Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380

Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380

Applicant's claims failed because the respondents' use of 'OPTICAL 88' was in good faith as their business name and covered by prior continuous use defence for marks registered after the use commenced; copyright in applicant’s logo not infringed as first respondent’s logo was independently designed and not a reproduction or substantial part; applicant lacked sufficient reputation in Australia as at relevant date to sustain misleading and deceptive conduct or passing-off claim; cross-claim for removal succeeded as applicant did not use challenged marks in Australia for relevant goods or services.

Jurisdiction
Australia
Judgment Date
10 December 2010
Procedural Posture
Intellectual Property—trade Marks, Copyright, Passing Off; Cross Claim for Trade Mark Removal / Final Judgment on Liability and Cross Claim (quantum to Be Determined Separately)
Outcome
All applicant's claims dismissed; cross-claim for removal of trade marks succeeded in part.
Legal Topics
['trade Mark Infringement' 'trade Mark Removal for Non Use' 'copyright Infringement' 'misleading and Deceptive Conduct' 'passing Off']
['intellectual Property' 'competition and Consumer Law'] ['trade Mark Infringement' 'trade Mark Removal for Non Use' 'copyright Infringement' 'misleading and Deceptive Conduct' 'passing Off']

Case Brief

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Procedural Posture

Intellectual Property—trade Marks, Copyright, Passing Off; Cross Claim for Trade Mark Removal / Final Judgment on Liability and Cross Claim (quantum to Be Determined Separately)

Legal Issues

  1. 1 ["Whether respondents infringed applicant's registered trade marks under Trade Marks Act 1995 (Cth)" "Whether respondents infringed applicant's copyright in its logo under Copyright Act 1968 (Cth)" 'Whether respondents engaged in misleading or deceptive conduct under Trade Practices Act 1974 (Cth) and committed passing off' 'Whether trade marks should be removed for non-use']

Ratio Decidendi

Applicant's claims failed because the respondents' use of 'OPTICAL 88' was in good faith as their business name and covered by prior continuous use defence for marks registered after the use commenced; copyright in applicant’s logo not infringed as first respondent’s logo was independently designed and not a reproduction or substantial part; applicant lacked sufficient reputation in Australia as at relevant date to sustain misleading and deceptive conduct or passing-off claim; cross-claim for removal succeeded as applicant did not use challenged marks in Australia for relevant goods or services.

Court Disposition

All applicant's claims dismissed; cross-claim for removal of trade marks succeeded in part.

Orders

  • ['Applicant to bring in short minutes of order giving effect to reasons for judgment.' 'Trade marks 520707 and 1083966 removed in respect of goods/services where applicant failed to rebut non-use; 1160979 removed in part.' 'No orders on quantum at this stage (to be determined separately).']