Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719

Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719

SENSES DIRECT is deceptively similar to SENSIS and infringes the applicant's registered trade marks under s 120(1). The s 122(1)(fa) defence must be assessed at the date of the first infringing use, and the respondent cannot rely on honest concurrent use. Section 44(3) does not override s 60, but s 60 does not apply here as applicant's reputation outside directories was not proven. The applicant demonstrated use of the SENSIS marks in the non-use period for relevant services, and the court exercised discretion to refuse removal of those services from the register.

Parties
Applicant/cross Respondent: Sensis Pty Ltd; Respondent/cross Claimant: Senses Direct Mail and Fulfillment Pty Ltd
Jurisdiction
Australia
Judgment Date
24 May 2019
Procedural Posture
Trade Mark Infringement and Cross Claim for Non Use Removal / First Instance Judgment After Hearing
Outcome
Applicant established infringement; respondent's cross-claim for removal failed; parties to provide proposed orders to give effect to reasons.
Legal Topics
Trade Marks, Trade Mark Infringement, Deceptive Similarity, Honest Concurrent Use, Non Use Removal, Section 44(3) Discretion, Section 60 Opposition, Reputation, Section 122(1)(fa) Defence
Intellectual Property Trade Marks Trade Mark Infringement Deceptive Similarity Honest Concurrent Use Non Use Removal Section 44(3) Discretion Section 60 Opposition +2 more

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Parties

Sensis Pty Ltd

Applicant/cross Respondent

Senses Direct Mail and Fulfillment Pty Ltd

Respondent/cross Claimant

Procedural Posture

Trade Mark Infringement and Cross Claim for Non Use Removal / First Instance Judgment After Hearing

Legal Issues

  1. 1 Whether SENSES DIRECT is deceptively similar to SENSIS
  2. 2 Whether respondent's use infringed applicant's registered trade marks under s 120(1) Trade Marks Act 1995 (Cth)
  3. 3 Whether s 122(1)(fa) defence was available to respondent

Ratio Decidendi

SENSES DIRECT is deceptively similar to SENSIS and infringes the applicant's registered trade marks under s 120(1). The s 122(1)(fa) defence must be assessed at the date of the first infringing use, and the respondent cannot rely on honest concurrent use. Section 44(3) does not override s 60, but s 60 does not apply here as applicant's reputation outside directories was not proven. The applicant demonstrated use of the SENSIS marks in the non-use period for relevant services, and the court exercised discretion to refuse removal of those services from the register.

Court Disposition

Applicant established infringement; respondent's cross-claim for removal failed; parties to provide proposed orders to give effect to reasons.

Orders

  • The parties are to provide orders giving effect to these reasons by 7 June 2019.