Edutainments Pty Ltd v JMC Pty Ltd [2003] FCA 923

FEDERAL COURT OF AUSTRALIA

Edutainments Pty Ltd v JMC Pty Ltd [2003] FCA 923 TRADE MARKS – computer-generated characters – characters used to promote separate computer colleges – applicant's character registered as a trade mark – whether the use of the respondent's character is use as a trade mark – the extent of similarity between the applicant's and the respondent's character TRADE PRACTICES – s 52 Trade Practices Act 1974 (Cth) misleading and deceptive conduct – computer-generated characters – characters used to promote separate computer colleges - publication of an advertisement using the respondent's character – the likely impact of the advertisement on the section of public likely to read the advertisement – whether the advertisement would cause a cross section of the relevant public to believe the two computer colleges were the same or associated TORT – passing off – whether the respondent's character sought to pass off its educational services as the educational services of the applicant Trade Marks Act 1995 (Cth) s 120(1) Trade Practices Act 1975 (Cth) ss 52, 53(c) and (d) Cat Media Pty Limited v Opti-Healthcare Pty Limited [2003] FCA 133 referred to Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 cited Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 discussed Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) applied EDUTAINMENTS PTY LTD (ACN 074 008 978) v JMC PTY LTD (ACN 003 572 012) N 1387 of 2002 BRANSON J 4 SEPTEMBER 2003 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 1387 of 2002

BETWEEN: EDUTAINMENTS PTY LTD (ACN 074 008 978)

APPLICANT

AND: JMC PTY LTD (ACN 003 572 012)

RESPONDENT

JUDGE: BRANSON J