Taxiprop Pty Ltd v Neutron Holdings Inc [2020] FCA 1565

Taxiprop Pty Ltd v Neutron Holdings Inc [2020] FCA 1565

Taxiprop established use of the LIME mark in good faith during the relevant period only in respect of taxi services; real and genuine use was demonstrated on two branded taxis with significant rides and revenue. No sufficient use or residual reputation was shown regarding other services. The discretion under s101(3) should not be exercised to maintain registration for unused services because of long non-use, lack of intention to expand, and public interest in a pure Register. Neutron's micro-mobility services were found not of the same description nor closely related to taxi services, so no infringement or misleading conduct was established.

Parties
Applicant / Cross Respondent: Taxiprop Pty Ltd ACN 161 447 605; First Respondent / First Cross Claimant: Neutron Holdings, Inc.; Second Respondent / Second Cross Claimant: Lime Network Pty Ltd ACN 628 322 930
Jurisdiction
Australia
Judgment Date
29 October 2020
Procedural Posture
Trade Mark Removal and Infringement Application With Cross Claim for Non Use / Post Trial Interlocutory Adjournment for Further Hearing on Relief/orders
Outcome
Proceeding adjourned for further hearing on consequential relief and orders. The court concluded the LIME mark to be removed for all services except taxi services; no infringement was found of the remaining registration; misleading conduct and passing off claims failed.
Legal Topics
Trade Marks, Non Use Removal, Trade Mark Infringement, Authorised User, Control of Use, Good Faith Use, Misleading or Deceptive Conduct, Passing Off
Intellectual Property Trade Marks Non Use Removal Trade Mark Infringement Authorised User Control of Use Good Faith Use Misleading or Deceptive Conduct +1 more

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Parties

Taxiprop Pty Ltd ACN 161 447 605

Applicant / Cross Respondent

Neutron Holdings, Inc.

First Respondent / First Cross Claimant

Lime Network Pty Ltd ACN 628 322 930

Second Respondent / Second Cross Claimant

Procedural Posture

Trade Mark Removal and Infringement Application With Cross Claim for Non Use / Post Trial Interlocutory Adjournment for Further Hearing on Relief/orders

Legal Issues

  1. 1 Whether the registered trade mark for 'LIME' should be removed for non-use under s 92(4)(b) of the Trade Marks Act 1995 (Cth)
  2. 2 Whether the use relied on by Taxiprop constitutes 'good faith' use within the meaning of s 92(4)(b)(ii)
  3. 3 Whether the use was by or controlled by the registered owner or its authorised user under ss 7 and 8

Ratio Decidendi

Taxiprop established use of the LIME mark in good faith during the relevant period only in respect of taxi services; real and genuine use was demonstrated on two branded taxis with significant rides and revenue. No sufficient use or residual reputation was shown regarding other services. The discretion under s101(3) should not be exercised to maintain registration for unused services because of long non-use, lack of intention to expand, and public interest in a pure Register. Neutron's micro-mobility services were found not of the same description nor closely related to taxi services, so no infringement or misleading conduct was established.

Court Disposition

Proceeding adjourned for further hearing on consequential relief and orders. The court concluded the LIME mark to be removed for all services except taxi services; no infringement was found of the remaining registration; misleading conduct and passing off claims failed.

Orders

  • The proceeding be adjourned for a further hearing on a date to be fixed.