PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128

FEDERAL COURT OF AUSTRALIA

PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 Appeal from: PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] FCA 1078

File number: NSD 1014 of 2020

Judgment of: JAGOT, NICHOLAS AND BURLEY JJ

Date of judgment: 29 July 2021

Catchwords: TRADE MARKS – infringement – whether Trade Marks Act 1995 (Cth) imposes liability for authorising infringement of a registered trade mark – no liability for authorising infringement TRADE MARKS – deceptive similarity – whether primary judge erred in evaluating deceptive similarity between trade marks – where primary judge considered circumstances of sale of goods bearing registered marks in deciding whether consumers would be caused to wonder whether alleged infringing goods emanated from the same source – whether error material – appeal against infringement findings dismissed TRADE MARKS – non-use applications – whether primary judge erred in removing trade marks from register with respect to certain goods for non-use – appeal allowed in part COMPETITION – misleading or deceptive conduct in contravention of Australian Consumer Law – whether consumers would be misled or deceived by respondent's conduct – whether primary judge erred in assessing reputation of appellants at the time of the impugned conduct – appeal dismissed TORTS – passing off – where appellants conceded that failure with respect to claims under Australian Consumer Law would lead to failure to establish passing off – appeal dismissed