Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1998] FCA 1704

FEDERAL COURT OF AUSTRALIA TRADE MARKS – Application for registration of trade mark – Use of mark likely to deceive or cause confusion – Whether this was a sufficient basis for rejection of the application – Whether it was necessary for it to appear that applicant had engaged in blameworthy conduct or that, for some other reason, the mark was disentitled to protection in a court of justice Trade Marks Act 1955 ss 22, 28 and 61 New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Limited (1990) 171 CLR 363 – discussed Riv-Oland Marble Co (Vic) Pty Ltd v Settef Sp A (1988) 19 FCR 570 – not followed Radio Corporation Proprietary Limited v Disney (1937) 57 CLR 448 – discussed G E Trade Mark [1973] RPC 297 – discussed

NETTLEFOLD ADVERTISING PTY LTD v NETTLEFOLD SIGNS PTY LTD VG 431 of 1997 JUDGES: WILCOX, TAMBERLIN AND MERKEL JJ PLACE: MELBOURNE DATE: 23 DECEMBER 1998

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VG431 of 1997

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN: NETTLEFOLD ADVERTISING PTY LTD

Applicant

AND: NETTLEFOLD SIGNS PTY LTD

Respondent

JUDGE: WILCOX, tamberlin AND MERKEL J J

DATE OF ORDER: 23 DECEMBER 1998

WHERE MADE: MELBOURNE

THE COURT ORDERS THAT: 1. Leave to appeal be granted. 2. The appeal be upheld and the orders made by Heerey J on 11 July 1997 be set aside. 3. In lieu of the said orders, it be ordered that Application no. 515704 for registration of a mark under the Trade Marks Act 1955 be rejected and that Nettlefold Signs Pty Ltd pay the costs of Nettlefold Advertising Pty Ltd of the proceeding before Heerey J. 4. Nettlefold Signs Pty Ltd pay the costs of Nettlefold Advertising Pty Ltd of the appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.