AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625 8 June 2021

• Published date: 29 November 2021
• Law Firm: Davies Collison Cave
• Author: Miriam Zanker, Lauren Eade and Courtney White

First published as part of Lauren Eade, Jodie Goonawardena, Miriam Zanker and Courtney White 'Current Developments - Australia': AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625 (8 June 2021) 125 Intellectual Property Forum 76.

Background

The case concerned claims by AGL Energy Limited ("AGL") of trade mark infringement and copyright infringement against Greenpeace Australia Pacific Limited ("Greenpeace") which related to an advertising campaign in the context of an "Exposing AGL" report. As part of the campaign, content to the following effect was included in online banner advertisements, street posters, placards, social media uses and on a website:

AGL's logo, , is both an Australian registered trade mark (trade mark no. 1843098) and an artistic work. The relevant infringing article was the modified AGL logo, which comprised Greenpeace's reproduction of the AGL logo with the added tagline "Australia's Greatest Liability" (as pictured above). Greenpeace's campaign, in particular the modified AGL logo, exemplifies the practice referred to as "brandjamming" or "culture-jamming" which involves doctoring existing advertisements in an attempt to change the behaviour of a company.

Issues in dispute

The primary issue in dispute in relation to the trade mark infringement claims was whether Greenpeace had used the various AGL marks as trade marks so as to infringe AGL's trade mark registration. In relation to the copyright infringement claim, the primary issue for determination was whether Greenpeace's use of the modified AGL logo amounted to fair dealing for the purpose of criticism or review or alternatively, parody or satire within the terms of Copyright Act ss.41-41A.¹

Trade mark infringement

Trade mark use

The Federal Court of Australia found that the impugned uses did not involve use of the modified AGL logo as a trade mark, as those uses identified AGL itself and not the source of goods or services offered by Greenpeace. The Court commented at [102] that

.... the use of the modified AGL logo is to identify that brand, and the company that it represents, as the subject of criticism. [Consumers] would not perceive Greenpeace to be promoting or associating any goods or services by reference to that mark. Rather, it is the use of the modified AGL logo to refer in terms to AGL and the goods and services that AGL provides.

The trade mark infringement claim therefore failed.

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