Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130

Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130

The principal ratio is that the appellant did not establish use of the '707' and '966' marks in relation to goods, but only in relation to services, and failed to demonstrate intention to use in Australia at the relevant date for the '966' mark; the respondents' use of their company name, 'Optical 88', with additions or alterations, was in good faith and protected under s 122(1)(a)(i) of the Trade Marks Act, so no infringement arose; the directors were not personally liable as infringers; and the first respondent's logo was not a substantial reproduction of the appellant's copyright work.

Jurisdiction
Australia
Judgment Date
17 October 2011
Procedural Posture
Intellectual Property Appeal / Appeal
Outcome
appeal dismissed
Legal Topics
['trade Marks' 'copyright' 'practice and Procedure']
['intellectual Property'] ['trade Marks' 'copyright' 'practice and Procedure']

Case Brief

Summary, issues, holding and outcome

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Procedural Posture

Intellectual Property Appeal / Appeal

Legal Issues

  1. 1 ['Whether use of trade marks by the appellant was in relation to goods or services for the purpose of opposition to removal from the register under Trade Marks Act 1995 (Cth)' 'Personal liability of directors for alleged trade mark infringements' 'Availability of good faith use of own name defence under s 122(1)(a)(i) Trade Marks Act' 'Whether leave should be granted to raise a new argument on appeal regarding prospective good faith use' "Whether the appellant intended to use the '966 mark in Australia at registration" 'Appropriateness of discretionary retention of marks under s 101(3) Trade Marks Act' "Whether respondents reproduced whole or substantial part of appellant's logo for copyright" 'Accessorial liability of directors for copyright/trade mark infringement']

Ratio Decidendi

The principal ratio is that the appellant did not establish use of the '707' and '966' marks in relation to goods, but only in relation to services, and failed to demonstrate intention to use in Australia at the relevant date for the '966' mark; the respondents' use of their company name, 'Optical 88', with additions or alterations, was in good faith and protected under s 122(1)(a)(i) of the Trade Marks Act, so no infringement arose; the directors were not personally liable as infringers; and the first respondent's logo was not a substantial reproduction of the appellant's copyright work.

Court Disposition

appeal dismissed

Orders

  • ['The appeal be dismissed.' "The appellant pay the respondents' costs of the appeal as agreed or taxed."]