EOS Australia Pty Ltd v Expo Tomei Pty Ltd [1998] FCA 1044

EOS Australia Pty Ltd v Expo Tomei Pty Ltd [1998] FCA 1044

The respondent’s continuous use of the mark LOOK-C in Australia prior to both the applicant’s first use and the date of registration gives it a right to use the mark under s 124 of the Trade Marks Act 1995 (Cth). The applicant was not the owner of the mark at registration and could not validly prevent the respondent’s use. Claims of estoppel and passing off fail for lack of requisite representations, reliance, or sufficient association of the mark with the applicant. As the registration was invalid, the register must be rectified.

Parties
Applicant and Cross Respondent: EOS Australia Pty Ltd (ACN 064 051 056); Respondent and Cross Claimant: Expo Tomei Pty Ltd (ACN 052 884 652)
Jurisdiction
Australia
Judgment Date
28 August 1998
Procedural Posture
Application and Cross Claim / Liability Determination (excluding Damages) and Cross Claim on Rectification
Outcome
Application dismissed; cross-claim for rectification of register allowed; other relief dismissed.
Legal Topics
Trade Marks, Passing Off, Rectification of Register, Misleading or Deceptive Conduct, Ownership of Trade Mark, Estoppel, Discretionary Relief
Intellectual Property Tort Consumer Law Trade Marks Passing Off Rectification of Register Misleading or Deceptive Conduct Ownership of Trade Mark +2 more

Case Brief

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Parties

EOS Australia Pty Ltd (ACN 064 051 056)

Applicant and Cross Respondent

Expo Tomei Pty Ltd (ACN 052 884 652)

Respondent and Cross Claimant

Procedural Posture

Application and Cross Claim / Liability Determination (excluding Damages) and Cross Claim on Rectification

Legal Issues

  1. 1 Whether the respondent's continuous use of the mark LOOK-C precluded finding of infringement under Trade Marks Act 1995 (Cth) section 120
  2. 2 Whether the applicant was entitled to claim ownership of the LOOK-C mark at registration
  3. 3 Whether the respondent was estopped from relying on continuous use by reason of representation or promissory estoppel

Ratio Decidendi

The respondent’s continuous use of the mark LOOK-C in Australia prior to both the applicant’s first use and the date of registration gives it a right to use the mark under s 124 of the Trade Marks Act 1995 (Cth). The applicant was not the owner of the mark at registration and could not validly prevent the respondent’s use. Claims of estoppel and passing off fail for lack of requisite representations, reliance, or sufficient association of the mark with the applicant. As the registration was invalid, the register must be rectified.

Court Disposition

Application dismissed; cross-claim for rectification of register allowed; other relief dismissed.

Orders

  • The application be dismissed.
  • The Register be rectified by the cancellation of Trade Mark No. 717018.