Firstmac Limited v Zip Co Limited [2023] FCA 540

Firstmac Limited v Zip Co Limited [2023] FCA 540

Firstmac did not use the Applicant's Mark as a trade mark during the relevant three-year non-use period in relation to the Services; the Zip Companies established honest concurrent use of 'ZIP' and variants and would obtain registration if applied for—defences under s 122(1)(f) and (fa) were made out; the stylised and formative Zip Marks either are not deceptively similar or are honestly used; it is reasonable to order removal and rectification; no unjustified threats relief is warranted.

Parties
Applicant/cross Respondent: Firstmac Limited; First Respondent/cross Claimant: Zip Co Limited; Second Respondent: Zipmoney Payments Pty Ltd
Jurisdiction
Australia
Judgment Date
29 May 2023
Procedural Posture
Trade Marks Infringement and Cross Claim for Rectification/removal / Final Judgment After Trial
Outcome
Applicant's infringement claim dismissed; Zip Companies' non-use application and cross-claim succeeded.
Legal Topics
Trade Marks, Infringement, Honest Concurrent Use, Non Use Removal, Rectification, Own Name Defence, Estoppel, Acquiescence, Laches, Deceptive Similarity
Intellectual Property Trade Marks Infringement Honest Concurrent Use Non Use Removal Rectification Own Name Defence Estoppel +3 more

Case Brief

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Parties

Firstmac Limited

Applicant/cross Respondent

Zip Co Limited

First Respondent/cross Claimant

Zipmoney Payments Pty Ltd

Second Respondent

Procedural Posture

Trade Marks Infringement and Cross Claim for Rectification/removal / Final Judgment After Trial

Legal Issues

  1. 1 Whether Zip Companies infringed Firstmac's registered trade mark under s 120 of the Trade Marks Act 1995 (Cth)
  2. 2 Whether the Zip Companies' marks are substantially identical with, or deceptively similar to, the Applicant's Mark
  3. 3 Whether Zip Companies can rely on defences under s 122(1)(f), (fa), and (a) of the Trade Marks Act

Ratio Decidendi

Firstmac did not use the Applicant's Mark as a trade mark during the relevant three-year non-use period in relation to the Services; the Zip Companies established honest concurrent use of 'ZIP' and variants and would obtain registration if applied for—defences under s 122(1)(f) and (fa) were made out; the stylised and formative Zip Marks either are not deceptively similar or are honestly used; it is reasonable to order removal and rectification; no unjustified threats relief is warranted.

Court Disposition

Applicant's infringement claim dismissed; Zip Companies' non-use application and cross-claim succeeded.

Orders

  • Registrar to remove Applicant's Mark from Register under s 92(4)(b) and s 101(2) Trade Marks Act 1995 (Cth)
  • Register to be rectified by cancelling registration of Applicant's Mark under s 88(2)(c)