Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd [2017] FCA 1249

Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd [2017] FCA 1249

The word 'centrefold' is not inherently adapted to distinguish Entertainment's adult entertainment services from those of other persons and is used in its ordinary descriptive sense in the relevant market; other traders legitimately wish to use the word in describing their services. Registration of the mark should be cancelled under s 41(1) Trade Marks Act. No proven misleading or deceptive conduct or passing off. No entitlement to relief under the ACL.

Jurisdiction
Australia
Judgment Date
16 June 2017
Procedural Posture
Intellectual Property – Trade Marks and Trade Practices / Final Judgment and Orders, With Directions for Final Orders and Costs
Outcome
Registration of Entertainment's 'centrefold' trade mark cancelled. Claims based on ACL (s 18), and passing off, dismissed. Final orders and costs to be determined following submissions.
Legal Topics
['trade Marks – Distinctiveness and Capability to Distinguish' 'misleading and Deceptive Conduct' 'passing Off' 'trade Mark Infringement' 'capacity to Distinguish Under Trade Marks Act S 41' 'australian Consumer Law S 18']
['intellectual Property' 'trade Practices' 'consumer Law'] ['trade Marks – Distinctiveness and Capability to Distinguish' 'misleading and Deceptive Conduct' 'passing Off' 'trade Mark Infringement' 'capacity to Distinguish Under Trade Marks Act S 41' 'australian Consumer Law S 18']

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Procedural Posture

Intellectual Property – Trade Marks and Trade Practices / Final Judgment and Orders, With Directions for Final Orders and Costs

Legal Issues

  1. 1 ["Whether the trade mark 'centrefold' is capable of distinguishing Entertainment's designated services under s 41 of the Trade Marks Act 1995 (Cth)" 'Whether Metro parties were prior users or owners for purposes of s 58, s 124, s 44(3)(a) of Trade Marks Act' 'Whether Entertainment parties are entitled to remedies for infringement and damages' 'Whether either party engaged in misleading or deceptive conduct under s 18 of ACL or passing off']

Ratio Decidendi

The word 'centrefold' is not inherently adapted to distinguish Entertainment's adult entertainment services from those of other persons and is used in its ordinary descriptive sense in the relevant market; other traders legitimately wish to use the word in describing their services. Registration of the mark should be cancelled under s 41(1) Trade Marks Act. No proven misleading or deceptive conduct or passing off. No entitlement to relief under the ACL.

Court Disposition

Registration of Entertainment's 'centrefold' trade mark cancelled. Claims based on ACL (s 18), and passing off, dismissed. Final orders and costs to be determined following submissions.

Orders

  • ['Parties to provide short minutes of order addressing these reasons and costs.' 'If parties cannot agree, proceedings relisted for making final orders and orders as to costs and funds held as security for costs.' 'Written submissions on costs to be filed and served, limited to three pages.']