Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6

Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6

The Court found that prior use by the Second Respondent of substantially identical marks in Australia, in relation to funds management services targeting special situations and underperforming companies (the same kind as the registered services), was established as at January 2007 and again in 2007, preceding the Appellant's first use and registration. This defeated the Appellant's claim to ownership under s 58 of the Trade Marks Act 1995 (Cth). The Court also held the statutory discretion under s 88(1) could be exercised to order cancellation (favouring public interest in Register accuracy), and no error was demonstrated in the primary judge's exercise of discretion. On infringement, the...

Parties
Appellant: Anchorage Capital Partners Pty Limited; First Respondent: ACPA Pty Ltd; Second Respondent: Anchorage Capital Group LLC
Jurisdiction
Australia
Judgment Date
02 February 2018
Procedural Posture
Appeal and Cross Appeal / Full Court Judgment on Appeal and Cross Appeal From Primary Judge's Decision and Orders
Outcome
Appeal against orders 2 and 3 of primary judge allowed; otherwise appeal dismissed; cross-appeal allowed; primary judge's indemnity costs order set aside and replaced with party/party costs order; direction to rectify Register by cancelling trade mark 1425921; opportunity for further submissions on costs.
Legal Topics
Trade Marks, Trade Mark Registration, Trade Mark Cancellation, Ownership of Trade Marks, Trade Mark Infringement, Statutory Defences, Discretion in Trade Mark Rectification, Costs Orders
Intellectual Property Trade Marks Trade Mark Registration Trade Mark Cancellation Ownership of Trade Marks Trade Mark Infringement Statutory Defences Discretion in Trade Mark Rectification +1 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 29 Party arguments 2 Amounts and remedies 5
Sign in to unlock

Parties

Anchorage Capital Partners Pty Limited

Appellant

ACPA Pty Ltd

First Respondent

Anchorage Capital Group LLC

Second Respondent

Procedural Posture

Appeal and Cross Appeal / Full Court Judgment on Appeal and Cross Appeal From Primary Judge's Decision and Orders

Legal Issues

  1. 1 Whether Second Respondent's use of marks in Australia constituted prior use defeating Appellant's trade mark ownership under s 58 of the Trade Marks Act 1995 (Cth)
  2. 2 Whether such use was in relation to the same or same kind of services as the registered marks
  3. 3 Whether Second Respondent intended to offer financial services in Australia at the time of use, in light of s 911A Corporations Act 2001 (Cth)

Ratio Decidendi

The Court found that prior use by the Second Respondent of substantially identical marks in Australia, in relation to funds management services targeting special situations and underperforming companies (the same kind as the registered services), was established as at January 2007 and again in 2007, preceding the Appellant's first use and registration. This defeated the Appellant's claim to ownership under s 58 of the Trade Marks Act 1995 (Cth). The Court also held the statutory discretion under s 88(1) could be exercised to order cancellation (favouring public interest in Register accuracy), and no error was demonstrated in the primary judge's exercise of discretion. On infringement, the...

Court Disposition

Appeal against orders 2 and 3 of primary judge allowed; otherwise appeal dismissed; cross-appeal allowed; primary judge's indemnity costs order set aside and replaced with party/party costs order; direction to rectify Register by cancelling trade mark 1425921; opportunity for further submissions on costs.

Orders

  • The appeal against orders 2 and 3 made by the primary judge on 9 March 2016 be allowed.
  • In lieu of orders 2 and 3 made by the primary judge on 9 March 2016, the applicant pay on a party/party basis the respondents' costs of the application and the cross-claim other than those referred to in order 1 of his Honour's orders.