Protiviti Inc v Probiti Pty Ltd [2005] FCA 1114

Protiviti Inc v Probiti Pty Ltd [2005] FCA 1114

The Court granted interlocutory relief because there was a serious triable issue that "Probiti" was deceptively similar to the registered "Protiviti" marks: both were invented words, began with "Pro", ended with the unusual pronounced "i", and were used in overlapping business areas, with circumstances supporting an inference of likely confusion. The balance of convenience favoured the applicants because they faced a distinct possibility of unascertainable and irremediable marketplace damage, while the respondents' business was recent, the evidence of its business was general and vague, and they could continue their work without using the name Probiti. The foreshadowed expungement...

Jurisdiction
Australia
Judgment Date
05 August 2005
Procedural Posture
Trade Mark Infringement, Misleading and Deceptive Conduct and Passing Off Proceeding / Application for Interlocutory Injunction
Outcome
Interlocutory injunction granted; costs reserved; orders stayed for 7 days.
Legal Topics
['trade Mark Infringement' 'interlocutory Injunction' 'misleading or Deceptive Similarity' 'balance of Convenience' 'expungement of Trade Marks']
['trade Marks' 'intellectual Property' 'consumer Law' 'passing Off'] ['trade Mark Infringement' 'interlocutory Injunction' 'misleading or Deceptive Similarity' 'balance of Convenience' 'expungement of Trade Marks']

Case Brief

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Procedural Posture

Trade Mark Infringement, Misleading and Deceptive Conduct and Passing Off Proceeding / Application for Interlocutory Injunction

Legal Issues

  1. 1 ['Whether the respondents\' use of the name "Probiti" raised a triable issue of infringement of the applicants\' registered "Protiviti" trade marks by being substantially identical with or deceptively similar to them.' 'Whether the balance of convenience favoured interlocutory restraint of the respondents\' use of "Probiti" pending trial.' 'Whether a proposed cross-claim for expungement of the Protiviti marks undermined interlocutory relief.']

Ratio Decidendi

The Court granted interlocutory relief because there was a serious triable issue that "Probiti" was deceptively similar to the registered "Protiviti" marks: both were invented words, began with "Pro", ended with the unusual pronounced "i", and were used in overlapping business areas, with circumstances supporting an inference of likely confusion. The balance of convenience favoured the applicants because they faced a distinct possibility of unascertainable and irremediable marketplace damage, while the respondents' business was recent, the evidence of its business was general and vague, and they could continue their work without using the name Probiti. The foreshadowed expungement...

Court Disposition

Interlocutory injunction granted; costs reserved; orders stayed for 7 days.

Orders

  • ['Until the trial of this proceeding or until further order, the respondents be restrained from carrying on business or providing or offering to provide business consulting services in Australia, or advertising, marketing or promoting such a business, including the domain name www.probiti.com at the website located...