Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618

FEDERAL COURT OF AUSTRALIA

Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 TRADE MARKS – cancellation – transitional provisions of Trade Marks Act 1995 (Cth) ("1995 TM Act") – effect of prescriptive validity under s 234 of 1995 TM Act – whether s 234 of 1995 TM Act contains sole grounds on which a mark originally registered under the Trade Marks Act 1955 (Cth) ("1955 TM Act") may be removed from Register – whether, on facts, prescriptive validity has been lost – whether actual use is an essential requirement of s 234(2)(e) of 1995 TM Act – relevant time for considering whether use of mark would be likely to deceive or confuse under combined operation of s 234(2)(d) of 1995 TM Act and s 28(a) of 1955 TM Act – whether, on facts, use of mark likely to deceive or cause confusion at relevant time – marks used in relation to gymnasia services for young children – similarity of words "Gymbaroo" and "Gymboree" TRADE MARKS – cancellation – whether mark should be cancelled for lack of ownership – whether marks substantially identical or deceptively similar – signficance of visual context in which similar words appear in the marks – whether mark should be cancelled on ground that it is substantially identical with or deceptively similar to a trade mark that has acquired a reputation in Australia – discretion to cancel mark – relevance of delay, copying and reputation to exercise of discretion TRADE MARKS – cancellation – whether mark should be cancelled for non-use – whether registered owners authorised use of mark by franchisees in the relevant period – construction of franchise agreement – circumstances surrounding franchise agreement – degree of control exercised by franchisors over operations of franchisees – whether actual use that was made by franchisees was authorised use – whether marks were used by franchisees in relation to the services in respect of which the marks were registered – relevance of decided cases concerning use in relation to goods TRADE MARKS – infringement – whether marks are deceptively similar TRADE PRACTICES – misleading or deceptive conduct – conduct of offering franchises and providing gymnasia services for young children – consideration of evidence that members of public making inquiries about services of respondent knew of services of applicant – relevant time for considering conduct alleged to be misleading and deceptive – relevant sections of public – nature of business – similarity of names TRADE PRACTICES – injunctions – whether injunction should be granted to restrain offering of franchises – whether injunction should be granted to restrain provision of services – relevance of delay – relevance of copying of mark TORTS – passing off Trade Marks Act 1995 (Cth) ss 7, 8, 10, 27, 33, 40, 41, 44, 57, 58, 60, 88, 92, 94, 100, 101, 120, 233, 234 Trade Marks Act 1955 (Cth) (repealed) ss 22, 28, 61 Trade Practices Act 1974 (Cth) ss 52, 53, 80, 82 Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 applied Mid Sydney Pty Ltd v Australian Tourism Company Ltd (1998) 42 IPR 561 at 571-4 referred to Mid Sydney Pty Ltd v Australian Tourism Company Ltd (1998) 40 IPR 20 referred to Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 360-1 referred to Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595 applied Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 338, 342, 375 applied Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 applied SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 169 ALR 1 applied Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 referred to Thai Gypsum Products Co Ltd v Waring and Gillow Pty Ltd (1994) 29 IPR 99 referred to Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 at 683 referred to Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 372 applied S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 168 ALR 36 at 405 referred to Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 at 302 applied Applied Business Technology Pty Ltd v Grandmaster Computers Pty Ltd (1999) 161 ALR 31 at 34 referred to The Boots Company (Australia) Pty Ltd v Smithkline Beecham Healthcare Pty Ltd (1996) ATPR 41-459 at 42,598 referred to Al Hayat Publishing Company Ltd v Sokarno (1996) 34 IPR 214 referred to BR Gamer (Investments) Pty Ltd v Gamer (1993) ATPR 41-200 referred to BM Autosales Pty Ltd v Budget Rent A Car Pty Ltd (1976) 51 ALJR 254 referred to Greyhound Pioneer Australia Ltd v Pioneer Motor Service Pty Ltd (1997) 38 IPR 385 referred to Visa International Service Association v Beiser Corporation Pty Ltd (1983) ATPR 40-373 referred to Glev Pty Ltd v Kentucky Fried Chicken Pty Ltd (1994) ATPR 41-299 at 41,981 applied Shanahan Australian Law of Trade Marks and Passing Off 2nd edition at p 247