Question:
<citphrase id="cp0.0">cited from="[2008] FCA 605">trade marks</citphrase>
<citphrase id="cp0.1">cited from="[2008] FCA 605">representations of sole and shape marks registered as trade marks in respect of footwear</citphrase>
<citphrase id="cp0.2">cited from="[2008] FCA 605">whether rival vendor used shoes as a trade mark</citphrase>
<citphrase id="cp0.3">cited from="[2008] FCA 605">meaning of use as a trade mark</citphrase>
<citphrase id="cp0.4">cited from="[2008] FCA 605">whether goods themselves can constitute a trade mark</citphrase>
<citphrase id="cp0.5">cited from="[2008] FCA 605">whether the mark must have a separate identity from that of the goods</citphrase>
<citphrase id="cp0.6">cited from="[2008] FCA 605">functional and non-functional considerations</citphrase>
<citphrase id="cp0.7">cited from="[2008] FCA 605">whether features of shape bear any relation to the function to be performed by the nature of the goods trade marks</citphrase>
<citphrase id="cp0.8">cited from="[2008] FCA 605">infringement</citphrase>
<citphrase id="cp0.9">cited from="[2008] FCA 605">representations of sole and shape marks registered in respect of footwear</citphrase>
<citphrase id="cp0.10">cited from="[2008] FCA 605">whether infringement by rival vendor</citphrase>
<citphrase id="cp0.11">cited from="[2008] FCA 605">whether rival's shoes substantially identical or deceptively similar to registered marks trade marks</citphrase>
<citphrase id="cp0.12">cited from="[2008] FCA 605">application for removal of marks from register on ground that not capable of distinguishing proprietor's goods from those of another</citphrase>
<citphrase id="cp0.13">cited from="[2008] FCA 605">meaning of 'distinguish'</citphrase>
<citphrase id="cp0.14">cited from="[2008] FCA 605">application for removal on ground that applicant not owner of mark</citphrase>
<citphrase id="cp1.0">cited from="[2008] FCA 100">intellectual property</citphrase>
<citphrase id="cp1.1">cited from="[2008] FCA 100">trade marks</citphrase>
<citphrase id="cp1.2">cited from="[2008] FCA 100">rectification proceedings</citphrase>
<citphrase id="cp1.3">cited from="[2008] FCA 100">expungement proceedings</citphrase>
<citphrase id="cp1.4">cited from="[2008] FCA 100">statute applies as it stood at the time of commencement of proceedings</citphrase>
<citphrase id="cp1.5">cited from="[2008] FCA 100">no deceptive similarity between inner health plus and health plus</citphrase>
<citphrase id="cp1.6">cited from="[2008] FCA 100">applicant in each proceeding lacked standing as 'a person aggrieved'</citphrase>
<citphrase id="cp1.7">cited from="[2008] FCA 100">registered proprietor of health plus mark failed to demonstrate intention to use or actual use</citphrase>
<citphrase id="cp1.8">cited from="[2008] FCA 100">use of health plus mark by a company with the same directors as the registered proprietor does not amount to authorised use</citphrase>
<citphrase id="cp1.9">cited from="[2008] FCA 100">no relevant control</citphrase>
<citphrase id="cp1.10">cited from="[2008] FCA 100">discretionary principles</citphrase>
<citphrase id="cp3.0">cited from="[2007] FCAFC 184">trade marks</citphrase>
<citphrase id="cp3.1">cited from="[2007] FCAFC 184">ownership</citphrase>
<citphrase id="cp3.2">cited from="[2007] FCAFC 184">first use</citphrase>
<citphrase id="cp3.3">cited from="[2007] FCAFC 184">combination mark</citphrase>
<citphrase id="cp3.4">cited from="[2007] FCAFC 184">whether goods "of the same kind"</citphrase>
<citphrase id="cp3.5">cited from="[2007] FCAFC 184">whether word mark sufficiently distinctive to identify goods  passing off</citphrase>
<citphrase id="cp3.6">cited from="[2007] FCAFC 184">whether appellant raised geographical limitation of use before primary judge evidence</citphrase>
<citphrase id="cp3.7">cited from="[2007] FCAFC 184">evidential onus of proof</citphrase>
<citphrase id="cp3.8">cited from="[2007] FCAFC 184">whether primary judge's conclusions on evidence matters of impression</citphrase>
<citphrase id="cp4.0">cited from="[2007] FCA 1490">trade marks</citphrase>
<citphrase id="cp4.1">cited from="[2007] FCA 1490">infringement of registered trade marks</citphrase>
<citphrase id="cp4.2">cited from="[2007] FCA 1490">importing and selling goods packaged in counterfeit packaging constitutes 'use' of trade marks</citphrase>
<citphrase id="cp4.3">cited from="[2007] FCA 1490">construction of trade mark specifications</citphrase>
<citphrase id="cp4.4">cited from="[2007] FCA 1490">meaning of "consumables"</citphrase>
<citphrase id="cp4.5">cited from="[2007] FCA 1490">defence of consent</citphrase>
<citphrase id="cp4.6">cited from="[2007] FCA 1490">insufficient evidence to establish chain of supply started with manufacturer</citphrase>
<citphrase id="cp4.7">cited from="[2007] FCA 1490">consent of registered owner, not related entity in corporate group, must be acquired. trade practices</citphrase>
<citphrase id="cp4.8">cited from="[2007] FCA 1490">misleading and deceptive conduct and false representations</citphrase>
<citphrase id="cp4.9">cited from="[2007] FCA 1490">importing and selling goods packaged in counterfeit packaging is misleading and deceptive</citphrase>
<citphrase id="cp4.10">cited from="[2007] FCA 1490">intention not relevant</citphrase>
<citphrase id="cp4.11">cited from="[2007] FCA 1490">importing and selling goods packaged in counterfeit packaging constitutes passing off. trade practices</citphrase>
<citphrase id="cp4.12">cited from="[2007] FCA 1490">liability for sale of good not of merchantable quality</citphrase>
<citphrase id="cp4.13">cited from="[2007] FCA 1490">evidence of defectiveness required.</citphrase>
<citphrase id="cp5.0">cited from="[2006] FCA 334">practice and procedure</citphrase>
<citphrase id="cp5.1">cited from="[2006] FCA 334">application to strike out paragraphs of defence</citphrase>
<citphrase id="cp5.2">cited from="[2006] FCA 334">failure to particularise allegations of misrepresentation</citphrase>
<citphrase id="cp5.3">cited from="[2006] FCA 334">failure to particularise breaches of statutes</citphrase>
<citphrase id="cp5.4">cited from="[2006] FCA 334">defective pleadings struck out</citphrase>
<citphrase id="cp5.5">cited from="[2006] FCA 334">respondent granted leave to file amended defence and cross-claim</citphrase>
<citphrase id="cp6.0">cited from="[2005] FCA 1282">trade marks</citphrase>
<citphrase id="cp6.1">cited from="[2005] FCA 1282">appeal against a decision of the trade marks office</citphrase>
<citphrase id="cp6.2">cited from="[2005] FCA 1282">application for removal of trade mark on ground of non-use</citphrase>
<citphrase id="cp6.3">cited from="[2005] FCA 1282">meaning of 'person aggrieved'</citphrase>
<citphrase id="cp6.4">cited from="[2005] FCA 1282">whether 'use' established</citphrase>
<citphrase id="cp6.5">cited from="[2005] FCA 1282">court's discretion in a non-use application</citphrase>
<citphrase id="cp6.6">cited from="[2005] FCA 1282">whether marks substantially identical or deceptively similar</citphrase>
<citphrase id="cp6.7">cited from="[2005] FCA 1282">onus in an opposition to registration.</citphrase>
<citphrase id="cp7.0">cited from="[2004] FCAFC 196">intellectual property</citphrase>
<citphrase id="cp7.1">cited from="[2004] FCAFC 196">trade marks</citphrase>
<citphrase id="cp7.2">cited from="[2004] FCAFC 196">deceptive similarity</citphrase>
<citphrase id="cp7.3">cited from="[2004] FCAFC 196">whether aural use of 'crazy ron' infringed a registered composite trade mark which included the words 'crazy john'</citphrase>
<citphrase id="cp7.4">cited from="[2004] FCAFC 196">whether 'crazy john' an essential feature of the registered markintellectual property</citphrase>
<citphrase id="cp7.5">cited from="[2004] FCAFC 196">trade marks</citphrase>
<citphrase id="cp7.6">cited from="[2004] FCAFC 196">registration</citphrase>
<citphrase id="cp7.7">cited from="[2004] FCAFC 196">amendment of particulars of application</citphrase>
<citphrase id="cp7.8">cited from="[2004] FCAFC 196">whether s 65(5) of the trade marks act 1995 (cth) authorises amendment of an application which names the wrong person as the owner</citphrase>
<citphrase id="cp14.0">cited from="[2000] FCA 1099">ooooo</citphrase>
<citphrase id="cp19.0">cited from="[1995] FCA 1063">trade mark</citphrase>
<citphrase id="cp19.1">cited from="[1995] FCA 1063">claim to be a proprietor of trade mark</citphrase>
<citphrase id="cp19.2">cited from="[1995] FCA 1063">prior use by opponent</citphrase>
<citphrase id="cp19.3">cited from="[1995] FCA 1063">connection in the course of trade between opponent and mark.</citphrase>
<citphrase id="cp20.0">cited from="[1994] FCA 1001">trade marks</citphrase>
<citphrase id="cp20.1">cited from="[1994] FCA 1001">infringement</citphrase>
<citphrase id="cp20.2">cited from="[1994] FCA 1001">respondents (applicants at first instance) manufacture and distribute denim garments particularly jeans including jeans which have second hand look</citphrase>
<citphrase id="cp20.3">cited from="[1994] FCA 1001">respondents proprietors of a range of trade marks including "levi's"</citphrase>
<citphrase id="cp20.4">cited from="[1994] FCA 1001">appellants (respondents at first instance) market second hand jeans imported from the united states</citphrase>
<citphrase id="cp20.5">cited from="[1994] FCA 1001">some jeans substantially altered or renovated</citphrase>
<citphrase id="cp20.6">cited from="[1994] FCA 1001">majority of the jeans formerly respondents', i.e. levi strauss products, bearing some of the respondents' trade marks</citphrase>
<citphrase id="cp20.7">cited from="[1994] FCA 1001">appellants market jeans under name "revise"</citphrase>
<citphrase id="cp20.8">cited from="[1994] FCA 1001">whether "revise" deceptively similar to "levi's".   trade marks</citphrase>
<citphrase id="cp20.9">cited from="[1994] FCA 1001">infringement</citphrase>
<citphrase id="cp20.10">cited from="[1994] FCA 1001">appellants marketing second hand jeans originally made or distributed by respondents</citphrase>
<citphrase id="cp20.11">cited from="[1994] FCA 1001">jeans bear original levi strauss trade marks</citphrase>
<citphrase id="cp20.12">cited from="[1994] FCA 1001">some jeans substantially altered</citphrase>
<citphrase id="cp20.13">cited from="[1994] FCA 1001">whether marketing of jeans infringement of levi strauss trade marks</citphrase>
<citphrase id="cp20.14">cited from="[1994] FCA 1001">whether presence of trade marks on second hand jeans a use of the respondents' trade marks as trade marks.   trade practices act</citphrase>
<citphrase id="cp20.15">cited from="[1994] FCA 1001">(consumer protection) and passing off</citphrase>
<citphrase id="cp20.16">cited from="[1994] FCA 1001">whether members of public likely to be misled or deceived into thinking that jeans marketed by appellants are marketed by or on behalf of the respondents</citphrase>
<citphrase id="cp20.17">cited from="[1994] FCA 1001">whether members of public likely to be misled or deceived into thinking that substantially altered second hand jeans marketed by appellants originally a product manufactured or distributed by respondents</citphrase>
<citphrase id="cp20.18">cited from="[1994] FCA 1001">whether second hand altered jeans marketed by appellants being passed off as original levi strauss products.</citphrase>
<citphrase id="cp21.0">cited from="[1994] FCA 936">trade marks</citphrase>
<citphrase id="cp21.1">cited from="[1994] FCA 936">service marks</citphrase>
<citphrase id="cp21.2">cited from="[1994] FCA 936">opposition to registration</citphrase>
<citphrase id="cp21.3">cited from="[1994] FCA 936">whether marks deceptively similar</citphrase>
<citphrase id="cp21.4">cited from="[1994] FCA 936">whether sufficient recognition in australia of opponent's mark</citphrase>
<citphrase id="cp21.5">cited from="[1994] FCA 936">proprietorship</citphrase>
<citphrase id="cp21.6">cited from="[1994] FCA 936">whether user in course of trade in australia</citphrase>
<citphrase id="cp21.7">cited from="[1994] FCA 936">whether sufficient identity between marks and between services.</citphrase>
<citphrase id="cp22.0">cited from="[1993] FCA 203">trade marks</citphrase>
<citphrase id="cp22.1">cited from="[1993] FCA 203">infringement of word mark "polo" by the use of a mark "polo club"</citphrase>
<citphrase id="cp22.2">cited from="[1993] FCA 203">whether sale of the same goods by the rival trader in stores of an allegedly quite different standard avoided infringement</citphrase>
<citphrase id="cp22.3">cited from="[1993] FCA 203">test for infringement of a case of this kind</citphrase>
<citphrase id="cp22.4">cited from="[1993] FCA 203">defence under s. 62(2)</citphrase>
<citphrase id="cp22.5">cited from="[1993] FCA 203">whether the defence focuses on a more restricted circle of facts than is required to be considered for the purposes of infringement</citphrase>
<citphrase id="cp22.6">cited from="[1993] FCA 203">construction of s. 62(2)</citphrase>
<citphrase id="cp22.7">cited from="[1993] FCA 203">cross-claim alleging the mark is a surname and cannot be distinctive</citphrase>
<citphrase id="cp22.8">cited from="[1993] FCA 203">cross-claim alleging non-use for three years</citphrase>
<citphrase id="cp22.9">cited from="[1993] FCA 203">whether use on a few occasions is sufficient to answer cross-claim</citphrase>
<citphrase id="cp22.10">cited from="[1993] FCA 203">onus of proof and effect of prima facie case established by reputable persons in the trade not having heard of the mark, although other evidence established the mark was actually being used by a different company</citphrase>
<citphrase id="cp22.11">cited from="[1993] FCA 203">whether in answer to a case under s. 23(1)(b) the registered proprietor may rely on use of the trade mark, not directly by himself or a registered user, but by an unregistered licensee</citphrase>
<citphrase id="cp22.12">cited from="[1993] FCA 203">use of trade mark as a house mark by a group of companies</citphrase>
<citphrase id="cp22.13">cited from="[1993] FCA 203">the effect and construction of s. 23(2) and discussion of the test as to whether goods are "goods of the same description"</citphrase>
<citphrase id="cp22.14">cited from="[1993] FCA 203">discussion of discretion under s. 23.</citphrase>
<citphrase id="cp23.0">cited from="[1992] FCA 159">intellectual property</citphrase>
<citphrase id="cp23.1">cited from="[1992] FCA 159">passing off</citphrase>
<citphrase id="cp23.2">cited from="[1992] FCA 159">bases and elements of passing off action</citphrase>
<citphrase id="cp23.3">cited from="[1992] FCA 159">whether carrying on business within jurisdiction or place of business within jurisdiction</citphrase>
<citphrase id="cp23.4">cited from="[1992] FCA 159">sufficiency of nexus with the jurisdiction</citphrase>
<citphrase id="cp23.5">cited from="[1992] FCA 159">necessity and method of establishing reputation within jurisdiction</citphrase>
<citphrase id="cp23.6">cited from="[1992] FCA 159">requirement of goodwill</citphrase>
<citphrase id="cp23.7">cited from="[1992] FCA 159">whether fraud is a necessary element of passing off</citphrase>
<citphrase id="cp23.8">cited from="[1992] FCA 159">relevance of establishing fraud.  trade practices</citphrase>
<citphrase id="cp23.9">cited from="[1992] FCA 159">misleading and deceptive conduct</citphrase>
<citphrase id="cp23.10">cited from="[1992] FCA 159">relationship between reputation in passing off action and establishing misleading and deceptive conduct.</citphrase>
<citphrase id="cp24.0">cited from="[1991] FCA 310">trade marks</citphrase>
<citphrase id="cp24.1">cited from="[1991] FCA 310">registration in part a of "caplets" in respect of medicated tablets for human use</citphrase>
<citphrase id="cp24.2">cited from="[1991] FCA 310">whether there had been use by registered proprietor as a trade mark</citphrase>
<citphrase id="cp24.3">cited from="[1991] FCA 310">whether trade mark should be removed from register for non-use</citphrase>
<citphrase id="cp24.4">cited from="[1991] FCA 310">infringement</citphrase>
<citphrase id="cp24.5">cited from="[1991] FCA 310">whether use by alleged infringer as a trade mark</citphrase>
<citphrase id="cp24.6">cited from="[1991] FCA 310">whether use by alleged infringer in good faith of a description of the character or quality of the alleged infringer's goods.</citphrase>
<citphrase id="cp25.0">cited from="[1990] HCA 60">trade marks</citphrase>
<citphrase id="cp25.1">cited from="[1990] HCA 60">rectification of register</citphrase>
<citphrase id="cp25.2">cited from="[1990] HCA 60">expunging mark</citphrase>
<citphrase id="cp25.3">cited from="[1990] HCA 60">mark "likely to deceive or cause confusion" not to be registered</citphrase>
<citphrase id="cp25.4">cited from="[1990] HCA 60">whether mark becoming deceptive or confusing after registration removable</citphrase>
<citphrase id="cp25.5">cited from="[1990] HCA 60">whether blameworthy conduct on part of proprietor required for removal</citphrase>
<citphrase id="cp25.6">cited from="[1990] HCA 60">trade marks act 1955 (cth), ss. 22, 28, 56(1), 61(1)(b).</citphrase>
<citphrase id="cp26.0">cited from="[1990] HCA 11">limitation of actions (n.s.w.)</citphrase>
<citphrase id="cp26.1">cited from="[1990] HCA 11">action for breach of trust</citphrase>
<citphrase id="cp26.2">cited from="[1990] HCA 11">six year limitation period</citphrase>
<citphrase id="cp26.3">cited from="[1990] HCA 11">period inapplicable to actions founded on fraud</citphrase>
<citphrase id="cp26.4">cited from="[1990] HCA 11">onus of proving fraud</citphrase>
<citphrase id="cp26.5">cited from="[1990] HCA 11">trustee act 1925 (n.s.w.), s. 69.  practice and procedure (n.s.w.)</citphrase>
<citphrase id="cp26.6">cited from="[1990] HCA 11">pleading</citphrase>
<citphrase id="cp26.7">cited from="[1990] HCA 11">action for breach of trust</citphrase>
<citphrase id="cp26.8">cited from="[1990] HCA 11">six year limitation period</citphrase>
<citphrase id="cp26.9">cited from="[1990] HCA 11">period inapplicable to action founded on fraud</citphrase>
<citphrase id="cp26.10">cited from="[1990] HCA 11">claim outside six year period</citphrase>
<citphrase id="cp26.11">cited from="[1990] HCA 11">defence that action statute barred</citphrase>
<citphrase id="cp26.12">cited from="[1990] HCA 11">no reply alleging fraud</citphrase>
<citphrase id="cp26.13">cited from="[1990] HCA 11">non-appearance of defendant at trial</citphrase>
<citphrase id="cp26.14">cited from="[1990] HCA 11">judgment for defendant on ground that no trust established</citphrase>
<citphrase id="cp26.15">cited from="[1990] HCA 11">appeal</citphrase>
<citphrase id="cp26.16">cited from="[1990] HCA 11">finding of fraud on appeal</citphrase>
<citphrase id="cp26.17">cited from="[1990] HCA 11">trustee act 1925 (n.s.w.), s. 69.</citphrase>
<citphrase id="cp27.0">cited from="[1990] FCA 32">trade marks</citphrase>
<citphrase id="cp27.1">cited from="[1990] FCA 32">whether loss of distinctiveness per se is a ground for removal of trade mark from register</citphrase>
<citphrase id="cp27.2">cited from="[1990] FCA 32">construction and operation of s.28 of trademarks act 1955</citphrase>
<citphrase id="cp27.3">cited from="[1990] FCA 32">whether lack of distinctiveness is a characteristic of a trade mark to which s.28 is directed.  non-use of mark</citphrase>
<citphrase id="cp27.4">cited from="[1990] FCA 32">action to rectify register to remove trade mark for non-use</citphrase>
<citphrase id="cp27.5">cited from="[1990] FCA 32">equitable defence of acquiescence.  assignment of trade mark</citphrase>
<citphrase id="cp27.6">cited from="[1990] FCA 32">assignment without goodwill.  trade practices</citphrase>
<citphrase id="cp27.7">cited from="[1990] FCA 32">misleading or deceptive conduct</citphrase>
<citphrase id="cp27.8">cited from="[1990] FCA 32">whether intentional elements of conduct may render it deceptive conduct even though the conduct viewed objectively would only be confusing.</citphrase>
<citphrase id="cp28.0">cited from="[1984] HCA 73">trade marks</citphrase>
<citphrase id="cp28.1">cited from="[1984] HCA 73">registration</citphrase>
<citphrase id="cp28.2">cited from="[1984] HCA 73">proprietorship</citphrase>
<citphrase id="cp28.3">cited from="[1984] HCA 73">prior use by applicant</citphrase>
<citphrase id="cp28.4">cited from="[1984] HCA 73">public use indicating connexion in course of trade between goods and user</citphrase>
<citphrase id="cp28.5">cited from="[1984] HCA 73">overseas company seeking to interest local manufacturer in new cigarette brand supplies cigarette packets and advertising material bearing name</citphrase>
<citphrase id="cp28.6">cited from="[1984] HCA 73">trade marks act 1955 (cth), s. 40(1).  contract</citphrase>
<citphrase id="cp28.7">cited from="[1984] HCA 73">implied term</citphrase>
<citphrase id="cp28.8">cited from="[1984] HCA 73">licensing agreement relating to manufacture and sale of brand of cigarettes</citphrase>
<citphrase id="cp28.9">cited from="[1984] HCA 73">licensor subsequently developing new variety of brand</citphrase>
<citphrase id="cp28.10">cited from="[1984] HCA 73">whether implied term that licensee would not hinder development of line extension of brand.  equity</citphrase>
<citphrase id="cp28.11">cited from="[1984] HCA 73">fiduciary relationships</citphrase>
<citphrase id="cp28.12">cited from="[1984] HCA 73">confidential information</citphrase>
<citphrase id="cp28.13">cited from="[1984] HCA 73">licensing agreement relating to manufacture and sale of brand of cigarettes</citphrase>
<citphrase id="cp28.14">cited from="[1984] HCA 73">licensor develops new brand and seeks to interest licensee in manufacture and sale of it in australia</citphrase>
<citphrase id="cp28.15">cited from="[1984] HCA 73">supply of samples and advertising material</citphrase>
<citphrase id="cp28.16">cited from="[1984] HCA 73">whether fiduciary relationship between parties in relation to trade name of new brand.  tort</citphrase>
<citphrase id="cp28.17">cited from="[1984] HCA 73">unfair competition</citphrase>
<citphrase id="cp28.18">cited from="[1984] HCA 73">unfair trading</citphrase>
<citphrase id="cp28.19">cited from="[1984] HCA 73">whether general cause of action.</citphrase>
<citphrase id="cp29.0">cited from="[1977] HCA 56">trade mark</citphrase>
<citphrase id="cp29.1">cited from="[1977] HCA 56">registered user</citphrase>
<citphrase id="cp29.2">cited from="[1977] HCA 56">application for registration</citphrase>
<citphrase id="cp29.3">cited from="[1977] HCA 56">exclusive licensee of trade mark in australia</citphrase>
<citphrase id="cp29.4">cited from="[1977] HCA 56">whether registrar entitled to impose condition that user will not make notification under s. 103 of trade marks act 1955 (cth)</citphrase>
<citphrase id="cp29.5">cited from="[1977] HCA 56">whether intention of user to achieve objects other than saving of mark from invalidation a ground for refusing registration</citphrase>
<citphrase id="cp29.6">cited from="[1977] HCA 56">whether applicant must manufacture goods for which registration sought</citphrase>
<citphrase id="cp29.7">cited from="[1977] HCA 56">whether distributor can be registered as user</citphrase>
<citphrase id="cp29.8">cited from="[1977] HCA 56">whether use of mark by applicant must indicate a connexion between user and goods to exclusion of registered proprietor</citphrase>
<citphrase id="cp29.9">cited from="[1977] HCA 56">whether registration of user likely to deceive public</citphrase>
<citphrase id="cp29.10">cited from="[1977] HCA 56">costs</citphrase>
<citphrase id="cp29.11">cited from="[1977] HCA 56">trade marks act 1955 (cth), ss. 6 (1), 74, 103, 114 (f).</citphrase>
<citphrase id="cp30.0">cited from="[1969] HCA 17">trade marks</citphrase>
<citphrase id="cp30.1">cited from="[1969] HCA 17">removal from register</citphrase>
<citphrase id="cp30.2">cited from="[1969] HCA 17">no use during period of three years</citphrase>
<citphrase id="cp30.3">cited from="[1969] HCA 17">whether discretion to refuse to remove</citphrase>
<citphrase id="cp30.4">cited from="[1969] HCA 17">principles upon which discretion should be exercised</citphrase>
<citphrase id="cp30.5">cited from="[1969] HCA 17">trade marks act 1955-1958 (cth), s. 23 (1) (b), (4).*</citphrase>
<citphrase id="cp31.0">cited from="[1963] HCA 66">trade mark</citphrase>
<citphrase id="cp31.1">cited from="[1963] HCA 66">infringement</citphrase>
<citphrase id="cp31.2">cited from="[1963] HCA 66">device</citphrase>
<citphrase id="cp31.3">cited from="[1963] HCA 66">advertisement by moving picture on television</citphrase>
<citphrase id="cp31.4">cited from="[1963] HCA 66">whether use in course of trade</citphrase>
<citphrase id="cp31.5">cited from="[1963] HCA 66">substantial identity</citphrase>
<citphrase id="cp31.6">cited from="[1963] HCA 66">deceptive similarity</citphrase>
<citphrase id="cp31.7">cited from="[1963] HCA 66">trade marks act 1955-1958 (cth), ss. 6, 58 (1), 62 (1).*</citphrase>
<citphrase id="cp35.0">citing from="[2011] FCA 94">intellectual property</citphrase>
<citphrase id="cp35.1">citing from="[2011] FCA 94">trade marks</citphrase>
<citphrase id="cp35.2">citing from="[2011] FCA 94">registration</citphrase>
<citphrase id="cp35.3">citing from="[2011] FCA 94">application for registration of mark "digitek"</citphrase>
<citphrase id="cp35.4">citing from="[2011] FCA 94">opposition to registration under s 44(1)</citphrase>
<citphrase id="cp35.5">citing from="[2011] FCA 94">whether mark deceptively similar to opponent's registered trade mark "dgtec"</citphrase>
<citphrase id="cp35.6">citing from="[2011] FCA 94">whether the applicant's tv installation accessories and goods the subject of opponent's trade mark (digital and electronic products including televisions, video players, dvd players, cd players, decoders and cameras) are "goods of the same description" within meaning of s 14(1) of trade marks act 1995 (cth).  intellectual property</citphrase>
<citphrase id="cp35.7">citing from="[2011] FCA 94">trade marks</citphrase>
<citphrase id="cp35.8">citing from="[2011] FCA 94">appeal from registrar of trade marks</citphrase>
<citphrase id="cp35.9">citing from="[2011] FCA 94">standard of proof to be applied in determining grounds of opposition</citphrase>
<citphrase id="cp35.10">citing from="[2011] FCA 94">whether opponent required to satisfy the court that trade marks should clearly not be registered.  intellectual property</citphrase>
<citphrase id="cp35.11">citing from="[2011] FCA 94">trade marks</citphrase>
<citphrase id="cp35.12">citing from="[2011] FCA 94">registration</citphrase>
<citphrase id="cp35.13">citing from="[2011] FCA 94">whether honest concurrent use of trade marks established for purposes of s 44(3)(a)</citphrase>
<citphrase id="cp35.14">citing from="[2011] FCA 94">whether evidence of use after the date the application for registration is made may be taken into account under s 44(3)</citphrase>
<citphrase id="cp35.15">citing from="[2011] FCA 94">whether, because of "other circumstances" it is proper to allow registration of the mark under s 44(3)(b).  intellectual property</citphrase>
<citphrase id="cp35.16">citing from="[2011] FCA 94">trade marks</citphrase>
<citphrase id="cp35.17">citing from="[2011] FCA 94">opposition</citphrase>
<citphrase id="cp35.18">citing from="[2011] FCA 94">whether opponent's marks had acquired a reputation in australia for purposes of s 60</citphrase>
<citphrase id="cp35.19">citing from="[2011] FCA 94">nature of evidence required to show reputation considered</citphrase>
<citphrase id="cp35.20">citing from="[2011] FCA 94">whether s 60 subject to s 44(3)</citphrase>
<citphrase id="cp35.21">citing from="[2011] FCA 94">whether applicant's registration would be contrary to law under s 42(b) because its use would constitute misleading and deceptive conduct under s 52 trade practices act 1974 (cth).  intellectual property</citphrase>
<citphrase id="cp35.22">citing from="[2011] FCA 94">trade marks</citphrase>
<citphrase id="cp35.23">citing from="[2011] FCA 94">application for removal of trade mark from register for non-use</citphrase>
<citphrase id="cp35.24">citing from="[2011] FCA 94">application seeking to remove all goods in respect of which the mark is registered</citphrase>
<citphrase id="cp35.25">citing from="[2011] FCA 94">evidence of use of some, but not all of the goods</citphrase>
<citphrase id="cp35.26">citing from="[2011] FCA 94">whether grounds for removal under s 92(4) established</citphrase>
<citphrase id="cp35.27">citing from="[2011] FCA 94">whether s 101(2) affords discretion to remove certain goods from registration notwithstanding that the application seeks removal of all of the goods</citphrase>
<citphrase id="cp35.28">citing from="[2011] FCA 94">whether permissible for the court to amend a registration to ensure that it accords with the scope of established use</citphrase>
<citphrase id="cp35.29">citing from="[2011] FCA 94">exercise of discretion under s 101(3)</citphrase>
<citphrase id="cp35.30">citing from="[2011] FCA 94">scope of s 101(4)</citphrase>
<citphrase id="cp35.31">citing from="[2011] FCA 94">whether the opponent has established use of "similar goods" under s 101(4)</citphrase>
<citphrase id="cp35.32">citing from="[2011] FCA 94">whether order for removal from the register operates retrospectively to provide a defence to infringement.  intellectual property</citphrase>
<citphrase id="cp35.33">citing from="[2011] FCA 94">trade marks</citphrase>
<citphrase id="cp35.34">citing from="[2011] FCA 94">infringement</citphrase>
<citphrase id="cp35.35">citing from="[2011] FCA 94">whether infringement under ss 120(1) , (2) and (3)</citphrase>
<citphrase id="cp35.36">citing from="[2011] FCA 94">whether applicant's trade mark was "well known" under s 120(3)</citphrase>
<citphrase id="cp35.37">citing from="[2011] FCA 94">s 122(1)(fa)</citphrase>
<citphrase id="cp35.38">citing from="[2011] FCA 94">whether the respondent would obtain registration of its mark if it applied for it.  trade practices</citphrase>
<citphrase id="cp35.39">citing from="[2011] FCA 94">misleading and deceptive conduct</citphrase>
<citphrase id="cp35.40">citing from="[2011] FCA 94">s 52 trade practices act 1974 (cth)</citphrase>
<citphrase id="cp35.41">citing from="[2011] FCA 94">whether applicant's sale of set-top boxes constitutes misleading and deceptive conduct.</citphrase>
<citphrase id="cp36.0">citing from="[2011] FCA 39">trade marks</citphrase>
<citphrase id="cp36.1">citing from="[2011] FCA 39">appeal from decision of a delegate of registrar of trades marks</citphrase>
<citphrase id="cp36.2">citing from="[2011] FCA 39">application for removal of trade mark on grounds of non-use</citphrase>
<citphrase id="cp36.3">citing from="[2011] FCA 39">whether applicants have standing as a person aggrieved for purposes of s 92 of the trade marks act 1995 (cth)</citphrase>
<citphrase id="cp36.4">citing from="[2011] FCA 39">whether applicants in same trade as owner of contested trade mark</citphrase>
<citphrase id="cp36.5">citing from="[2011] FCA 39">first applicant and owner of contested trade mark both producers of whiskey</citphrase>
<citphrase id="cp36.6">citing from="[2011] FCA 39">whether applicants have standing as a 'person aggrieved' in relation to non-alcoholic goods in class 32</citphrase>
<citphrase id="cp36.7">citing from="[2011] FCA 39">held</citphrase>
<citphrase id="cp36.8">citing from="[2011] FCA 39">applicants trade rivals of owner of contested trade mark</citphrase>
<citphrase id="cp36.9">citing from="[2011] FCA 39">applicants have standing as a 'person aggrieved' pursuant to s 92 of the trade marks act 1995 (cth).  trade marks</citphrase>
<citphrase id="cp36.10">citing from="[2011] FCA 39">appeal from decision of a delegate of registrar of trades marks</citphrase>
<citphrase id="cp36.11">citing from="[2011] FCA 39">application for removal of trade mark on grounds of non-use</citphrase>
<citphrase id="cp36.12">citing from="[2011] FCA 39">non-use in relevant three year period conceded by respondent</citphrase>
<citphrase id="cp36.13">citing from="[2011] FCA 39">whether any obstacles to use existed such that s 100(3)(c) of the trade marks act 1995 (cth) has effect</citphrase>
<citphrase id="cp36.14">citing from="[2011] FCA 39">respondent engaged in multiple jurisdiction trade mark litigation</citphrase>
<citphrase id="cp36.15">citing from="[2011] FCA 39">respondent denied permission to exhibit product a cannes trade fair</citphrase>
<citphrase id="cp36.16">citing from="[2011] FCA 39">respondent experienced delays in production</citphrase>
<citphrase id="cp36.17">citing from="[2011] FCA 39">held</citphrase>
<citphrase id="cp36.18">citing from="[2011] FCA 39">respondent adopted deliberate strategy to market product in other jurisdictions in priority to australia</citphrase>
<citphrase id="cp36.19">citing from="[2011] FCA 39">litigation proved no bar to use of trade mark and promotion of product in other jurisdictions</citphrase>
<citphrase id="cp36.20">citing from="[2011] FCA 39">delays in production had been rectified before the completion of the relevant non-use period</citphrase>
<citphrase id="cp36.21">citing from="[2011] FCA 39">no causal connection demonstrated between failure to use the mark and denial of exhibition space in cannes</citphrase>
<citphrase id="cp36.22">citing from="[2011] FCA 39">respondent's claims not sufficient to constitute obstacles for the purposes of s 100(3)(c) of the trade marks act 1995 (cth).  trade marks</citphrase>
<citphrase id="cp36.23">citing from="[2011] FCA 39">appeal from decision of a delegate of registrar of trades marks</citphrase>
<citphrase id="cp36.24">citing from="[2011] FCA 39">application for removal of trade mark on grounds of non-use</citphrase>
<citphrase id="cp36.25">citing from="[2011] FCA 39">respondent's non-use of contested trade mark established</citphrase>
<citphrase id="cp36.26">citing from="[2011] FCA 39">whether court should exercise discretion under s 101(3) of the trade marks act 1995 (cth) to retain trade mark on the register of trade marks</citphrase>
<citphrase id="cp36.27">citing from="[2011] FCA 39">scope of discretion under s 101(3)</citphrase>
<citphrase id="cp36.28">citing from="[2011] FCA 39">whether any public confusion would be caused by removal of the trade mark</citphrase>
<citphrase id="cp36.29">citing from="[2011] FCA 39">held</citphrase>
<citphrase id="cp36.30">citing from="[2011] FCA 39">respondent has developed limited international and domestic reputation</citphrase>
<citphrase id="cp36.31">citing from="[2011] FCA 39">possibility of public confusion should mark be removed</citphrase>
<citphrase id="cp36.32">citing from="[2011] FCA 39">no apparent prejudice would result should the mark be maintained</citphrase>
<citphrase id="cp36.33">citing from="[2011] FCA 39">circumstances warrant the exercise of the court's discretion to retain the trade mark on the register.</citphrase>
<citphrase id="cp37.0">citing from="[2010] FCA 1380">trade marks</citphrase>
<citphrase id="cp37.1">citing from="[2010] FCA 1380">infringement</citphrase>
<citphrase id="cp37.2">citing from="[2010] FCA 1380">whether impugned marks "substantially identical" with or "deceptively similar" to registered trade marks</citphrase>
<citphrase id="cp37.3">citing from="[2010] FCA 1380">consideration of relevant principles</citphrase>
<citphrase id="cp37.4">citing from="[2010] FCA 1380">relevance of surrounding circumstances to inquiry under ss 120(1) and (2) of the trade marks act 1995 (cth)</citphrase>
<citphrase id="cp37.5">citing from="[2010] FCA 1380">significance of essential feature or dominant element in composite mark when assessing deceptive similarity</citphrase>
<citphrase id="cp37.6">citing from="[2010] FCA 1380">whether infringing trade mark use was use by first respondent only</citphrase>
<citphrase id="cp37.7">citing from="[2010] FCA 1380">whether admissions as to use by second and third respondents made on pleadings</citphrase>
<citphrase id="cp37.8">citing from="[2010] FCA 1380">whether bound to act on admissions if made  trade marks</citphrase>
<citphrase id="cp37.9">citing from="[2010] FCA 1380">defences to trade mark infringement</citphrase>
<citphrase id="cp37.10">citing from="[2010] FCA 1380">whether use was use by first respondent of its own name in good faith pursuant to s 122(1)(a)(i) of the trade marks act</citphrase>
<citphrase id="cp37.11">citing from="[2010] FCA 1380">whether prior continuous use established pursuant to s 124(1) of the trade marks act</citphrase>
<citphrase id="cp37.12">citing from="[2010] FCA 1380">whether the first respondent would obtain registration of its logo as a trade mark in its name pursuant to s 122(1)(fa) of the trade marks act  trade marks</citphrase>
<citphrase id="cp37.13">citing from="[2010] FCA 1380">cross-claim for removal of trade marks for non-use under ss 92(4)(a) and (b) of the trade marks act</citphrase>
<citphrase id="cp37.14">citing from="[2010] FCA 1380">whether use of the marks with additions or alterations not substantially affecting their identity established</citphrase>
<citphrase id="cp37.15">citing from="[2010] FCA 1380">consideration of principles relevant to use in relation to goods and services</citphrase>
<citphrase id="cp37.16">citing from="[2010] FCA 1380">whether use in the course of trade established</citphrase>
<citphrase id="cp37.17">citing from="[2010] FCA 1380">sending of bonus coupons and cash coupons from hong kong to customers resident in australia as an incident of trade</citphrase>
<citphrase id="cp37.18">citing from="[2010] FCA 1380">whether use was in relation to goods or services</citphrase>
<citphrase id="cp37.19">citing from="[2010] FCA 1380">whether intention to use or authorise use of trade mark established at time of registration</citphrase>
<citphrase id="cp37.20">citing from="[2010] FCA 1380">principles relevant to exercise of discretion  copyright</citphrase>
<citphrase id="cp37.21">citing from="[2010] FCA 1380">whether first respondent's logo is a reproduction of applicant's logo or of a substantial part of it</citphrase>
<citphrase id="cp37.22">citing from="[2010] FCA 1380">relevance of circumstances surrounding creation of first respondent's logo  trade practices</citphrase>
<citphrase id="cp37.23">citing from="[2010] FCA 1380">misleading and deceptive conduct and passing off</citphrase>
<citphrase id="cp37.24">citing from="[2010] FCA 1380">relevant date for assessing impugned conduct for claims under ss 52 and 53 of trade practices act 1974 (cth) and for passing off</citphrase>
<citphrase id="cp37.25">citing from="[2010] FCA 1380">appropriate to consider impugned conduct at the time it commenced</citphrase>
<citphrase id="cp37.26">citing from="[2010] FCA 1380">consideration of extent of reputation required to establish contravention of s 52 and passing off</citphrase>
<citphrase id="cp37.27">citing from="[2010] FCA 1380">evidence of applicant's trading and promotional activities</citphrase>
<citphrase id="cp37.28">citing from="[2010] FCA 1380">evidence of migration patterns and demography</citphrase>
<citphrase id="cp37.29">citing from="[2010] FCA 1380">survey evidence</citphrase>
<citphrase id="cp41.0">citing from="[2010] FCA 664">trademarks</citphrase>
<citphrase id="cp41.1">citing from="[2010] FCA 664">registration</citphrase>
<citphrase id="cp41.2">citing from="[2010] FCA 664">whether mark capable of distinguishing applicant's online retail services</citphrase>
<citphrase id="cp41.3">citing from="[2010] FCA 664">mark had low degree of inherent capacity to distinguish, requiring higher level of use and other circumstances to support finding that mark was capable of distinguishing applicant's services</citphrase>
<citphrase id="cp41.4">citing from="[2010] FCA 664">applicant failed to establish that mark was capable of distinguishing its services  trademarks</citphrase>
<citphrase id="cp41.5">citing from="[2010] FCA 664">registration</citphrase>
<citphrase id="cp41.6">citing from="[2010] FCA 664">burden of proof on appeal</citphrase>
<citphrase id="cp41.7">citing from="[2010] FCA 664">opposing party must establish that mark should not be registered on balance of probabilities to satisfy burden under s 41(3)</citphrase>
<citphrase id="cp41.8">citing from="[2010] FCA 664">applicant has burden of establishing that mark is capable of distinguishing under s 41(5)</citphrase>
<citphrase id="cp45.0">citing from="[2010] HCA 15">"use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... that is the concept embodied in the definition of 'trade mark' in s 17</citphrase>
<citphrase id="cp45.1">citing from="[2010] HCA 15">a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else."</citphrase>
<citphrase id="cp46.0">citing from="[2010] FMCA 121">trade marks</citphrase>
<citphrase id="cp46.1">citing from="[2010] FMCA 121">whether infringement of registered trade mark</citphrase>
<citphrase id="cp46.2">citing from="[2010] FMCA 121">trade mark</citphrase>
<citphrase id="cp46.3">citing from="[2010] FMCA 121">sign</citphrase>
<citphrase id="cp46.4">citing from="[2010] FMCA 121">whether substantially identical</citphrase>
<citphrase id="cp46.5">citing from="[2010] FMCA 121">whether deceptively similar</citphrase>
<citphrase id="cp46.6">citing from="[2010] FMCA 121">colloidal silver products.  torts</citphrase>
<citphrase id="cp46.7">citing from="[2010] FMCA 121">passing off</citphrase>
<citphrase id="cp46.8">citing from="[2010] FMCA 121">whether reputation or goodwill</citphrase>
<citphrase id="cp46.9">citing from="[2010] FMCA 121">whether misrepresentation or deception</citphrase>
<citphrase id="cp46.10">citing from="[2010] FMCA 121">colloidal silver products.  trade practices</citphrase>
<citphrase id="cp46.11">citing from="[2010] FMCA 121">whether misleading and deceptive conduct</citphrase>
<citphrase id="cp46.12">citing from="[2010] FMCA 121">whether false or misleading representation concerning goods</citphrase>
<citphrase id="cp46.13">citing from="[2010] FMCA 121">colloidal silver products.</citphrase>
<citphrase id="cp48.0">citing from="[2009] FCA 1437">trade practices</citphrase>
<citphrase id="cp48.1">citing from="[2009] FCA 1437">misleading or deceptive conduct</citphrase>
<citphrase id="cp48.2">citing from="[2009] FCA 1437">representation as to approval or affiliation</citphrase>
<citphrase id="cp48.3">citing from="[2009] FCA 1437">relevance of intent</citphrase>
<citphrase id="cp48.4">citing from="[2009] FCA 1437">loss or damage</citphrase>
<citphrase id="cp48.5">citing from="[2009] FCA 1437">a person who has aided or abetted contravention</citphrase>
<citphrase id="cp48.6">citing from="[2009] FCA 1437">knowledge</citphrase>
<citphrase id="cp48.7">citing from="[2009] FCA 1437">differences to the tort of passing off   trade marks</citphrase>
<citphrase id="cp48.8">citing from="[2009] FCA 1437">function of a trade mark</citphrase>
<citphrase id="cp48.9">citing from="[2009] FCA 1437">deceptively similar</citphrase>
<citphrase id="cp48.10">citing from="[2009] FCA 1437">substantially identical   passing off</citphrase>
<citphrase id="cp48.11">citing from="[2009] FCA 1437">protection of applicant's property</citphrase>
<citphrase id="cp48.12">citing from="[2009] FCA 1437">elements of the cause of action</citphrase>
<citphrase id="cp48.13">citing from="[2009] FCA 1437">relevance of intent</citphrase>
<citphrase id="cp48.14">citing from="[2009] FCA 1437">effect of a disclaimer</citphrase>
<citphrase id="cp48.15">citing from="[2009] FCA 1437">liability of directors as joint tortfeasors   practice and procedure</citphrase>
<citphrase id="cp48.16">citing from="[2009] FCA 1437">interlocutory orders as an admission of all facts</citphrase>
<citphrase id="cp48.17">citing from="[2009] FCA 1437">construction of order made</citphrase>
<citphrase id="cp48.18">citing from="[2009] FCA 1437">withdrawal of an admission</citphrase>
<citphrase id="cp53.0">citing from="[2009] FCAFC 27">trade marks</citphrase>
<citphrase id="cp53.1">citing from="[2009] FCAFC 27">whether the registered trade mark should be removed from the register for non-use</citphrase>
<citphrase id="cp53.2">citing from="[2009] FCAFC 27">meaning of "used...in the course of trade...by a person"</citphrase>
<citphrase id="cp53.3">citing from="[2009] FCAFC 27">whether there was an intention to use or authorisation to use the trade mark</citphrase>
<citphrase id="cp53.4">citing from="[2009] FCAFC 27">whether the actual use of the mark was likely to deceive or cause confusion</citphrase>
<citphrase id="cp53.5">citing from="[2009] FCAFC 27">prospective operation of an order to remove a trade mark from the register</citphrase>
<citphrase id="cp53.6">citing from="[2009] FCAFC 27">infringement</citphrase>
<citphrase id="cp53.7">citing from="[2009] FCAFC 27">deceptive similarity</citphrase>
<citphrase id="cp53.8">citing from="[2009] FCAFC 27">goods of the same description  trade marks act 1995 (cth), ss 6 , 7 , 8 , 10 , 13 , 17 , 92 , 100 , 101 , 120 , 123 , 127  trade marks act 1955</citphrase>
<citphrase id="cp53.9">citing from="[2009] FCAFC 27">1958 (cth), s23(1)(b)   blackadder v good roads machinery company inc [1926] hca 57 ; (1926) 38 clr 332 applied ; carnival cruise lines inc v sitmar cruises limited [1994] fca 936 ; (1994) 120 alr 495 applied ; estex clothing manufacturers pty limited v ellis and goldstein limited (1967) 116 clr 254 followed ; mid sydney pty ltd v australian tourism co ltd (1998) 90 fcr 236 referred to ; jackson  co v napper (1886) 35 ch d 162 cited ; polo textile industries pty ltd v domestic textile corporation pty ltd [1993] fca 203 ; (1993) 42 fcr 227 followed ; re the registered trade mark "yanx" [1951] hca 28 ; (1951) 82 clr 199 applied ; riv-oland marble co (vic) pty ltd v settef spa (1988) 19 fcr 569 discussed ; settef spa v riv-oland marble co (vic) pty ltd (1987) 10 ipr 402 followed ; southern cross refrigerating co v toowoomba foundry pty ltd (1954) 91 clr 592 followed ; s  i publishing pty ltd v australian life saver pty ltd [1999] fca 316 ; (1998) 88 fcr 354 referred to ; transport tyre sales pty ltd v montana tyres rims and tubes pty ltd [1999] fca 329 ; (1999) 93 fcr 421 followed</citphrase>
<citphrase id="cp55.0">citing from="[2009] FCA 135">intellectual property</citphrase>
<citphrase id="cp55.1">citing from="[2009] FCA 135">trade marks</citphrase>
<citphrase id="cp55.2">citing from="[2009] FCA 135">applications for removal of respondent's trade marks from register in respect of certain goods and services</citphrase>
<citphrase id="cp55.3">citing from="[2009] FCA 135">applications made on both grounds in s 92(4) of the trade marks act 1995 (cth)</citphrase>
<citphrase id="cp55.4">citing from="[2009] FCA 135">whether applicant a person aggrieved</citphrase>
<citphrase id="cp55.5">citing from="[2009] FCA 135">respondent made general allegation of trade mark infringement</citphrase>
<citphrase id="cp55.6">citing from="[2009] FCA 135">applicant was a person aggrieved</citphrase>
<citphrase id="cp55.7">citing from="[2009] FCA 135">whether applications complied with trade marks regulations 1995 (cth)</citphrase>
<citphrase id="cp55.8">citing from="[2009] FCA 135">supporting statutory declaration did not make reference to intention to use the trade marks</citphrase>
<citphrase id="cp55.9">citing from="[2009] FCA 135">applications did not comply with the regulations for the purposes of the ground in s 92(4)(a) of the act</citphrase>
<citphrase id="cp55.10">citing from="[2009] FCA 135">respondent has shown use of the trade marks on some computer peripheral devices</citphrase>
<citphrase id="cp55.11">citing from="[2009] FCA 135">separate description of goods for which use established</citphrase>
<citphrase id="cp55.12">citing from="[2009] FCA 135">convergence between computer related goods and consumer electronic products</citphrase>
<citphrase id="cp55.13">citing from="[2009] FCA 135">brand extension</citphrase>
<citphrase id="cp55.14">citing from="[2009] FCA 135">discretion in s 101(3) of the act</citphrase>
<citphrase id="cp55.15">citing from="[2009] FCA 135">discretion exercised to maintain trade mark registrations in their current form with respect to the removal goods</citphrase>
<citphrase id="cp55.16">citing from="[2009] FCA 135">no use of the trade marks in respect of the removal services</citphrase>
<citphrase id="cp55.17">citing from="[2009] FCA 135">no suggestion of convergence of services</citphrase>
<citphrase id="cp55.18">citing from="[2009] FCA 135">trade marks removed from the register in respect of the removal services</citphrase>
<citphrase id="cp56.0">citing from="[2009] FCAFC 7">intellectual property</citphrase>
<citphrase id="cp56.1">citing from="[2009] FCAFC 7">trade marks</citphrase>
<citphrase id="cp56.2">citing from="[2009] FCAFC 7">infringement of trade marks</citphrase>
<citphrase id="cp56.3">citing from="[2009] FCAFC 7">determining an account of profits</citphrase>
<citphrase id="cp56.4">citing from="[2009] FCAFC 7">meaning of good faith for the purpose of s 92(4) of the trade marks act 1995 (cth)</citphrase>
<citphrase id="cp56.5">citing from="[2009] FCAFC 7">some sales not in breach</citphrase>
<citphrase id="cp56.6">citing from="[2009] FCAFC 7">insufficient evidence</citphrase>
<citphrase id="cp56.7">citing from="[2009] FCAFC 7">whether an infringing party can claim remuneration or director's fees for carrying on the infringing activities</citphrase>
<citphrase id="cp56.8">citing from="[2009] FCAFC 7">whether there was a failure to take into account evidence as to the proportion of infringing and non-infringing goods  trade practices</citphrase>
<citphrase id="cp56.9">citing from="[2009] FCAFC 7">tort</citphrase>
<citphrase id="cp56.10">citing from="[2009] FCAFC 7">misleading and deceptive conduct</citphrase>
<citphrase id="cp56.11">citing from="[2009] FCAFC 7">passing off</citphrase>
<citphrase id="cp56.12">citing from="[2009] FCAFC 7">whether a claim with respect to non-infringing sales arising from a prior relationship is made out</citphrase>
<citphrase id="cp60.0">citing from="[2008] FCA 1005">trade marks</citphrase>
<citphrase id="cp60.1">citing from="[2008] FCA 1005">non-use for 3 years</citphrase>
<citphrase id="cp60.2">citing from="[2008] FCA 1005">order for removal of trade mark</citphrase>
<citphrase id="cp60.3">citing from="[2008] FCA 1005">removal sought as from end of non-use period</citphrase>
<citphrase id="cp60.4">citing from="[2008] FCA 1005">order made with effect from date of decision</citphrase>
<citphrase id="cp61.0">citing from="[2008] FCA 970">contracts</citphrase>
<citphrase id="cp61.1">citing from="[2008] FCA 970">whether post-contractual conduct is admissible on the question of what a contract means</citphrase>
<citphrase id="cp61.2">citing from="[2008] FCA 970">relevance of the subjective intentions of the parties to a contract</citphrase>
<citphrase id="cp61.3">citing from="[2008] FCA 970">whether contract may be formed where there is an agreement to agree as to price or other substantive term</citphrase>
<citphrase id="cp61.4">citing from="[2008] FCA 970">whether silence or failure to object to an unsolicited offer may constitute acceptance costs</citphrase>
<citphrase id="cp61.5">citing from="[2008] FCA 970">whether costs should be awarded in favour of applicant where application is dismissed as moot but would otherwise have been successful on the merits  equity</citphrase>
<citphrase id="cp61.6">citing from="[2008] FCA 970">estoppel</citphrase>
<citphrase id="cp61.7">citing from="[2008] FCA 970">whether silence between intermittent threats of infringement may give rise to estoppel</citphrase>
<citphrase id="cp61.8">citing from="[2008] FCA 970">whether equity will intervene when there is an adequate remedy at law</citphrase>
<citphrase id="cp61.9">citing from="[2008] FCA 970">whether silence or failure to object to an unsolicited offer may give rise to an estoppel</citphrase>
<citphrase id="cp61.10">citing from="[2008] FCA 970">whether wrongfully registered proprietor of a trade mark holds the mark on constructive trust for true owner</citphrase>
<citphrase id="cp61.11">citing from="[2008] FCA 970">whether injunction should be granted where there is no showing of likelihood of future infringement  trade marks</citphrase>
<citphrase id="cp61.12">citing from="[2008] FCA 970">appeal from decision of registrar of trade marks that registered proprietor's name be removed from the register due to lack of intent to use the mark in good faith</citphrase>
<citphrase id="cp61.13">citing from="[2008] FCA 970">whether appeal should be dismissed as moot where court cannot grant relief sought even if applicant is successful</citphrase>
<citphrase id="cp61.14">citing from="[2008] FCA 970">how mark is to be defined</citphrase>
<citphrase id="cp61.15">citing from="[2008] FCA 970">whether mark includes or is associated with an image or particular graphic representation</citphrase>
<citphrase id="cp61.16">citing from="[2008] FCA 970">whether ownership rights with respect to a mark are limited to goods of the same description</citphrase>
<citphrase id="cp61.17">citing from="[2008] FCA 970">infringement action based on deceptive similarity</citphrase>
<citphrase id="cp61.18">citing from="[2008] FCA 970">whether side-by-side comparison is required</citphrase>
<citphrase id="cp61.19">citing from="[2008] FCA 970">whether presence or absence of additional descriptive word or associated image will avoid finding of deceptive similarity where distinctive or essential feature of the mark is borrowed</citphrase>
<citphrase id="cp61.20">citing from="[2008] FCA 970">whether evidence of intent to deceive raises rebuttable presumption of consumer confusion</citphrase>
<citphrase id="cp61.21">citing from="[2008] FCA 970">ownership of unregistered mark</citphrase>
<citphrase id="cp61.22">citing from="[2008] FCA 970">right to register</citphrase>
<citphrase id="cp61.23">citing from="[2008] FCA 970">meaning of "person aggrieved" under s 88 of the trade marks act 1995 (cth)</citphrase>
<citphrase id="cp61.24">citing from="[2008] FCA 970">power of court to direct amendment of register by substitution of registered proprietor's name with the applicant's</citphrase>
<citphrase id="cp61.25">citing from="[2008] FCA 970">power and discretion of the court under ss 89 , 122 , 123 , and 124 of the trade marks act 1995 (cth) to refuse relief where a party would otherwise be liable for infringement</citphrase>
<citphrase id="cp61.26">citing from="[2008] FCA 970">quantum</citphrase>
<citphrase id="cp61.27">citing from="[2008] FCA 970">election</citphrase>
<citphrase id="cp61.28">citing from="[2008] FCA 970">whether applicant must elect between damages and account of profits before the close of evidence in non-split trial</citphrase>
<citphrase id="cp61.29">citing from="[2008] FCA 970">whether applicant has the burden of establishing the infringer's gross sales</citphrase>
<citphrase id="cp61.30">citing from="[2008] FCA 970">whether respondent in non-split trial has burden of establishing costs incurred in relation to, including portion of general overhead reasonably attributable to, infringing goods</citphrase>
<citphrase id="cp61.31">citing from="[2008] FCA 970">whether profits may be calculated using a measure of guesswork and estimation</citphrase>
</citphrases>
<citances>
<sentence from="[2011] ATMO 20" id="cs0"/>
<sentence from="[2011] FCA 94" id="cs1">In Kowa Co Ltd v NV Organon [2005] FCA 1282 ; 66 IPR 131 I rejected a contention that s 101(3) required the party seeking the exercise of the discretion to show "exceptional circumstances". Flick J arrived at the same conclusion in E  J Gallo Winery v Lion Nathan (Australia) Pty Ltd [2008] FCA 934 ; (2008) 77 IPR 69 at [198] which was not overturned by the Full Court on the appeal. So also did Bennett J in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 ; 176 FCR 300 at [168] . </sentence>
<sentence from="[2011] FCA 39" id="cs2">In Pioneer Computers , Bennett J at [169] succinctly stated the principles arising from Hermes and adopted by Flick J in E  J Gallo Winery as follows:

 In E  J Gallo [2008] FCA 934 ; 77 IPR 69 at [202] - [203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:

 there had been no abandonment of the trade mark; the registered proprietors of the mark still had a residual reputation in the mark; there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended; the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; the registered proprietors were not aware of the applicant's sales under the mark.  The discretion is unlimited: see Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 ; (2009) 176 FCR 300 at [167] , [172] and [173]. Further, it is unnecessary to demonstrate that ' exceptional circumstances exist before the discretion may be exercised in favour of the holder of the trademark ': see Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 66 IPR 131 at [98] ; Pioneer Computers at [168]; E  J Gallo Winery v Lion Nathan Australia Pty Ltd (ACN 008 596 370) [2008] FCA 934 ; (2008) 77 IPR 69 at [198] . </sentence>
<sentence from="[2010] FCA 1380" id="cs3">In E  J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69 ; [2008] FCA 934 Flick J at [193]-[213] considered the principles that should inform the exercise of the discretion conferred by s 101(3). In light of his Honour's analysis in that case, it is not necessary for me to set out a detailed discussion of those principles. I would note, however, that as Flick J observed (at [198]), the discretion conferred by s 101(3) is unlike the discretion involved in, say, removal actions formerly brought under s 23 of the repealed Act (see also Lander J in Kowa Company Ltd v N V Organon (2005) 223 ALR 27 ; [2005] FCA 1282 at [97] - [98]). Significantly, the discretion under s 101(3) is not conditioned on the need to establish "exceptional circumstances" before the discretion can be exercised favourably to the trade mark owner. However, as s 101(3) makes clear, the Court (or the Registrar, as the case might be) may only decide that the trade mark should not be removed from the Register "if satisfied that it is reasonable to do so". This requires, in my view, the Court (or the Registrar) to be positively satisfied of that condition. In my view it is the opponent for removal who bears the burden of persuasion on that issue. </sentence>
<sentence from="[2010] ATMO 102" id="cs4">The choice of forum and grounds for this matter are thus inappropriate. In Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 Gordon J stated at paragraph 8:
Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187] - [192] (examining the meaning of "good faith" under related provisions of the TMA). However, during the course of the hearings it became apparent that what LE 2003 really wanted, and should have applied for in the first place, was the expungement of the registrations by Edwards under s 88 of the TMA on the basis that Edwards was not the owner of the unregistered marks: ss 52 and 58 of the TMA. I therefore delayed giving judgment in VID 934 of 2006 so that a separate application could be brought on that basis and the matters resolved together. </sentence>
<sentence from="[2010] ATMO 94" id="cs5">He emphasized the discretion is no longer constrained by any requirement to establish "exceptional circumstances": E  J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 at paragraph 198. </sentence>
<sentence from="[2010] ATMO 65" id="cs6">It is questionable whether or not this evidence goes to the 'good faith' of the opponent, given the interpretation of the expression by the Federal Court. Mr. Ziehlke referred to previous decisions of the Registrar including Bunter v Hoborama LLC [13] and Edwards v Liquid Engineering [14] . However, the interpretation of the expression 'in good faith' favoured in those decisions before the Registrar have been superseded by the comments in the Federal Court appeal to the latter case [15] , where it was said (emphasis added):
...I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions : see generally E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187] - [192]...
 </sentence>
<sentence from="[2010] FCA 664" id="cs7">I accept, as Sports Warehouse contended, that a sign may be registrable as a trade mark even though it is used together with another trade mark, and that there can still be use of a mark where it is a component of a larger composite mark: see Chocolaterie Guylian at 93 [97]; also E  J Gallo Winery at 662 [68]-[69]; also E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 ; [2008] FCA 934 ; (2008) 77 IPR 69 at 108 [186] (Flick J). Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184 ; (2007) 74 IPR 246 (' Colorado ') is not authority for the contrary proposition. Each case turns on its own facts and the trade mark in question viewed in the context of those facts. In Colorado Allsop J held that on the facts of that case the significant use as a trade mark was use as a composite mark and that there was no relevant use of the word "COLORADO" as a separate mark: 273 [110] (Allsop J); see also 225 [36] per Gyles J. Where an application for registration relies on use, the question is whether the particular sign for which registration is sought has itself been used as a trade mark so as to become capable of distinguishing the relevant goods or services. In my view, when the "TW" logo was placed in close association with the words "TENNIS WAREHOUSE" in 2003, this had the effect of substantially diluting any trade mark significance that attached to the words "TENNIS WAREHOUSE" by themselves. </sentence>
<sentence from="[2010] ATMO 47" id="cs8">Trade in alcoholic beverages in Australia has changed since then. In E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 ; (2008) 77 IPR 69 , Flick J considered whether beer and wine are goods of the same description. At page 85 he found on the evidence that:
 [P]roducers of alcoholic beverages are no longer confined to the production of beer, as opposed to wine, or even as opposed to other alcoholic beverages such as rum or whisky. The large producers now produce a range of products and market themselves as doing so. Corporations which were once brewers now seek to develop their business through the acquisition of wineries, and joint ventures are developed as between producers of rum and spirits and the brewers. Companies which were once brewers now market and distribute a range of products including beer, wine, spirits, ciders and non-alcoholic drinks. </sentence>
<sentence from="[2010] ATMO 42" id="cs9">Content that is not popular may be deliberately omitted if not visited often. [3] E  J Gallo Winery v. Lion Nathan Australia Pty. Limited [2008] FCA 934 ; (2008) AIPC 92-293 at paragraphs 124-130 inclusive per Justice Flick at first instance. While this decision has been appealed both to the Full Bench of the Federal Court and to the High Court, the issue of the Wayback Machine was not considered on appeal. [4] The relevant decisions of which I am presently aware are Source Homeloans Pty.</sentence>
<sentence from="[2010] ATMO 41" id="cs10"/>
<sentence from="[2010] HCA 15" id="cs11">The primary judge found that the combination of the words "Barefoot" and "Radler" in the trade mark BAREFOOT RADLER had its creative origin as follows. Radler is the German word for cyclist, and the term is traditionally used to describe a drink of beer mixed with lemonade developed in Germany in 1922, to meet the demand of groups of cyclists who "wanted a more refreshing drink so they could continue on their journey without falling off their bicycles! " [3] The primary judge found that it had occurred to Lion Nathan's Consumer Insight Manager to use the word "Barefoot" in connection with "Radler" after he saw a horse-racing "Form Guide" in which one of the racehorses was named "Barefootonbondi".
  This matter concerns an application to remove, from the Register of Trade Marks ("the Register"), a trade mark in respect of which the appellant, E.  J. Gallo Winery ("Gallo"), is the registered owner. In the Federal Court of Australia, Gallo claimed that the respondent, Lion Nathan Australia Pty Limited ("Lion Nathan"), had infringed Gallo's Australian trade mark registration no 787765 for the trade mark "BAREFOOT", registered since 9 March 1999 under the provisions of the Trade Marks Act 1995 (Cth) ("the Trade Marks Act ") in class 33 in respect of "Wines being goods in class 33" ("the registered trade mark"). Gallo was unsuccessful in this infringement claim before the primary judge (Flick J) [1] but successful on appeal to the Full Court of the Federal Court of Australia (Moore, Edmonds and Gilmour JJ) ("the Full Court") [2] . By an amended cross-claim in the proceedings at first instance, Lion Nathan sought an order that Gallo's registered trade mark be removed from the Register on the grounds of non-use during the three year period from 7 May 2004 to 8 May 2007 ("the statutory period"). It is not disputed that this is the relevant period.</sentence>
<sentence from="[2010] FMCA 121" id="cs12">Determination of whether a trade mark is "deceptively similar" does not involve a side-by-side comparison, but a determination as to "whether there is a likelihood of deception or confusion from a recollection or impression of the registered trade mark". [90] What is to be compared is the impression a person would have based on a recollection of the registered trade mark normally used and the impugned trade mark as it appears in the use complained of, the impression being that of the person of ordinary intelligence and memory. Some attempt to estimate the impression produced on the minds of such persons must be made, but it is the impression carried away and retained that is necessarily the basis of any mistaken belief that the challenge to the trade mark is the same, allowing for the fact that the impression (based on recollection) may be imperfect. Ultimately whether a trade mark is likely to deceive or cause confusion is, a matter of impression and common sense. [91] </sentence>
<sentence from="[2010] ATMO 17" id="cs13">Commercially speaking, it is not shown that the use made by the Plaintiffs of this mark was not an ordinary and genuine use, and it certainly was substantial. If that is so, then it seems to me that the use is not disqualified...

Gummow J considered the meaning of the expression "use in good faith" as a criterion for infringement in Johnson  Johnson Australia Pty Ltd v Stirling Pharmaceuticals Pty Ltd [1991] FCA 310 ; (1991) 30 FCR 326 at 354, pointing out that:

There is, in relation to the comparable provisions in the British Act of 1938, authority to the effect that in order to qualify as such use there must be a real or genuine use in a commercial sense, rather than colourable activity and "token" use designed to lead trade rivals to think that the registered proprietor was using its mark in a way which gave it the protection of the legislation. See also E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 ; [2008] 77 IPR 69 at [99] - [707] and the authorities there referred to. We were directed to several other authorities which took a broader view of the expression but insofar as they conflict with the above authorities we do not consider they were correct. In the present case having regard to the above authorities, we do not consider that her Honour erred when she observed at [8] of her reasons that s 92(4) of the Act requires no more than a genuine intent to use the mark for commercial purposes, and that the reference to bona fide intention to use is not sufficiently wide to encompass the circumstances of the present case. Mr Bebber also mentioned in his submissions that the case had been appealed to the Federal Court. However, he put it to me that, despite her decision to recommend to the removal applicant that what it really needed to make was an application for cancellation of the trade mark (with which it ultimately succeeded), Gordon J did not overturn the findings of the delegate, because she did not determine the issue of whether 'good faith' in section 92(4) involves enquiries as to honesty or subjective intentions. He attributed this interpretation to her comments that:
Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E  J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69 ; [2008] FCA 934 at [187] ---[192] (Gallo) (examining the meaning of "good faith" under related provisions of the TMA). [9]
 </sentence>
<sentence from="[2009] FCA 1437" id="cs14">In the absence of any statutory definition of the phrase " substantially identical ", the meaning of that phrase is to be determined by its ordinary or usual meaning, namely that which is " in substance " the same or " essentially " the same: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 at [70] [1999] FCAFC 1020 ; , 93 FCR 365 at 387 per Branson J. Whether marks are " substantially identical " requires a side by side comparison and depends on the Court's own judgment: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 ; (1963) 109 CLR 407 at 414. Windeyer J there observed (some citations omitted):

 In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v Vick Chemical Co [(1951) 68 R.P.C. 103 , at p. 106]. Whether there is substantial identity is a question of fact ...

In order to determine whether marks are " substantially identical ", they should thus be compared side by side with their similarities and differences noted: Coca-Cola Co [1999] FCA 1721 at [38] , 96 FCR at 121 per Black CJ, Sundberg and Finkelstein JJ. See also: E  J Gallo Winery [2008] FCA 934 at [41] to [43], 77 IPR at 78.  A " trade mark " is defined by s 17 of the Trade Marks Act as being:

 ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Registration of a trade mark confers " exclusive rights ". Section 20(1) provides as follows:

 If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:

 (a) to use the trade mark; and
 (b) to authorise other persons to use the trade mark;

 in relation to the goods and/or services in respect of which the trade mark is registered.

The function of a trade mark is " to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods --- to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market ": In re Powell's Trade-Mark [1893] 2 Ch 388 at 403 to 404 per Bowen LJ. Use " as a trade mark " in s 120(1) is use of the mark as a " badge of origin " in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , [1999] FCA 1721 ; 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] , [2008] FCA 605 ; 76 IPR 161 at 171 per Sundberg J; E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [19] , [2008] FCA 934 ; [2008] FCA 934 ; 77 IPR 69 at 73 to 74. Noted: Andreazza A, "Barefoot Gets the Boot: Trade Mark Infringement and Removal for Non-Use" (2008) 21(5) IPLB 85. For subsequent proceedings, see E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386 ; E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180.  By way of contrast, whether a mark is " deceptively similar " is not to be determined by a side by side comparison, but rather by reference to whether there is a likelihood of deception or confusion from a recollection or impression of the registered mark: Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390 at [143] [2002] FCA 390 ; , 56 IPR 182 at 216. Allsop J there observed (citations omitted):

 [143] The question of deceptive similarity must be judged by a comparison different from the side by side comparison undertaken to assess substantial identity; the question being the likelihood of deception or confusion from a recollection or impression of the registered mark. Thus, a side by side comparison is inadequate, and too narrow a test. The comparison is between, on the one hand, the impression based on recollection of the registered mark used in a normal or fair manner that persons of ordinary intelligence and memory would have, and, on the other hand, the impressions that such persons would get from the impugned mark as it appears in the use complained of ...

See also: E  J Gallo Winery [2008] FCA 934 at [53] to [55], 77 IPR at 79 to 80. It is not appropriate when making this comparison to undertake a wider enquiry of the kind undertaken in a passing off action or in a proceeding in which a contravention of Part V of the Trade Practices Act is alleged: CA Henschke  Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at [44] , [2000] FCA 1539 ; 52 IPR 42 at 62 per Ryan, Branson and Lehane JJ.
 </sentence>
<sentence from="[2009] ATMO 87" id="cs15">E  J Gallo Winery v Lion Nathan Australia Pty Limited [SEC=UNCLASSIFIED] [2009] ATMO 87 (31 October 2009)

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Last Updated: 4 November 2009

 TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

 Re: Opposition by E  J Gallo Winery to registration of trade mark application 1168037(32) - BAREFOOT - filed in the name of Lion Nathan Australia Pty Limited --- and --- Applications under Regulations 5.15 and 5.16 by E  J Gallo Winery and objection thereto by Lion Nathan Australia Pty Limited. DELEGATE: Debrett Lyons REPRESENTATION: Applicant: Matthew Darke (of counsel) assisted by Dale Brampton (also of counsel).
 Opponent: Michael Hall (of counsel) DECISION: 2009 ATMO 87
 Regulation 5.15: Application for extension of time in which to serve evidence in support allowed. Applicant given one month to file evidence in support.
 Regulation 5.16: Application for suspension of opposition proceedings refused.
 Background
 This matter is set against a background of ongoing litigation between the parties over use of the trade mark the subject of application number 1168037 [1] , first in the Federal Court of Australia [2] and now pending before the High Court of Australia. </sentence>
<sentence from="[2009] ATMO 41" id="cs16"/>
<sentence from="[2009] ATMO 38" id="cs17">To make an end of this matter, I am not so satisfied under any of those headings. As to the proper approach to the exercise of the discretion, I accept that decisions such as Figgins Holdings Pty Ltd v Beltrami SpA (1998) 46 IPR 411 , to which Mr Fitzpatrick referred, have been overtaken by more authoritative precedent, see Kowa Co Ltd v NV Organon [2005] FCA 1282 ; (2005) 66 IPR 131. Consistently, in E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 ; (2008) 77 IPR 69 at 110, Flick J said:
And it is a discretion, it is considered, no longer constrained by any requirement to establish "exceptional circumstances"; it is a discretion which may be exercised "when it is reasonable to do so": Kowa , supra. Lander J there indicated that he was of the view that it was not reasonable not to remove the mark in issue. Of the discretion, his Honour concluded (at [97]---[98]):

[97] ...</sentence>
<sentence from="[2009] ATMO 31" id="cs18">Early decisions considering exercise of the discretion under s.101 suggested an opponent would need to show special facts or circumstances, or an overriding question of public interest, to warrant leaving a mark on the Register in the absence of relevant use [4] . In the recent decision in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 (23 February 2009), however, Bennett, J said: The discretion under s.101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s.92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations. In Kowa Company [5] at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show "exceptional circumstances". In E  J Gallo [6] at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s.101(3). In E  J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion: there had been no abandonment of the trade mark; the registered proprietors of the mark still had a residual reputation in the mark; there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended; the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; the registered proprietors were not aware of the applicant's sales under the mark. </sentence>
<sentence from="[2009] FCAFC 27" id="cs19">The primary judge published reasons on 20 June 2008 ( E  J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934) which first addressed the question of infringement and secondly addressed the use of the registered mark by the registered owner in the context of determining whether the mark should be removed from the Register. Further reasons were published on 27 June 2008 ( E  J Gallo Winery v Lion Nathan Australia Pty Limited (No 2) [2008] FCA 1005) which concerned the day on which the removal from the Register should take effect. </sentence>
<sentence from="[2009] ATMO 18" id="cs20">To the contrary, the negotiations with Gaffney indicate a failure to proceed, they can be interpreted as indicating a lack of interest or commitment on the part of the Removal Opponent, and they demonstrate that, far from substantiating an intention on the part of the Removal Opponent to enter the Australian market for clothing, the Removal Opponent remains indecisive in relation to this country. In reaching my finding in this regard, I draw support from the decision of Justice Flick in E.  J. Gallo Winery v. Lion Nathan Australia Pty. Limited [2008] FCA 934 who found in the context of that case that the negotiations which had there taken place "had not proceeded beyond just that, negotiations. " [3] </sentence>
<sentence from="[2009] FCA 135" id="cs21">Pioneer Australia is a wholly owned subsidiary of Pioneer KK. The use of the marks indicates a connection in the course of trade with the registered proprietor of the marks, Pioneer KK. It cannot be said that the use of the marks by Pioneer Australia is somehow deceptive by indicating a different origin of the goods (see also E  J Gallo Winery v Lion Nathan Australia Pty Ltd (ACN 008 596 370) [2008] FCA 934 ; (2008) 77 IPR 69 at [102] ). </sentence>
<sentence from="[2009] FCAFC 7" id="cs22">Gummow J considered the meaning of the expression "use in good faith" as a criterion for infringement in Johnson  Johnson Australia Pty Ltd v Stirling Pharmaceuticals Pty Ltd [1991] FCA 310 ; (1991) 30 FCR 326 at 354, pointing out that:
There is, in relation to the comparable provisions in the British Act of 1938, authority to the effect that in order to qualify as such use there must be a real or genuine use in a commercial sense, rather than colourable activity and "token" use designed to lead trade rivals to think that the registered proprietor was using its mark in a way which gave it the protection of the legislation. See also E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 ; [2008] 77 IPR 69 at [99] - [707] and the authorities there referred to.
 </sentence>
<sentence from="[2009] ATMO 9" id="cs23">The comparison is between mark and mark : Pfizer Products Inc. v Karam , 2006] FCA 1663. The Mark is identical (not just "substantially identical") with the Registered Mark. The authorities regarding "substantial identity" have recently been summarised by Justice Flick in E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 ; (2008) 77 IPR 69 , [41 --- 43].The two main points are that where the marks are "substantially identical" is to be determined by the ordinary or usual meaning of such a phrase, namely that which is in substance the same or essentially the same and whether the marks are "substantially identical" requires a side-by-side comparison and depends on the Court's own judgment ( Shell v Esso [1963] HCA 66 ; (1963) 109 CLR 407 , 414 per Windeyer J). Justice Flick also discussed the meaning of the phrase "deceptively similar" in Gallo at [52 --- 58]. Section 14 of the Act defines goods and services as being "similar" to other goods and services if "they are the same" or "they are of the same description".</sentence>
<sentence from="[2008] ATMO 94" id="cs24">That case was appealed to the Federal Court where Gordon J. noted in the preface to her decision that "the issues have not been framed in a way that accurately identifies the dispute between the parties". In that case, her honour said:
The "appeal" came on for hearing on 3 May and again on 12 September 2007. The principal question presented in those hearings was whether evidence of a bona fide intention to use a mark for trading purposes is sufficient to demonstrate good faith even where the applicant for registration gained knowledge of the mark as an employee of the owner of the unregistered mark and in circumstances tending to suggest a breach of fiduciary duties or even (malicious) intent to block a competitor. Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187] - [192] (examining the meaning of "good faith" under related provisions of the TMA). However, during the course of the hearings it became apparent that what LE 2003 really wanted, and should have applied for in the first place, was the expungement of the registrations by Edwards under s 88 of the TMA on the basis that Edwards was not the owner of the unregistered marks: ss 52 and 58 of the TMA. I therefore delayed giving judgment in VID 934 of 2006 so that a separate application could be brought on that basis and the matters resolved together. </sentence>
<sentence from="[2008] ATMO 62" id="cs25">What constitutes goods of the same description was the subject of recent consideration by Flick J in E.  J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 at paragraph 67:
It is again accepted that it is a question of fact and impression whether goods are "of the same description": Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 545 per Needham J. In resolving this question, the fact that goods serve different purposes is not conclusive; nor is any one particular consideration conclusive. Assistance, however, has been provided as to those matters which may be taken into account: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.</sentence>
<sentence from="[2008] FCA 1005" id="cs26">1 In this matter reasons for decision were published on 20 June 2008 ( E  J Gallo Winery v Lion Nathan [2008] FCA 934) and the matter was stood over to this morning for the purpose of making final orders disposing of the proceeding. </sentence>
<sentence from="[2008] FCA 970" id="cs27">8 Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E  J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187] - [192] (examining the meaning of "good faith" under related provisions of the TMA). However, during the course of the hearings it became apparent that what LE 2003 really wanted, and should have applied for in the first place, was the expungement of the registrations by Edwards under s 88 of the TMA on the basis that Edwards was not the owner of the unregistered marks: ss 52 and 58 of the TMA. I therefore delayed giving judgment in VID 934 of 2006 so that a separate application could be brought on that basis and the matters resolved together.</sentence>
</citances>
<legistitles>
<title id="l0">EVIDENCE ACT 1995 </title>
<title id="l1">EVIDENCE ACT 1995 - SECT 69 Exception: business records</title>
<title id="l2">EVIDENCE ACT 1995 - SECT 146 Evidence produced by processes, machines and other devices</title>
<title id="l3">EVIDENCE ACT 1995 - SECT 147 Documents produced by processes, machines and other devices in the course of business</title>
<title id="l4">TRADE MARKS ACT 1995 </title>
<title id="l5">TRADE MARKS ACT 1995 - SECT 6 Definitions</title>
<title id="l6">TRADE MARKS ACT 1995 - SECT 7 Use of trade mark</title>
<title id="l7">TRADE MARKS ACT 1995 - SECT 8 Definitions of authorised user and authorised use</title>
<title id="l8">TRADE MARKS ACT 1995 - SECT 10 Definition of deceptively similar</title>
<title id="l9">TRADE MARKS ACT 1995 - SECT 17 What is a trade mark?</title>
<title id="l10">TRADE MARKS ACT 1995 - SECT 92 Application for removal of trade mark from Register etc.</title>
<title id="l11">TRADE MARKS ACT 1995 - SECT 100 Burden on opponent to establish use of trade mark etc.</title>
<title id="l12">TRADE MARKS ACT 1995 - SECT 101 Determination of opposed application--general</title>
<title id="l13">TRADE MARKS ACT 1995 - SECT 120 When is a registered trade mark infringed?</title>
</legistitles>
</case>