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

FEDERAL COURT OF AUSTRALIA

Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6 Appeal from: Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2015] FCA 882 Anchorage Capital Partners Pty Limited v ACPA Pty Limited (No 3) [2015] FCA 1436 Anchorage Capital Partners Pty Limited v ACPA Pty Limited (No 4) [2016] FCA 218

File number: NSD 385 of 2016

Judges: NICHOLAS, YATES AND BEACH JJ

Date of judgment: 2 February 2018

Catchwords: TRADE MARKS – trade marks registered in respect of services in class 36 – whether the second respondent was the owner within the meaning of s 58 of the Trade Marks Act 1995 (Cth) ("the Act") – whether second respondent first to use identical or substantially identical trade marks in Australia in respect of the registered services or services of the same kind – whether second respondent's use of marks in marketing materials constituted trade mark use – whether second respondent intended to supply its services in Australia at time of such use – significance of s 911A of the Corporations Act 2001 (Cth) – whether there is a discretion not to cancel a trade mark under s 88(1) of the Act – whether primary judge's exercise of discretion miscarried – consideration of matters relevant to exercise of discretion TRADE MARKS – statutory defences under s 122(1)(a)(i) of the Act – whether the second respondent's use of the ANCHORAGE CAPITAL GROUP and ANCHORAGE names was use of the second respondent's own name for the purposes of s 122(1)(a)(i) of the Act TRADE MARKS – statutory defences under s 122(1)(f) and (fa) of the Act – whether the court is of the opinion that second respondent would obtain registration of the trade marks or substantially identical or deceptively similar marks in its name if it were to apply for them – date for assessing hypothetical trade mark applications for the purposes of s 122(1)(f) and (fa) of the Act COSTS – application of Rule 25.14(2) of Federal Court Rules 2011 (Cth) – whether primary judge's order requiring applicant to pay indemnity costs should be set aside – whether appellant's failure to accept offer of compromise was unreasonable – whether primary judge's decision affected by error – whether court of clear opinion that primary judge's decision was wrong