Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83

FEDERAL COURT OF AUSTRALIA

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 Appeal from: Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406 Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (No. 2) [2016] FCA 1572

File numbers: VID 1470 of 2016 VID 1472 of 2016 VID 52 of 2017 VID 53 of 2017

Judges: GREENWOOD, JAGOT AND BEACH JJ

Date of judgment: 26 May 2017

Catchwords: TRADE MARKS – whether owner of the trade mark for the purposes of ss 27 and 58 of the Trade Marks Act 1995 (Cth) – construction of the meaning of "applicant" under the Trade Marks Act 1995 (Cth) - whether there was a valid assignment of trade mark – whether marks substantially identical – s 60 ground of opposition – whether use of trade mark likely to deceive or cause confusion – whether use of the trade mark would be contrary to law – whether defence of use of own name in good faith available – whether conduct was misleading or deceptive, or likely to mislead or deceive – whether false representations – whether passing off – cross claim – application for cancellation or rectification of the Trade Mark Register – leave to appeal granted – appeals dismissed

Legislation: Competition and Consumer Act 2010 (Cth), Schedule 2, Australian Consumer Law, ss 18, 29 Evidence Act 1995 (Cth), s 144 Trade Marks Act 1995 (Cth) ss 6, 17, 19, 20, 27, 28, 33, 42, 44, 55, 58, 59, 60, 69, 70, 72, 74, 88, 106, 107, 108, 109, 110, 111, 122, 126 Trade Marks Act 1905 (Cth) Trade Marks Act 1955 (Cth) Trade Marks Regulations 1995 (Cth) regs 3.1, 7.1, 10.1