Selth v Australasian Barrister Chambers Pty Ltd (No 3) [2017] FCA 649

Selth v Australasian Barrister Chambers Pty Ltd (No 3) [2017] FCA 649

Chambers' registration and preservation of Australian Bar Association and Australian Barristers Association, and the respondents' use of AustBar, AustBar Chambers, austbar and austbaradr electronic identifiers, were uses or threatened uses of signs substantially identical with or deceptively similar to the ABA marks, or conduct likely to mislead reasonable members of relevant cohorts into believing an ABA association, sponsorship or approval. The ABA trade mark title was not defective, and the website disclaimers were insufficient to cure the infringement or misleading conduct. In the NSWBA proceeding, BarADR was the badge of origin selected and used by the NSWBA for its ADR service; the...

Jurisdiction
Australia
Judgment Date
08 June 2017
Procedural Posture
Federal Court Intellectual Property Proceeding Concerning Trade Mark Infringement and Australian Consumer Law Claims, With Two Actions Heard Together / Judgment After Hearing; Proposed Orders and Costs Submissions Directed; Costs Reserved
Outcome
The ABA applicants were substantially successful, subject to findings including that the name Australasian Barrister Chambers alone was not substantially identical with or deceptively similar to the ABA marks. The NSWBA was successful. The Court directed proposed orders and costs submissions and reserved costs.
Legal Topics
['infringement Under S 120(1) of the Trade Marks Act 1995 (cth)' 'substantial Identity and Deceptive Similarity' 'misleading or Deceptive Conduct' 'false or Misleading Representations of Sponsorship, Approval or Affiliation' 'business Name Registration' 'domain Names and Website Use' 'joint Tortfeasor Liability' 'knowingly Concerned in Contraventions']
['intellectual Property' 'trade Marks' 'australian Consumer Law' 'business Names' 'accessorial Liability'] ['infringement Under S 120(1) of the Trade Marks Act 1995 (cth)' 'substantial Identity and Deceptive Similarity' 'misleading or Deceptive Conduct' 'false or Misleading Representations of Sponsorship, Approval or Affiliation' 'business Name Registration' 'domain Names and Website Use' 'joint Tortfeasor Liability' 'knowingly Concerned in Contraventions']

Case Brief

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Procedural Posture

Federal Court Intellectual Property Proceeding Concerning Trade Mark Infringement and Australian Consumer Law Claims, With Two Actions Heard Together / Judgment After Hearing; Proposed Orders and Costs Submissions Directed; Costs Reserved

Legal Issues

  1. 1 ["Whether Chambers' registration and use or threatened use of the business names Australian Bar Association and Australian Barristers Association infringed ABA Ltd's registered trade marks TM 1587902 and TM 1558252." "Whether the respondents' use of AustBar, AustBar Chambers, AustBar ADR, austbar domain names, austbaradr domain names, Twitter identifiers and scales of justice devices infringed the ABA trade marks or contravened ss 18(1), 29(1)(g) and 29(1)(h) of the Australian Consumer Law." 'Whether the ABAU or ABA Ltd had members and whether title to the ABA trade marks was validly held and assigned to ABA Ltd.' "Whether disclaimers on the respondents' websites avoided trade mark infringement or Australian Consumer Law contraventions." 'Whether Austbar Pty Ltd, DRA and Mr Minus were liable for the conduct complained of in the ABA proceeding.' "Whether the respondents' use of BarADR and the domain name www.baradr.com.au infringed the NSWBA's registered trade mark TM 1564401 BARADR." "Whether the respondents' BarADR, AustBar ADR and related website conduct contravened ss 18(1), 29(1)(g) and 29(1)(h) of the Australian Consumer Law." 'Whether Mr Minus was liable as a joint tortfeasor or as a person knowingly concerned in the relevant contraventions.']

Ratio Decidendi

Chambers' registration and preservation of Australian Bar Association and Australian Barristers Association, and the respondents' use of AustBar, AustBar Chambers, austbar and austbaradr electronic identifiers, were uses or threatened uses of signs substantially identical with or deceptively similar to the ABA marks, or conduct likely to mislead reasonable members of relevant cohorts into believing an ABA association, sponsorship or approval. The ABA trade mark title was not defective, and the website disclaimers were insufficient to cure the infringement or misleading conduct. In the NSWBA proceeding, BarADR was the badge of origin selected and used by the NSWBA for its ADR service; the...

Court Disposition

The ABA applicants were substantially successful, subject to findings including that the name Australasian Barrister Chambers alone was not substantially identical with or deceptively similar to the ABA marks. The NSWBA was successful. The Court directed proposed orders and costs submissions and reserved costs.

Orders

  • ['NSD 975 of 2014: The applicants are directed to submit proposed orders arising out of the reasons for judgment published today.' 'NSD 975 of 2014: The parties are directed to file and serve submissions in relation to the costs of and incidental to the proceedings within three weeks.' 'NSD 975 of 2014: Costs be...