Tripping over the doormat: Basic threshold issues to get right in trade mark litigation

• Published date: 27 December 2021
• Law Firm: Bennett & Philp Lawyers
• Author: Mr Michael Finney, Michael Coates and Shereen Parvez

The dismissal of the PDP Group's (PDP) special leave application to the High Court¹ on 9 December 2021 is a timely reminder for practitioners to get the basics right in trade mark infringement proceedings. The fundamental basics that are really trade mark litigation 101 include:

1. ensuring that the party enforcing a trade mark actually owns the mark;
2. commencing proceedings for infringement against the correct parties; and
3. ensuring that the pleading includes all necessary causes of action.

In respect of all these points, PDF failed wickedly.

In a resounding win for Grasshopper Ventures Pty Ltd (Grasshopper) over PDP's ill conceived and fundamentally flawed case, the High Court supported two lower Federal Court decisions in dismissing PDP's claims of trade mark infringement, misleading or deceptive conduct, passing off, and most of the claims for rectification of the Trade Mark Register for some classes of Grasshopper's mark.

PDP's self-inflicted woes (and relevant to point (a) above) started with the uncontested fact that the two PDP marks were registered to separate PDP Group companies and were found to be substantially identical, covered the same common categories of goods, and only one of the PDP Group companies had always been the user of both marks.

PDP endeavoured to rely on the...