Trade Mark Infringement - Key Cases from 2011

INTRODUCTION

This article briefly discusses each of the key trade mark infringement cases from 2011, beginning with the Full Federal Court decisions. Major issues considered include use of a name as a defence to trade mark infringement, when is a domain name used as a trade mark and what constitutes goods of the same description.

OPTICAL 88 LTD V OPTICAL 88 PTY LTD [2010] FCA 1380 [2011] FCAFC 130

Facts – the Applicant

The applicant, Optical 88 Ltd (88HK), is a Hong Kong company which operates or licenses many optical stores, primarily in Hong Kong. 88HK began business in the late 1980s, expanding rapidly. 88HK was the owner of the following 2 registered Australian trade marks:

TM No. Form of trade mark Goods/Services Priority dat 520707 optical products (only) October 1989 1083966 (966 Mark) optical products and associated retail/wholesale services November 2005 88HK held other similar registered Australian trade marks with later priority dates.

88HK had no stores in Australia and could show only very limited use of its trade marks in Australia. That use was limited to 3 of its Hong Kong stores (in a total of 8 transactions) sending bonus cash coupons and receipts incorporating its 707 Mark to customers in Australia in connection with the sale of third party branded optical products. With each sale, an optical cleaning cloth bearing OPTICAL 88 and its logo was included but in a different arrangement from that covered by its registered trade marks.

The evidence showed that when 88HK applied for the 966 Mark in 2005, it had only a "general intention" to use the 966 Mark "at some future but unascertained time". There were no specific plans in place to use the trade mark in Australia.

Importantly, there was no evidence that 88HK ever supplied optical products branded with its trade marks. All the optical products it supplied were third party branded products.

The facts – the respondents

The second respondent (Mr Law) established an optical dispensing business in Campsie in 1984. In February 1992 (after 88HK's 707 Mark was registered but well before the 966 Mark was registered), Mr Law expanded and rebadged the business, registering OPTICAL 88 as a business name. In 1993, Mr Law incorporated and operated the business under the name Optical 88 Pty Ltd (88Oz) using the name OPTICAL 88 by itself and also in combination with VISION CENTRE and VIP CARD on store signage and stationery. 88Oz operated 3 optometry practices.

The evidence established that Mr & Mrs Law were originally from Hong Kong and that Mr Law had travelled to Hong Kong on various occasions from 1984 to 1992 to attend optical conventions, reading local business and professional publications. Importantly, Mr Law asserted that he was unaware of 88HK and chose OPTICAL 88 for business and cultural reasons.

88HK's claims

88HK commenced proceeding against 88Oz and its directors alleging trade mark infringement, breach of the Trade Practices Act 1974, passing off and copyright infringement (by 88Oz's logo). In this article, only the trade mark infringement claims will be considered.

88Oz's defences and cross claims

In their defence, the respondents claimed that the OPTICAL 88 name had been used in good faith as use of their own name(section 122(1)(a)(i) of the Trade Marks Act 1995), that they had prior continuous use of the Optical 88 name except in relation to the 707 Mark (section 124) and that the respondent could obtain registration of the relevant mark (section 122(1)(fa)).

The respondents applied under section 92 to have the 707 Mark and 966 Mark removed for non-use.

The decision at first instance – Yates J

His Honour held as follows:

88Oz's use of OPTICAL 88 was deceptively similar to, and therefore infringed, 88HK's relevant trade marks but defences were available to defeat 88HK's claim; In assessing deceptive similarity in composite word and logo marks, the word elements should not too readily be assumed to be essential or distinguishing features but in this case they were (and therefore infringement was established); 88Oz's defence of use of its own name in good faith applied to defeat the trade mark infringement claim even though there were other elements in most uses by 88Oz; 88Oz's use of the name was honest (despite Mr Law's frequent visits to Hong Kong for business purposes) because OPTICAL is a precise, descriptive word to describe the type of business and 88 is considered to be lucky by...