O’Callaghan J has awarded “The Practice” $200,000 in damages against The Practice Business Advisers & Tax Practitioners for trade mark infringement.
The Practice has been the owner since 2016 of Registered trade mark No 1757523:
for tax, accounting and business management services in class 35 and financial advisory and tax services in class 36. It had been using this trade mark since 2014, having adopted it in place of two rather more stylised logos in use from 1999.
The Respondent was incorporated in January 2017 and began providing business advisory and accountancy services under this logo:
In addition to the logo and in perhaps something of a differentiation from The Agency case, the evidence showed the Respondent’s website also featured:
(i) “At the Practice, our purpose is to Open New Possibilities and Add Value to Your Business”;
(ii) “The Practice can help you with: >> Taxation Advice >> Tax Planning >> Tax Effective Structures”;
(iii) “The Practice has the best business advisory accountants to guide you through this process.”;
(iv) “Contact The Practice”;
(v) “The Practice offers a full suite of financial and administration solutions for business such as small business bookkeeping in Melbourne and preparing sample small business financial statements”;
(vi) “Whether you need big or small business succession planning, The Practice is here to help.”;
(vii) “The Practice: Experts in Tax Compliance for Small Business”; and
(viii) “© The Practice | Privacy Policy” in the footer of each page.
(c) The following statements on the Respondent’s social media accounts:
(i) “The Practice can provide the tax solutions you need.”;
(ii) “The Practice’s Main Purpose is to open new possibility and add value to your business”;
(iii) “Here at The Practice, we tailor our services to meet the unique needs of your business”; and
(iv) “Let The Practice provide tax and business solutions for you!”
(d) On invoices sent to clients the words “THE PRACTICE” are shown in different coloured font to the rest of the invoice, with “THE” in light blue and “PRACTICE” in dark blue.
(e) Mr Hassan’s email signature has the words “The Practice” in bold font above the italicised words Business Advisers and Tax Practitioners.
(the emphasis was added by O’Callaghan J).
Perhaps the most interesting aspect of the case is that the Respondent sought to rely on the use of own name in good faith (s 122(1)(a)) and honest concurrent user (s 44(3) via s 122(1)(f) and (fa) as defences to infringement.
In rejecting both defences, O’Callaghan J considered at [61] and [88] that a person would not be acting in good faith (or honestly) if they did not take the steps that an honest and reasonable person would take to ascertain the ability to use the trade mark; they had in effect taken a risk.
The basis of these defences were searches that Mr Hassan, the sole director of the Respondent, claimed to have made. These claims were rejected. They came under sustained attack as “recent invention”. But O’Callaghan J also pointed out, Mr Hassan claimed to have searched terms like “The Practice Business Advisers and Tax Practitioners”; no where did he claim simply to have searched “The Practice”. Moreover, while Mr Hassan did claim to have undertaken a trade mark search, that was only back in 2001 when he was adopting a different version of the name.
O’Callaghan J did not accept the argument that the Respondent was only a one man company, not a large multinational (at 71] to [72]):
I cannot accept that submission. In my view, a person in the respondent’s position acting honestly and reasonably would have conducted far more extensive and thorough searches than Mr Hassan says he did to ensure that his chosen name did not conflict with a registered trade mark. In those circumstances it is unnecessary to consider the veracity of Mr Hassan’s evidence about his searches in 2013, 2014 and 2017.
The onus was on the respondent to prove that it had used reasonable diligence to ascertain that a chosen name did not conflict with a registered trade mark and in my view, the respondent has not discharged that onus for the reasons I have given.
The $200,000 damages were comprised of $100,000 compensatory damages and $100,000 additional damages. The judgment doesn’t disclose the scale of the Respondent’s business or its impact on the applicant’s business – other than it was a one man company.
The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd [2024] FCA 1299