Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1998] FCA 1704

Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1998] FCA 1704

Because Heerey J found that use of Nettlefold Signs Pty Ltd's proposed mark would be likely to deceive or cause confusion, s 28(a) of the Trade Marks Act 1955 required refusal of first registration. Section 28 is to be read disjunctively for that purpose, and it was not necessary to prove blameworthy conduct or some other disentitlement to protection under s 28(d).

Jurisdiction
Australia
Judgment Date
23 December 1998
Procedural Posture
Trade Mark Registration Opposition Appeal / Application for Leave to Appeal From a Decision of Heerey J Dismissing a Challenge to a Delegate of the Registrar of Trade Marks Concerning Trade Mark Application No. 515704
Outcome
Leave to appeal granted; appeal upheld; orders of Heerey J set aside; application for registration rejected.
Legal Topics
['registration of Trade Marks' 'likelihood of Deception or Confusion' 'construction of S 28 of the Trade Marks Act 1955' 'blameworthy Conduct' 'expungement and Rectification of the Register']
['intellectual Property' 'trade Marks' 'statutory Interpretation'] ['registration of Trade Marks' 'likelihood of Deception or Confusion' 'construction of S 28 of the Trade Marks Act 1955' 'blameworthy Conduct' 'expungement and Rectification of the Register']

Case Brief

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Procedural Posture

Trade Mark Registration Opposition Appeal / Application for Leave to Appeal From a Decision of Heerey J Dismissing a Challenge to a Delegate of the Registrar of Trade Marks Concerning Trade Mark Application No. 515704

Legal Issues

  1. 1 ["Whether use of Nettlefold Signs Pty Ltd's proposed mark would be likely to deceive or cause confusion under s 28(a) of the Trade Marks Act 1955." 'Whether s 28(d) imposed a cumulative requirement on s 28(a), so that likely deception or confusion was insufficient unless the applicant had engaged in blameworthy conduct or the mark was otherwise disentitled to protection in a court of justice.' 'Whether the Court should follow Riv-Oland Marble Co (Vic) Pty Ltd v Settef Sp A in relation to a first registration application.']

Ratio Decidendi

Because Heerey J found that use of Nettlefold Signs Pty Ltd's proposed mark would be likely to deceive or cause confusion, s 28(a) of the Trade Marks Act 1955 required refusal of first registration. Section 28 is to be read disjunctively for that purpose, and it was not necessary to prove blameworthy conduct or some other disentitlement to protection under s 28(d).

Court Disposition

Leave to appeal granted; appeal upheld; orders of Heerey J set aside; application for registration rejected.

Orders

  • ['Leave to appeal be granted.' 'The appeal be upheld and the orders made by Heerey J on 11 July 1997 be set aside.' 'In lieu of the said orders, it be ordered that Application no. 515704 for registration of a mark under the Trade Marks Act 1955 be rejected and that Nettlefold Signs Pty Ltd pay the costs of...