – in addition to its unsuccessful attempt to have FanFirm’s trade mark cancelled.

The respondent was exercising a right to use the trade mark given by registration

The respondent’s first line of defence was s 122(1)(e) – the exercise of a right to use a trade mark given to the user under the Act. That is, someone does not infringe another person’s registered trade mark if the “someone” has registered their own trade mark and is using it within the scope of that registration.

The issue here is that, as the respondent was not the owner of the trade mark for online retail services, its trade mark was not validly registered as a result of the operation of s 88(1)(a) and s 58.

On this issue, while her Honour considered it a “strange result” from a policy perspective, at [313] – [314] Rofe J followed Nicholas J’s ruling in Dunlop and held that cancellation was not retrospective but prospective only. That is, the respondent’s trade marks were not cancelled ab initio but only from the date of her Honour’s order.

While this protected the respondent from awards of damages (or an account) for its past conduct, (at [385]) this did not protect the respondent from an injunction against continued use of the infringing trade marks.

Honest concurrent user

As it had been using its trade marks in Australia since 2010 or 2011, the respondent also argued the Court should find the respondent was entitled to registration (s 122(1)(f) or (fa)) on the basis of honest concurrent user (ss 44(3)).

Ultimately, her Honour rejected this defence, finding that the respondent’s use did not qualify as honest concurrent user.

The problem for the respondent was at least three fold. First, the respondent adopted FANATICS as its corporate name and trade mark with knowledge of FanFirm and its trade mark. Indeed, it had sought to oppose registration of FanFirm’s mark. Rofe J accepted the respondent did not adopt the trade mark to take advantage of FanFirm’s reputation, however, it could not be described as “independent adoption”. Moreover, while two of the respondent’s senior executives involved in the decisions gave evidence, no-one from the respondent gave evidence of any honest belief that confusion would not result. At [331], her Honour concluded:

The adoption of the respondent’s new corporate name and mark occurred with knowledge of the applicant and its mark, and the goods for which registration of that mark was sought. Whilst I do not consider that the respondent adopted the FANATICS Marks in order to divert business or goodwill from the applicant, it cannot be described as “independent adoption”. Further, as I have said above, despite leading evidence from two senior employees of the respondent, the respondent led no evidence as to the existence of any honest belief that there would be no confusion as a result of the respondent adopting the same mark as the applicant’s existing marks. Thus, the two hallmarks of honesty are absent from the respondent’s adoption of the FANATICS Marks.

At [383] – [383], Rofe J relied on similar reasoning to reject the respondent’s contention that her Honour should exercise the discretion arising under s 89 not to remove the trade marks.

The injunction issue

In her Honour’s subsequent ruling on costs and non-pecuniary remedies, Rofe J stayed the operation of the order for cancellation of the registered trade marks pending the outcome of the appeal (for which Rofe J gave leave).

Rofe J also ordered an injunction restraining infringing use but refused to stay that order pending the determination of any appeal.

A number of factors led to her Honour refusing the stay.

These included, first, that her Honour was far from convinced that the respondent had the level of reputation in Australia it claimed given the apparently small scale of its sales here.

Secondly, the respondent’s claims of the disruption to its global business seemed overstated in light of the small scale of its Australian sales compared to the global business, its apparent disregard of the Australian market in deciding to adopt FANATICS and FanFirm’s evidence about the availability and utility of geo-blocking services so that the respondent’s sales to the rest of the world would be unaffected.

Further considerations included the dilution of FanFirm’s own goodwill and the difficulties in quantifying that.

Accordingly, Rofe J considered the balance of convenience lay in favour of not staying the injunction.

Bromwich J substantially upheld her Honour’s refusal to order a stay of the injunction but modified it slightly:

  1. to allow the respondent 28 days to implement geo-blocking of Australia; and
  2. to enable continued use in respect of “global customer care labels” in a particular form and to allow the respondent to deal with returns.

Bromwich J, like Rofe J, also referred to a number of other considerations.

Rofe J’s key finding was that FanFirm was the first user of FANATICS in Australia for goods such as clothing and online retail services for such products. Such use was not merely an adjunct to FanFirm’s tour organisation and supply business. As a result, the respondent’s trade marks for those goods and services will be cancelled and it has been enjoined against continued use in Australia. Just because you are clear to operate under your trade mark in one country does not mean you will be able to use it in another, different market.

FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764 (Rofe J)

FanFirm Pty Limited v Fanatics, LLC (No 2) [2024] FCA 826 (Rofe J)

Fanatics, LLC v FanFirm Pty Limited [2024] FCA 920 (Bromwich J)


  1. Class 35: Business marketing consulting services; customer service in the field of retail store services and on-line retail store services; on-line retail store services featuring sports related and sports team branded clothing and merchandise; order fulfillment services; product merchandising; retail store services featuring sports related and sports team branded clothing and merchandise  ?
  2. Class 42: Development of new technology for others in the field of retail store services for the purpose of creating and maintaining the look and feel of web sites for others, not in the field of web site hosting; computer services, namely, creating and maintaining the look and feel of web sites for others, not in the field of web site hosting services; computer services, namely designing and implementing the look and feel of web sites for others, not in the field of web site hosting services; computer services, namely, managing the look and feel of web sites for others, not in the field of web site hosting  ?
  3. Class 25: Clothing, footwear and headgear, shirts, scarves, ties, socks, sportswear  ?

Dying in the FANATICS ditch Read More »

The Agency Group v The North Agency: How to deal with Self Care v Allergan

Jackman J has dismissed The Agency Group’s claims of trade mark infringement and misleading or deceptive conduct / passing off against The North Agency. In doing so, his Honour directly confronted the problem arising from the High Court’s reasons in Self Care v Allergan.

Some facts

The Agency Group is a real estate agency that operates nationwide including, amongst other places, on the Northern Beaches of Sydney. It services the Northern Beaches from offices in Manly and Neutral Bay.

In the 12 months or so up to 31 March 2023, between them the two offices sold more than 190 properties, with some 40 others up for sale. They had also leased over 300 properties, with another 17 still up for rent. The Agency Group had spent over $4.4 million on advertising its Northern Beaches properties on <realestate.com.au> and <domain.com.au>. In the 12 months to 31 March 2023, the properties serviced by the Neutral Bay and Manly offices had attracted 1,868,000 property views on <realestate.com.au> alone.[1]

And, from February 2017 to March 2023, the two offices had generated almost $40 million in revenue.

H.A.S. Real Estate Agency began trading in the Northern Beaches area in March 2023 from offices in Dee Why, also in the Northern Beaches region. From the start, the business operated as “The North Agency”. Its two directors had been working in real estate in the area since 2007 and 2008.

Screenshots of the businesses’ respective websites before his Honour showed:

[2]

The Agency Group also had two registered trade marks for real estate services in class 36:

A figurative trade mark consisting of the words The Agency in which the letter "A" is presented as an inverted "v" over a horizontal bar

(TM 1836914) and a second registered trade mark for the figurative letter “A”.

The respondent of course also used “The North Agency” in plain text to refer to itself and in the URL for its website and email addresses etc.

The Self Care v Allergan “problem”

There have been a number of first instance and Full Court decisions since Self Care v Allergan but Jackman J’s decision is the first to confront what the High Court said and what it actually did directly.

At [55], Jackman J distilled helpfully 12 principles from Self Care v Allergan. Then at [56] to [58] his Honour considered a further principle: noting that the High Court at [29] and [33] stated as a matter of principle that trade mark infringement is concerned with a comparison of the two trade marks and is not looking at the totality of the respondent’s conduct as would be the case in passing off or for misleading or deceptive conduct. His Honour observed that:

(1) At [29] footnotes 67 and 68, the High Court expressly endorsed the Full Federal Court’s proposition in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 at 245, “that it is irrelevant that the respondent may, by means other than its use of the mark, make it clear that there is no connection between its business and that of the applicant”;

(2) “On the same page, their Honours said that the comparison is between marks, not uses of marks, and hence it is no answer that the respondent’s use of the mark is in all the circumstances not deceptive, if the mark itself is deceptively similar”;

(3) Also, the High Court approved Gummow J’s statement in the Moo-Moove case that disclaimers are to be disregarded as are price differences, colour and target audiences;[3] and

(4) At [33], the High Court stated “the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit” and cited numerous authorities in footnote 81 endorsing that proposition.

At [59], however, Jackman J recognised that, in explaining why PROTOX was not deceptively similar to BOTOX the High Court in fact took into account additional “matter” extraneous to the two trade marks such as a disclaimer on the PROTOX website that “PROTOX has no association with any anti-wrinkle injection brand”.

His Honour, with respect, rightly pointed out it is impossible to reconcile the principles declared by the High Court with what the High Court actually did. In those circumstances, Jackman J proposed to apply the principles declared by the High Court and disregard what the High Court actually did at [70] and [71] of Self Care v Allergan. Jackman J explained at [60]:

With the greatest respect, those passages are impossible to reconcile with the Court’s approval of the authorities referred to above which state that such additional material used by the respondent is irrelevant to the issue of trade mark infringement. The internal contradiction places a trial judge in an awkward dilemma, which I propose to resolve by simply disregarding the passages quoted above from [70] and [71] as unfortunate errors. On the High Court’s own reasoning, it would be a fundamental error of longstanding legal principle if I were to adopt their Honours’ mode of analysis in [70] and [71] by taking into account on the question of deceptive similarity, for example, that the use by H.A.S. Real Estate of “THE NORTH AGENCY” was typically accompanied by the distinctive N Logo, thereby implicitly disavowing any association with the applicants or their services.

It can be hoped that other judges will also follow this brave course.

It has to be acknowledged, however, that the the High Court went on in [33] after footnote 81 to say:

…. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer’s actual use of the mark[82], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[83]. Consideration of the context of those surrounding circumstances does not “open the door” for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[84].

But, as the cases cited by the High Court show, those decisions were not engaged in the whole circumstances type of inquiry which characterises claims under the ACL and in passing off.

Why The North Agency did not infringe

The issue here is whether the respondent’s use of The North Agency was deceptively similar to The Agency Group’s registered trade mark.

Even on the “traditional” trade mark infringement analysis, Jackman J found that The North Agency was not deceptively similar to The Agency Group’s trade mark.

First, at [69] – [71], the inclusion of “North” in the respondent’s trade mark was a signficant differentiating factor. It was larger and more prominent in advertising material such as the website. But even in plain use such as the website URL and email addresses where “The North” was not given any particular prominence, it remained a striking aspect. As his Honour explained at [76] in rejecting the brand extension or franchising risk, “the Agency” and “the North Agency emphasised different businesses.

Secondly, at [62], Jackman J noted that TM No. 1836914 was not a word mark but a composite mark consisting of words and device elements. This was important as it meant that a trade mark consisting of a number of elements had to be considered as a whole. Moreover, where a trade mark consisted of words and other device elements, care needed to be taken before characterising the words as an essential feature lest what was distinctive because it was a composite mark be converted into “something quite different”.

Thirdly, that was important in this case as (at [63] and [72] – [74], [76]) the word “Agency” was commonly used by real estate agents to describe their businesses. This evidence of trade usage was admissible. It meant that the word itself had less distinctive force. Instead, it was the combination as a whole which operated as the badge of origin.

It is respectfully submitted his Honour’s approach to the significance of the commonality of the word “agency” in both the registered trade mark and the alleged infringement is the sort of contextual significance that the traditional case law has taken into account; assisting the Court to determine what the essential, memorable features of the trade mark are for the purposes of imperfect recollection.

It was the public’s familiarity with “Chifley” as a surname (including a prime minister) and as geographical places that meant The Chifley and Chifley on the Wharf were not deceptively similar to The Chifley Tower in Mid Sydney v Australian Tourism Co. For similar reasons, the High Court had ruled in the Mond Staffordshire case that Mulsol did not infringe Mondsol, way back in 1929 – “sol” and “ol” being commonly used in germicidal and medicinal preparations.

So, if this is the way the Courts will deal with the dilemma posed by Self Care v Allergan, we can probably breathe a sigh of relief (except when acting for a respondent!).

Jackman J went on to reject the claim of infringement of TM by the “N” logo. His Honour considered the slant of the “N” logo coupled with the degree symbol reinforced the idea of a compass pointing north in contrast to a stylised representation of a house.

For completeness, Jackman J did acknowledge at [60] that there would be even less prospects for deceptive similarity if one were to take into account the extraneous considerations referenced by the High Court in Self Care v Allergan and, consequently, the claims under the ACL and for passing off failed too.

The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482


  1. The Agency Group’s figures nationally were $2, 788.5 million in sales revenue and, in the 12 months ending on 31 March 2023, there had been 8,748,102 views of its properties on <realestate.com.au> from NSW and a further 15,246,484 page views from the rest of Australia.  ?
  2. The Agency Group’s Neutral Bay office had a profile page on Domain: The Agency North but the applicant was not allowed to run a case of misleading or deceptive conduct based on that as a matter of pleadings (@ [104]) and, in any event, (@ [105]) there was not sufficient evidence to support a claim for reputation in the absence of evidence of how many page views there had been of the profile page or other use of the phrase.  ?
  3. See Self Care v Allergan at [33] footnotes 81 and 84.  ?

The Agency Group v The North Agency: How to deal with Self Care v Allergan Read More »

Self Care v Allergan – Part 2

Previously on IPwars.com we looked at why the High Court held PROTOX did not infringe BOTOX. The High Court also ruled that “instant BOTOX® alternative” did not infringe and overturned the Full Court’s ruling that the phrase was misleading or deceptive contrary to the ACL.

A recap

You will recall that Allergan has registered BOTOX as a trade mark for “[p]harmaceutical preparations for the treatment of … wrinkles” in class 5. The product Allergan makes and sells under the BOTOX trade mark is an injectable pharmaceutical which must be administered by a health professional. One treatment of BOTOX preparation can last for up to several months.

Because of its “overwhelming” and “ubiquitous” reputation in BOTOX, however, Allergan has also achieved registration of BOTOX in class 3 for anti-ageing and anti-wrinkle creams.

The second FREEZEFRAME product Self Care sells is INHIBOX. The INHIBOX product is a cream which the user can apply themselves at home and which lasts for up to a few hours to reduce the visible signs of ageing.

The INHIBOX product was sold in two forms of packaging:

Old packaging – Packaging A

Image of INHIBOX packaging showing FREEZEFRAME and INHIBOX trade marks, instant Botox® alternative and explanatory text on back

New packaging – Packaging B:

Image of INHIBOX packaging showing FREEZEFRAME and INHIBOX trade marks, instant Botox® alternative and explanatory text on back

Both forms of packaging included the phrase “instant BOTOX® alternative”. You will also notice that the back of both forms of packaging includes a longer declaration: “The original instant and long term Botox® alternative”.

Why “instant Botox® alternative” did not infringe

Self Care’s INHIBOX product being an anti-wrinkle cream falling squarely within the scope of Allergan’s BOTOX registration in class 3, the High Court had identified at [22] that the trade mark owner had to prove two things to establish trade mark infringement under s 120(1):

  1. that the impugned sign was being used as a trade mark; and
  2. that the impugned sign was substantially identical or deceptively similar to the registered trade mark.

At [23], a sign is being used as a trade mark when it is being used as “a badge of origin” to indicate a connection between the goods and the user of the mark.[1]

And whether that is the case is to be determined objectively in the context of the use without regard to the subjective intentions of the user. To repeat the High Court’s explanation at [24]:

Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user[50]. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade[51], the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote[52]. A well known example where the use was not “as a trade mark” was in Irving’s Yeast-Vite Ltd v Horsenail[53], where the phrase “Yeast tablets a substitute for ‘Yeast-Vite’” was held to be merely descriptive and not a use of “Yeast-Vite” as a trade mark. Therefore, it did not contravene the YEAST-VITE mark. (citation omitted)

Applying that test, the High Court held that Self Care was not using “instant Botox® alternative” as a trade mark. There were a number of reasons contributing to this conclusion.

First, Self Care did not present the phrase in a consistent style.

Secondly, the phrase was presented alongside two obvious trade marks – FREEZEFRAME and INHIBOX – so that the phrase was less likely to be taken as a trade mark.

And thirdly, while FREEZEFRAME and INHIBOX were presented as trade marks, the phrase “instant Botox® alternative” was a descriptive phrase which in context was used only with that descriptive purpose and nature.

As to the first consideration, the High Court explained at [55]:

The presentation of “instant Botox® alternative” was inconsistent in size, font and presentation on each of Packaging A, Packaging B and the website, indicating “instant Botox® alternative” was not being used as a badge of origin to distinguish Self Care’s goods from those dealt with by another trader[126]. On Packaging A the phrase was presented vertically, marked out by four vertical lines separating each of the words. On Packaging B and on the website the phrase was presented horizontally without any lines separating the words. The arrangement of the words differed. On the packaging, each word in the phrase occupied its own line. On two website pages the phrase occupied a single line. On two other website pages the words “Instant” and “Botox®” shared a line and the word “ALTERNATIVE” appeared on the next line. The font was inconsistent. The packaging used a different font to the website pages, and one website page used a different font to the other website pages. The capitalisation was inconsistent. Three different forms were adopted: “instant Botox® alternative” on the packaging, “INSTANT BOTOX® ALTERNATIVE” on one website page and “Instant Botox® ALTERNATIVE” on three other website pages.

Then, the High Court explained at [56] that the likelihood “instant Botox® alternative” would be taken as a trade mark was diminished because its use was not as dominant as the use of FREEZEFRAME and INHIBOX:

…. This diminishes the likelihood that the phrase “instant Botox® alternative” could be objectively understood to indicate origin in itself[127]. This is because its use was not as dominant as the use of the other signs, FREEZEFRAME and INHIBOX. This is most evident on the packaging. On both Packaging A and Packaging B, “instant Botox® alternative” appeared only once, on the front of the box, in much smaller font than FREEZEFRAME and INHIBOX. FREEZEFRAME and INHIBOX were also featured prominently on the left and right sides of each box. Further …. (citations omitted)

At [57], the High Court recognised that a sign can be both descriptive and used as a trade mark (see also [25]) but the phrase “instant Botox® alternative” was not in this case:

The FREEZEFRAME and INHIBOX script style and presentation is also significant. FREEZEFRAME and INHIBOX were both distinctive and stylised signs that were apt to be perceived as brands. In contrast, “instant Botox® alternative” was a descriptive phrase that had an ordinary meaning and included within it the trade mark BOTOX (identified as such with a ® symbol). It was descriptive of the product to which it was attached as an alternative product. While a sign can both be descriptive and serve as a badge of origin, the better view is that the use of the phrase, consistent with its ordinary meaning, had only a descriptive purpose and nature[128]. As the primary judge found, the phrase amounted to “ad?speak”. (citation omitted)

As the phrase was not used as a trade mark, there was no need to consider whether it was deceptively similar to Allergan’s trade mark.

Some aspects of the High Court’s reasons

In reaching its conclusions, the High Court drew on three different uses – the two forms of packaging and the website collectively. At [54], the High Court said it was permissible “to address them together, identifying relevant similarities and differences in use.”

In this case at least, there appears to have been some overlap between Self Care’s use of Packaging A and Packaging B – the latter being introduced on the market in September 2016, the former still being on the market until February 2017. The website of course was contemporaneous with both.

Nonetheless, it might be thought a bit odd that generally the old form of packaging informed the understanding of the new form of packaging. And, if the question is whether or not the particular use on the packaging is use as a trade mark, one might wonder about the relevance of use elsewhere. It must also be acknowledged that the form of use was one only of the factors contributing to the conclusion.

The High Court’s approach therefore reinforces INTA’s longstanding message that the trade mark owner should ensure it presents its trade mark consistently. Giving this consideration too much weight in isolation, however, risks creating some sort of pirate’s charter.

Ultimately, it might be thought the result is not too surprising. Afterall, phrases like this have not been considered to be trade mark use since the House of Lords’ decision in 1934 that “Yeast tablets a substitute for Yeast-Vite” did not infringe the registered trade mark YEAST-VITE.

In explaining why the Full Court wrongly found use as a trade mark, however, the High Court advanced a very different explanation why “instant Botox® alternative” was not use as a trade mark. The Full Court had impermissibly conflated the tests of use as a trade mark and deceptive similarity. At [60], the High Court then said:

Conflation of those elements is not uncommon. As Shanahan’s Australian Law of Trade Marks & Passing Off observes, “[t]here is a common misconception that an infringer uses a sign as a trade mark if the use indicates or is likely to indicate a connection between the infringer’s goods and the owner of the registered mark”[129]. However, “factors relevant to whether there is a misrepresentation or likelihood of deception have no role to play in deciding the question of what constitutes ‘use as a trade mark’”[130]. As was stated in Coca-Cola Company v All-Fect Distributors Ltd, the inquiry is not “whether the sign indicates a connection between the alleged infringer’s goods and those of the registered owner”[131]. The correct approach is to ask whether the sign used indicates origin of goods in the user of the sign[132]. (emphasis supplied) (citations omitted)

This may be contrasted with the reason why the House of Lords held that there had been no use as a trade mark. Lord Tomlin explained:[2]

This is clearly a use of the word “Yeast-Vite” on the respondent’s preparation to indicate the appellant’s preparation and to distinguish the respondent’s preparation from it. It is not a use of the word as a trade mark, that is, to indicate the origin of the goods in the respondent by virtue of manufacture, selection, certification, dealing with or offering for sale.

The High Court’s endorsement of Coca-Cola v Allfect on this point cannot be the result of some change in the meaning or concept of “use as a trade mark”. In the Yeast-Vite case, Lord Tomlin said:[3]

The phrase “the exclusive right to the use of such trade mark” carries in my opinion the implication of use of the mark for the purpose of indicating in relation to the goods upon or in connection with which the use takes place, the origin of such goods in the user of the mark by virtue of the matters indicated in the definition of “trade mark” contained in s 3.

That is the same explanation of the concept as adopted by the High Court in Gallo at [42] and in Self Care at [23] and [53].

It also cannot really be explained by the introduction into the Trade Marks Act of s 122A and s 123. Lord Tomlin roundly rejected a similar argument by the trade mark owner in Yeast-Vite:

nor do I think it is legitimate to treat special defences available under other sections of the latter Act as constituting a measure of the right conferred by s 39.

It appears therefore that the High Court has resolved the point left open in the Gallo case at [53] – whether a retailer uses the trade mark as a trade mark when using it in relation to the genuine goods of the trade mark owner.[4]

Whether that means our law now needs amendment to provide a defence for parody and satire, or other types of nominative fair use, remains to be seen.

The ACL case

The Full Court had found that the phrase “instant Botox® alternative” conveyed the representations that use of INHIBOX would result in a similar reduction in the appearance of wrinkles to using Botox and, secondly, that the effects would last for a period equivalent to that resulting from use of Botox.

The Full Court found that Self Care had reasonable grounds for the former representation, but not the latter – the long term efficacy representation. Therefore, Self Care’s use of the phrase was misleading or deceptive in contravention of the ACL.

On appeal, Self Care did not contend INHIBOX had a similar long term efficacy to Botox. Rather, it denied that the phrase “instant Botox® alternative” conveyed the long term efficacy representation at all.

Recap of the ACL principles

At [81], the High Court confirmed that determining whether there had been a breach of s 18 required a four step analysis:

  1. Identifying the conduct said to contravene with precision;
  2. Confirming that the conduct was “in trade or commerce”;
  3. Considering what meaning the conduct conveyed; and
  4. Determining whether the conduct in light of that meaning was misleading or deceptive or likely to mislead or deceive.

At [82], the High Court also confirmed that the third and fourth steps required characterisation as an objective matter. This required viewing the conduct as a whole and its notional effects, judged by the conduct in context, on the state of mind of the relevant person or class of persons.

The context includes the immediate context – all the words in the communication and the way they are conveyed, not just the word or phrase in isolation. The context also includes the broader context – all the relevant surrounding facts and circumstances.

Next, in cases of this kind the High Court re-affirmed at [83] that it is necessary to identify an ordinary and reasonable representative member of the relevant class “to objectively attribute characteristics and knowledge to that hypothetical person (or persons), and to consider the effect or likely effect of the conduct on their state of mind.” This required allowing for a range of reasonable reactions to the conduct by excluding from consideration reactions of the ignorant or very knowledgeable, those resulting from habitual caution or exceptional carelessness and the extreme or fanciful.

The misrepresentation was not made

The High Court analysed each of the three types use – Packaging A, Packaging B and the website – separately. But the reasons why “instant Botox® alternative” was not misleading or deceptive are essentially the same.

In the case of Packaging A, the High Court noted the use of the trade marks FREEZEFRAME and INHIBOX and “instant Botox® alternative” on the front of the packaging. On the side of the packaging were printed the words “Clinically proven to erase wrinkle appearance in 5 minutes”. And on the back, there was the vertical script “The world’s first Instant and Long Term Botox® Alternative” in larger, blue lettering than the panel of explanatory text. Under the heading “Freeze wrinkles instantly”, the first paragraph of that explanatory text read:

Why wait for weeks to look dramatically younger when you can wipe away the years this very minute! freezeframe’s exclusive INHIBOX complex is clinically proven to wipe away visible expression wrinkles around the eyes and on the forehead within 5 minutes, so you get an immediate wrinkle freeze and eye lift that lasts for hours. (emphasis supplied)

The remainder of the text included three more references to the effects of INHIBOX being “long term”. This included a heading “And long term!” under which the packaging stated “”freezeframe technology is scientifically proven to reduce the appearance of wrinkles by up to 63.23% in just 28 days“ and ”freezeframe’s Dual Effect technology gives you proven instant wrinkle reduction, plus the world’s best long term wrinkle relaxing”.

Under the heading “Two of the world’s most potent wrinkle erasers* in one formula”– the packaging stated “[i]magine… the power of an instant wrinkle freeze, combined with the long term benefits of the most potent, cumulative facial relaxing technology on the planet. All in one simple formula.”

Despite all these references to “long term”, the High Court held at [102] that both the immediate and broader contexts meant the phrase “instant Botox® alternative” would not convey to the reasonable consumer in the target market that either a single treatment or long term use of INHIBIX would last for an equivalent period to a BOTOX injection.

In the immediate context – the packaging, the words “long term” must be understood in the context of “lasts for hours” and that the treatment was “instant” and working “within 5 minutes”. As a result, “long term” was mere puffery. At [99], the High Court explained:

…. The fact that the effect of Inhibox was said to be instant makes it less likely that the reasonable consumer would believe that those effects would last for as long as those of Botox. Put differently, the reasonable consumer would likely believe it too good to be true that the effects of Inhibox are both instant and as long lasting as those of Botox.

The broader context included that INHIBOX was a cream applied by the user while BOTOX is a pharmaceutical injection requiring a visit to a healthcare professional. INHIBOX was much cheaper. The two products were not sold in the same locations. In these circumstances, the High Court concluded at [101]:

Taking into account that broader context, it is difficult to conceive why the reasonable consumer in the target market would think that a topically self-applied cream obtained from the pharmacy at a relatively low cost and worn in the course of the usual activities of life (including bathing and exercise) would have the same period of efficacy after treatment as an injectable anti-wrinkle treatment that is only available to be administered by healthcare professionals at a higher cost. ….

Moreover, the reasonable consumer would not assume that the use of BOTOX in the phrase indicated a common trade connection between INHIBOX and BOTOX.

Similar reasoning led to the same conclusion in respect of Packaging A and the website even though the latter, in particular, seems to have used “long term” rather more prominently.

The errors made by the Full Court

The High Court’s reasons why the phrase “instant Botox® alternative” was not misleading or deceptive suggest a rather robust approach to assessing the impact of the conduct on the target market. In addition, its reasons provide further guidance about how the conduct should be analysed.

First, at [88] – [89], the High Court agreed the trial judge had made an appealable error by considering only the phrase and the broader context, not taking into account the immediate context as well. So, it is necessary to consider all three aspects.

Secondly, the Full Court had also erred. There are a number of strands to this. One key error was misidentification of the ordinary and reasonable consumer. A second was the false premise that consumers would think the phrase “instant Botox® alternative” conveyed an association between INHIBOX and the trade source of BOTOX.

On the second point at [89], the High Court pointed out that the trial judge had found “instant Botox® alternative” would not convey an association between INHIBOX and BOTOX and there had been no appeal from that finding.

On the first point, the Full Court had found that some members of the relevant class would know that the effects of BOTOX lasted four months. The High Court criticised the factual basis for the conclusions about how long BOTOX lasted and whether consumers knew that.

More generally, however, the High Court said the Full Court had been wrong to assess the effects of the phrase on the target market on the basis that some reasonable consumers would have been misled. At [90], the High Court explained:

…. Further, the Full Court’s statement that the target market “would have included” reasonable consumers who had that knowledge demonstrated a misunderstanding of the relevant test. The ordinary and reasonable consumer is a hypothetical construct to whom the court attributes characteristics and knowledge in order to characterise the impugned conduct. The class in fact will always have reasonable consumers with varying levels of knowledge; the question was whether the knowledge should be attributed to the hypothetical reasonable consumer in this case.

Then, as already discussed above, the High Court proceeded to analyse how the phrase “instant Botox® alternative” would be perceived and understood by the ordinary reasonable consumer in all the circumstances.

Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8


  1. Picking up the definition of What is a trade mark in s 17 as explained in Campomar and E & J Gallo at [42]: “the requirement that a trade mark ”distinguish“ goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of ”goods to which the mark is applied“[16]. Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark[17]. There is nothing in the relevant Explanatory Memorandum[18] to suggest that s 17 was to effect any change in the orthodox understanding of the function or essential characteristics of a trade mark.” (citations omitted)  ?
  2. Irving’s Yeast-Vite Ltd v F A Horsenail (trading as The Herbal Dispensary) (1934) 51 RPC 110 at 115.36; 1B IPR 427 at 431.37.  ?
  3. 51 RPC 115.36; 1B IPR 432.  ?
  4. See also Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd [2016] FCAFC 91 at [49]ff and Warwick A Rothnie, ‘Unparalleled importing and trademarks in Australia,’ (2020) 21(3) Business Law International 229.  ?

Self Care v Allergan – Part 2 Read More »

Thirsty beer drinkers want …

Stewart J has dismissed Brick Lane’s ACL[1] and passing off complaints against the get-up of Torquay Beverage Co’s Better Beer.

Some facts

On 21 July 2021, Brick Lane issued a press release announcing the launch of its new Sidewinder Hazy Pale ale, a no to low alcohol beer. The range had been in development, behind the scenes, since September or November 2020. Sales of the product to the public began around 2 August 2021 including in outlets such as Dan Murphy’s.

Brick Lane’s Sidewinder Hazy Pale

The domain name had been registered and and Instagram account created on 9 July 2021. From then, the Instagram account, at least, featured an image of the Sidewinder product. Before 21 July 2021, however, there were only 9 followers (and they were likely from Brick Lane or otherwise associated with its development).

On 26 July 2021, Mighty Craft[2] announced to the ASX that it had partnered with Torquay Beverage Co and The Inspired Unemployed to form Better Beer Co and the launch of the new zero carb beer Better Beer. The announcement was picked up and widely reported in industry publications; one of which, Beer & Brewer had a “reach” of 13,000 people and another, Drinks Trade, some 27,000 people. It was not until late October 2021, however, that product actually made it on to retail shelves.

Better Beer’s beer can

There was no suggestion that the respondents had some how copied Brick Lane’s get-up.

On 3 December 2021, Brick Lane launched the second product in its Sidewinder range – an XPA Deluxe.

In April 2021, Better Beer ginger ale was launched.

The claim

As is conventional, Brick Lane argued the get-up of the respondents’ product was liable to misrepresent to the public that the product was Sidewinder or manufactured by or in some way endorsed, approved or sponsored by the manufacturer of Sidewinder.

The respective get-ups alleged:

xBrick LaneyRespondents
(1)an off-white 355 ml can(1)an off-white 355 ml can (save for the bottled product)
(2)an off-white cardboard cluster and case (where sold by cluster or case)(2)off-white cardboard cluster and case (where sold by cluster or case)
(3)a curving flared striped design (on the can, cluster and case) in blue and shades of yellow and orange with the dominant flared part of the stripes being vertically aligned(3)a curving non-flared striped design (on the can, bottle, cluster and case) in blue and shades of orange and yellow with the stripes oriented horizontally; and
(4)the use of horizontal black lettering for the Sidewinder name and horizontal off-white lettering against a black background for the name of the particular product on the can and case (the lettering, or background to the lettering, being silver on the cluster packaging); and(4)the use of dark blue lettering for the product name, the lettering being rotated vertically; and
(5)the use of a sans serif typeface in upper case for the “Sidewinder” lettering.(5)the use of a serif typeface in title case for the “Better Beer” lettering.

What went wrong

There were two main problems.

First, when the respondents started their conduct – the launch of their product a mere 5 days after the launch of the Sidewinder product, Sidewinder itself did not have any appreciable reputation with the public. At [97], Stewart J explained:

The first reason why Brick Lane’s claim in respect of the Sidewinder Hazy Pale product must fail is that at the relevant time, being 26 July 2021, there was no appreciable knowledge amongst members of the relevant class of the Sidewinder get-up. That is to say, the hypothetical member of the class of consumers purchasing beer is not likely to have any familiarity with the Sidewinder get-up with the result that on seeing the Better Beer get-up they would not be likely to confuse it with the Sidewinder get-up. As it was explained by Burley J in Homart FCA at [125], “it takes a strong case” to establish a reputation that the get-up relied on is associated by consumers with the relevant product. Put differently, even assuming a strong similarity in the respective get-ups, the hypothetical consumer is not likely to be misled or deceived into thinking that the two products are associated if they do not readily associate the applicant’s product’s get-up with the applicant or its product.

The position was different with the Better Beer ginger beer, launched later in April 2022. By then, however, both the Sidewinder and original Better Beer products had been widely promoted and distributed throughout the market so that the public must be taken to have learned to distinguish between them.

The second main reason Brick Lane failed was the strikingly different names prominently plastered over the products and their packaging. At [100], Stewart J explained:

Turning now to the differences and similarities between the relevant products’ get-up, the first observation is that each product bears a distinctive brand name – Sidewinder and Better Beer. Not surprisingly, Mr Hall’s evidence was that the Sidewinder brand name is distinctive, unique and powerful. There is no reason to disagree with that assessment notwithstanding that not everyone encountering the name may associate it with 70s jet boats – they may think of air-to-air missiles or snakes or something else equally distinctive and memorable. Equally, Better Beer is a distinctive brand name. Brick Lane submitted that because it is descriptive it is weak, but I do not accept that. It is alliterative and catchy. Moreover, Sidewinder and Better Beer are rendered in quite different styles of typeface – sans serif and serif respectively. They look and feel very different. They do not have visual or phonetic similarities such as were material to the reasoning in Homart FCA at 195(b).

As in Parkdale v Puxu, this difference was compelling in distinguishing the products.

His Honour accepted that there were distinct similarities between the relevant get-ups and did not put much store in the different orientation of the coloured stripes or banding – vertical vs horizontal.

On the other hand, Stewart J did not think the size of the cans – 355ml instead of 375ml – had any significant role to play. Of the 894 different beers on offer at Dan Murphy’s, at least 50 used the 355ml can format so it could not be described as unusual.

Overall, Stewart J concluded at [113]:

Taking all of the above matters into consideration, I am not satisfied that the hypothetical reasonable consumer of beer would at the relevant date have had any particular familiarity with Brick Lane’s Sidewinder get-up, but even if they did, they would not have been likely to be misled by the similarity of the respondents’ Better Beer get-up to the Sidewinder get-up into thinking that the products were in some way associated. As explained, that arises in particular from the distinctive names used for the different products as well as the differences between the get-ups and the features of the relevant market.

A couple of noteworthy points

As his Honour noted, the question whether there has been a contravention of the ACL in these types of cases is determined when the respondent started the relevant conduct.

Brick Lane argued that the relevant date was when Better Beer was actually on the shelves available for retail purchase – that is, late in October 2021 – by which time Sidewinder was well established in the market.

Stewart J rejected that argument at [42] – [46] finding that the relevant date was when the respondents’ launched (i.e., announced the launch of) their product. As his Honour pointed out, the promotion of a product could give rise to misleading associations regardless of whether the product was actually available for purchase. In the cases which focused on the date sales started, there was no suggestion that there had been advertising or promotion beforehand. On the other hand, in In-n-Out Burgers, the contravening conduct started (at [181] and [193]) when the respondent launched its Facebook page, not later when it opened its store.[3] Correspondingly, the date Cadbury Schweppes started marketing its product in the Pub Squash case[4] was accepted by the Privy Council as the relevant date in passing off.

Secondly, Stewart J sought to explain the role of reputation in an ACL case. Where conduct is directed to a class rather than specific individuals, case law has now established it is not necessary to establish that a substantial or not insubstantial number of that class are likely to be misled or deceived. It is only necessary to show that the ordinary or reasonable member of the class is likely to be mislead or deceived.

Stewart J considered that in this type of case it was nonetheless necessary to show some association in the mind of the public between the get-up and the applicant. After quoting the Full Court in Cadbury Schweppes v Darrell Lea at [99], his Honour explained at [40]:

… although it might be said that a particular reputation is not necessary, it is nevertheless necessary that there is some association in the mind of the relevant sector of the public between the applicant’s product and its get-up such that confusion might arise from the use of the same or a similar get-up in relation to the respondent’s product. Without the pre-existence of such an association, it could not be said that the use by the respondent of the same or a similar get-up suggests a misleading or deceptive association. The inquiry does not proceed on the assumption that the hypothetical consumer member of the relevant class is familiar with the applicant’s product; that is required to be established.

In this case, the respondents had argued that its product was in a different market segment to Sidewinder – the low carb segment vs the low alcohol segment, but Stewart J found the relevant public was the beer market generally. There was no evidence that the different “segments” operated as distinct (sub-)markets. For example, there was no evidence that beer products were arranged on retail shelves in any fashion by market segments.

Brick Lane sought to rely on a Trade Mark examiner’s rejection of Torquay’s trade mark application in the face of Brick Lane’s prior application. Stewart J pointed out at [103] that the competing applications did not feature their respective brand names. His Honour also doubted the examiner’s opinion was admissible evidence in a Court in light of Evidence Act s 76.

Finally, for those of you that recall Lord McNaghten’s famous aphorism “thirsty folk want beer, not explanations”, this case was distinguishable. In Lord Mcnaghten’s case, there had been one brewery in the town of Stone making and selling its Stone Ales for hundreds of years when the competitor opened up as Stone Brewery selling Stone Ales. When Sidewinder and Better Beer launched into the market, however, the consumer was confronted with a plethora of brands and products.

Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd [2023] FCA 66


  1. Australian Consumer Law s 18 and s 29(1)(g) & (h).  ?
  2. A “craft beer accelerator” and the third respondent. The Inspired Unemployed and Torquay Beverage Co held, respectively, 40% and 60% of the shares in the second respondent, Better Beer Co Pty Ltd.  ?
  3. Affirmed on appeal (without argument).  ?
  4. Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 2 NSWLR 851 at 861G.  ?

Thirsty beer drinkers want … Read More »

Fearless Girl – the sequel

The Fearless Girl replica statue is currently on display in Federation Square without any disclaimer (and has been for some time). In the wash-up from his Honour’s earlier reasons dismissing State Street Global’s claims, Beach J has now ordered that it can continue to be displayed either without any plaque or alternatively, with a plaque which states:

This statue is a limited edition reproduction of the original “Fearless Girl” statue in New York that was sculptured by the artist Kristen Visbal. The original statue was commissioned and is owned by State Street Global Advisors Trust Company. This reproduction is owned by Maurice Blackburn who purchased it from the artist. Maurice Blackburn has no association with State Street.

In his Honour’s principal reasons, Beach J had ruled that the display of the Fearless Girl replica and the way it had been used by Maurice Blackburn did not make any of the misrepresentations of association alleged by State Street Global. His Honour did also observe that the use of disclaimers for a period including about 3 months pursuant to an interlocutory injunction ordered by his Honour would have dispelled any misrepresentation of association (if it had been made).

State Street Global argued that a disclaimer should be required because of the uncertainty about what Maurice Blackburn might do with the replica statue in the future and might even sell it. Maurice Blackburn pointed out that, as his Honour had dismissed the claims of misrepresentation, there was no basis for any disclaimer. It also argued any disclaimer should await the determination of any appeal.

At [19], Beach J considered “SSGA seek too much, and MBL concede too little.”

At [21], Beach J considered there was sufficient material to warrant the exercise of his discretion. This appears to reflect his Honour’s summary of State Street Global’s contention:

SSGA say that absent appropriate disclaimers, there is nothing to stop MBL from engaging in the conduct that led to the present proceeding. SSGA say that having regard to uncertainty around MBL’s future intentions regarding the use or display of the replica, there remains a real risk that MBL’s use of the replica could give rise to future contraventions of the Australian Consumer Law. They note that I did accept that members of the Australian public may have known about the original Fearless Girl statue and the name “Fearless Girl”, and that such members may have associated the original statue and the name “Fearless Girl” with certain gender equality issues.

Pointing out that State Street Global’s proposed disclaimer was “an incomplete statement, fashioned to facilitate commercial advantage.  After all, MBL owns the replica, not SSGA.  And the artist was quite entitled to sell the replica to MBL for a use not inconsistent with the master agreement”, his Honour made an order in the form indicated.

One might think it unusual that there would be an injunction against future conduct which has not been found to occur. The “no plaque” option reflects this, but also means the name “Fearless Girl” cannot be used in a way which dilutes State Street Global’s association.

State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 3) [2021] FCA 568

Fearless Girl – the sequel Read More »

IP Australia and Indigenous Knowledge – consultations

In September 2020, IP Australia published its work plan to make provision for the better protection of Indigenous Knowledge in Australia’s Intellectual Property System.

Now it has released a consultation paper on four topics from that work plan it wishes to advance.

As summarised in the Introduction, the consultation paper raises four topics:

  1. Establishing an Indigenous Advisory Panel – providing a formalised Indigenous voice to IP Australia.
  2. Measures for trade mark or designs using Indigenous Knowledge – changes to processes to ensure IK owners benefit from, or have consented to, the use of their IK as the basis for rights.
  3. New requirements to declare the source of Indigenous Knowledge used in new innovations – make it easier to determine if IK has been used in a patent or plant breeder’s right, and encourage conversations about access and benefit sharing.
  4. Labelling to promote authentic Indigenous Products – exploring interest in labelling schemes that distinguish authentic Aboriginal or Torres Strait Islander goods.

Topic 2, relating to trade marks and designs, notes that IP Australia may currently reject an application if the application uses “IK” which is secret or sacred; the name of a group or a nation where there is no connection to that group or nation or uses a an Aboriginal or Torres Strait Islander word which should be available for other business to use.

Noting the limitations in that range, the consultation paper seeks input on a range of issues including:

(a) whether people would have concerns providing a statutory declaration etc. as evidence to support an objection to an application;

(b) whether IP Australia should ask applicants whether they have consent to use the “IK”;

(c) the introduction of a check to assess whether an application would cause cultural offence to a community or communities;

(d) whether IP Australia should assess whether the the application involves a use of “IK” in a way which falsely suggests a connection to an Indigenous person, community or nation.

Other questions relate to tools for better identifying applications which involve the use of “IK”.

Topic 3 raises questions about whether patent applicants should be required to declare the source of (1) genetic resources and/or (2) traditional knowledge included in their applications or on which an application is based.

Additional questions relate to how such requirements would be implemented, enforced and, if not complied with, penalised.

The Overview page states that consultations close on 24 May 2021.

IP Australia and Indigenous Knowledge – consultations Read More »

Repeal of s 51(3)

The bill repealing (amongst other things) s 51(3) of the Competition and Consumer Act did get passed and has received royal assent.

The repeal takes effect on 13 September 2019.

So, if you thought you were relying on s 51(3)’s protection, you have a bit less than 6 months to get your house in order.

Your licences and assignments of IP rights probably will not get you into trouble for the most part unless you have market power. But that is not exactly a hard and fast rule so you should discuss your arrangements with your lawyers ASAP.

As discussed in this post, one area of potentially significant concern is where the IP holder has its own retail outlets and also licenses other retail outlets – e.g. not uncommon for franchisors who have their own outlets and franchisees. There is a concern that may give rise to criminal cartel conduct.

If you want to know about the prohibitions on cartel conduct, Ian Wylie has published a paper “Cartel conduct or Permissible Joint Venture?

On Tuesday, the ACCC also announced it hopes to publish draft guidelines by “mid-2019” and finalise them before 13 September. Amongst other things, these proposed guidelines will outline:

how the ACCC proposes to investigate and enforce Part IV in relation to conduct involving intellectual property rights. They will also provide hypothetical examples to illustrate conduct that the ACCC considers is likely or unlikely to contravene Part IV.

Repeal of s 51(3) Read More »

Cartel conduct and IP licences and assignments

Will your assignments and licences of intellectual property, such as in a typical franchise agreement, expose your client to liability for cartel conduct or will you be ready to apply for an authorisation?

One of the bills pending before Parliament contains the long pursued (by the ACCC) repeal of s 51(3) of the Competition and Consumer Act 2010.

Section 51(3) exempts from most of the prohibitions in Pt IV of the Competition and Consumer Act terms and conditions in assignments and licences of intellectual property which most of us take for granted.

The rationale for repeal is that most transactions involving IP do not have anti-competitive effects or purposes and, if they do, they should not be exempt from the competition laws.

Rodney De Boos, a consultant at DCC with many years’ experience in licensing and commercialisation of IP, however, points out that this explanation was developed before the provisions banning cartel conduct were introduced into the Act. And, he contends, typical arrangements in IP agreements which allocate, for example, territories or customers will constitute cartel conduct and so need authorisation if the parties are not to be in breach of the cartel provisions.

As Rodney explains, a cartel provision are certain types of specified provisions between competitors.

Now, it may well be that an assignor and assignee, or a licensor and licensee, will not be competitors. There are many types of arrangements, however, where the Competition and Consumer Act will deem them to be competitors. An obvious example is the case of a franchisor who has retail outlets (either itself or through a related body corporate) as well as retail franchisees. Other arrangements involving IP could also be similarly problematical.

You can read Rodney’s concerns in more detail here.

The bill repealing s 51(3) has already passed the House of Representatives and is due to be debated by the Senate in the sittings coming up.

Cartel conduct and IP licences and assignments Read More »

Pokemon v Redbubble: the DMCA doesn’t apply Down Under

Pagone J has awarded Pokémon $1 in damages and 70% of its costs from Redbubble for misleading or deceptive conduct and copyright infringement. An interesting aspect of the case is that Redbubble’s implementation of a notice and take down scheme under the DMCA didn’t save it from liability, but did influence the ruling on remedies.[1]

Redbubble provides a print on demand online market place by which artists can upload their works to the Redbubble website and purchasers can then buy the artworks or designs applied to desired products such as t-shirts, cups and the like. A person uploading a work to the marketplace warrants that he or she has the relevant intellectual property rights and indemnified Redbubble against infringement claims.

The evidence showed Google searches in which paid (sponsored) and organic search results listing “Pokémon” products such as t-shirts bearing Pokemon’s Pikachu character[2] which could be ordered from the Redbubble site. The sponsored links were paid for and arranged by Redbubble through the Google Merchant Centre and the products themselves were offered for sale through Google Shopping. From the tenor of the judgment, I think that the designs were uploaded by third parties, but Redbubble arranged the “fulfillers” who printed and shipped the t-shirts (and other products) with the designs printed on them.

Pagone J found that Pokémon owned the copyright in the images of the Pokémon characters depicted on the various products in evidence. Further, the images were uploaded without Pokemon’s consent.

Pagone J found therefore that Redbubble had infringed Pokemon’s copyright and misrepresented, contrary to sections 18[3] and 29(1)(g) and (h) of the Australian Consumer Law, that the products were official or authorised Pokémon products.

In finding that there had been misrepresentations that the products were sponsored or approved by Pokémon, Pagone J referred, amongst other things, to the fact that the “sponsored” links did include the word “sponsored” (although this meant in fact that the products were sponsored by Redbubble, not Pokemon). His Honour also found significance in the fact that:

There was nothing on the Redbubble website to inform the consumer that there was no connection, authorised or otherwise, between Redbubble on the one hand and [Pokemon] (or any other entity authorised to exploit Pokémon products) on the other.

Copyright subsistence and ownership

Pokémon was able to prove it owned the copyright in the artistic works through the evidence of its attorney responsible for obtaining copyright registration in the USA. Although the attorney, Mr Monahan, had not been personally present when any works were created, Pagone J considered his evidence sufficient. At 36, his Honour said:

…. He conceded in cross?examination that he had not stood over the shoulder of any creator and, therefore, that he did not have direct eyewitness, or other direct, knowledge beyond that gained from “detailed consultation with the client” but that “with respect to each series of the cards, [he had] consult[ed] with the client to determine which – for instance, which Japanese card they derive[d] from, or [… where] the artwork comes from”. His specific and direct evidence was that of consulting with the client to determine that the works were made by the Japanese company and were made as the Japanese card, although, as mentioned, he did not fly personally to Japan and had not been witness to the creation process. It had been his specific professional responsibility to obtain and secure registrations in accordance with lawful entitlements and requirements. He was confident in that context of his conclusion that the Pikachu work was not a copy based upon an animation cell because of his experience over many years of consulting with the client as his professional obligations and legal duties. In specific response in cross?examination about being confident in giving evidence that the pose of Pikachu was not derivative of any other pose already published, Mr Monahan said that every investigation he had done about the card making process enabled him to say that the cards were generated on their own and were not derivative of the animation, “common poses notwithstanding”.[4]

Further, unlike Perram J in Dallas Buyer’s Club, Pagone J also accepted that the certificate of copyright registration in the USA identifying Pokémon as the claimant to copyright ownership was sufficient to enliven the presumption under s 126B(3) of the Copyright Act. (Given the history of the provision recounted by his Honour, one might think this should not be too controversial: afterall, how many other countries out there have a copyright registration system?)

Copyright infringement

Pagone J then held that Redbubble had infringed the copyright in three ways. First, his Honour held that Redbubble infringed by communicating the infringing images from its website. Although the images were uploaded by third parties, Redbubble made the communication for the purposes of [s 22(6)][22]: Pagone J distinguished Redbubble’s position from that of ISPs like iiNet at [48]:

In the present case Redbubble does not provide the content of the communications in the sense of being the originator of any of the 29 images on its website said to be infringements of the Pikachu work. In each case the originator was the artist who had placed the image on the Redbubble website. Redbubble, however, was responsible for determining that content through its processes, protocols and arrangements with the artists. Redbubble’s position is not like that of an internet provider. Redbubble is the host of the website with the infringing material. It has a user agreement with artists which deals with matters including the possibility of infringing materials, an IP policy, and a team dedicated to deal with impermissible content.

Secondly, offering the products for sale online was sufficient to enliven s 38 which, amongst other things, extends to exhibiting “infringing” articles in public by way of trade.

Although there appear to have been some rather unspecific complaints about copyright infringement by Pokémon between 2012 and 2014,[5] Pagone J found that Redbubble knew, or ought reasonably have known, that the products were infringing from the date of the letter of demand from Pokémon’s external solicitors on 25 November 2015.[6]

Thirdly, Pagone J held that Redbubble had infringed Pokemon’s copyright by authorising the manufacture of the infringing products when orders for their purchase were placed.

In this respect, it is worth noting that Redbubble had implemented and acted on a notice and takedown system under the (US) DMCA.[7] Pagone J recognised, therefore, that Redbubble did not expressly authorise infringement and took conscious, considered and reasonable steps, both proactively and responsively, to prevent infringements.[8] These, however, were not enough. At [67], his Honour said:

The business established by Redbubble carried the inherent risk of infringement of copyright of the kind complained of by [Pokemon]. It is true that Redbubble sought to mitigate the risk, but it was an inevitable incident of the business, as Redbubble chose to conduct it, that there were likely to be infringements. It could have prevented them by taking other steps but for business reasons Redbubble chose to deal with the risk of infringement by a process that enabled the infringements to occur. Such infringements were embedded in the system which was created for, and adopted by, Redbubble. There may have been a sound commercial basis for Redbubble to manage the risks of infringement as it did, but in doing so it authorised the infringements which occurred.

Remedies

Pokémon sought $44,555.84 in damages by way of lost royalties for the consumer law breaches and only nominal damages for copyright infringement. As already noted, however, Pagone J awarded only $1 in total.

The evidence did not establish that sales made by Redbubble were lost sales by Pokémon. There was, for example, no evidence that many of the sales were sales of kinds of products sold by Pokémon or its licensees. For example, his Honour said:

…. Many of the items sold through the Redbubble website involved a “mash up” of images, such as the combination of Pikachu and Homer Simpson. The finding of an infringing use of a work, or an impermissible representation in trade, does not necessarily lead to the conclusion that the sale made by the infringement or upon the misrepresentation was necessarily a sale that would have been made by the wronged party. The unreliability of such an assumption in this case can be seen from the fact that the infringements were in the use of the image in mash ups in, and in items that were not sold or authorised for sale by [Pokemon]. ….

Given the notice and take down processes put in place by Redbubble, Pagone J was not prepared to find the infringements were “flagrant”, warranting the award of additional damages under s 115(4)

Pokémon Company International, Inc. v Redbubble Ltd [2017] FCA 1541


  1. Implementation and compliance with the DMCA scheme explicitly affected the ruling on additional damages.  ?
  2. Even if you haven’t played it, you must have seen all those people milling around in parks at lunchtime trying to “capture” these imaginary Pokémon Go “critters”. Pokemon itself has an even longer history. There are also trading card games and a successful television series which has been broadcast in Australia since 2000 and distributed on over 57,000 DVDs.  ?
  3. If you are not sweltering in the southern summer sun, s 18 provides “A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.” And s 29(1)(g) and (h) prohibit making false or misleading representations in trade or commerce about sponsorship, affiliation or approval.  ?
  4. Curiously, at [44] (when discussing ownership by proof of a certificate), his Honour also said Pokémon had not proved ownership on the basis of authorship.  ?
  5. In fact, Pagone J subsequently found that Redbubble did in fact remove listings when Pokemon notified it that they were infringing.  ?
  6. It is less than clear from the judgment what action Redbubble took in response to the letter of demand. Ordinarily, one would assume that it had continued engaging in the infringing conduct but that seems a bit surprising given Pagone J records that Redbubble did comply with other take down notices once the subject of complaint had been properly identified.  ?
  7. The DMCA, being US legislation, does not provide protection from infringement in Australia under the Australian Copyright Act 1968. Redbubble also purported to operate under the corresponding Australian provisions ss116AA – 116AJ but, of course, it is not a carriage service provider and so they do not apply either.  ?
  8. Cf. esp. Section 36(1A)(c)[s36].  ?

Pokemon v Redbubble: the DMCA doesn’t apply Down Under Read More »

Scroll to Top