Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164

FEDERAL COURT OF AUSTRALIA

Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164 Citation: Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164

Appeal from: Symbion Pharmacy Services Pty Ltd v Idameneo (No 789) Limited [2011] FCA 389 and Symbion Pharmacy Services Pty Ltd v Idameneo (No 789) Limited (No 2) [2011] FCA 531

Parties: IDAMENEO (NO 789) LIMITED (ACN 004 073 410) v SYMBION PHARMACY SERVICES PTY LIMITED (ACN 000 875 034)

File number: VID 464 of 2011

Judges: RARES, GILMOUR & DODDS-STREETON JJ

Date of judgment: 15 December 2011

Catchwords: INTELLECTUAL PROPERTY – trade marks – claim for infringement of trade marks under licence agreement executed by parties – contractual provision in licence agreement prohibited use of any mark "similar to or capable or being confused with" the marks the subject of the licence agreement – parties carried on businesses in different specialised markets within broader allied health sector and not to general public – whether evidence from persons accustomed to dealing in specialised market as to likelihood of deception or confusion required CONTRACTS – whether contractual term "similar to or capable of being confused with" picked up statutory language "likely to deceive or cause confusion" in ss 10 and 120(1) of Trade Marks Act 1995 (Cth) – different words used in contractual term indicated statutory test did not apply – ordinary and natural disjunctive meaning applied Held: primary judge erred by approaching question of infringement as jury question without evidence of persons accustomed to dealing in specialised market in circumstances where trade marks were used only in specialised markets – marks manifestly different and not capable of being confused on ordinary person's view