Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4) [2016] FCA 138

FEDERAL COURT OF AUSTRALIA

Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4) [2016] FCA 138 File numbers: SAD 224 of 2012 WAD 167 of 2013

Judge: MCKERRACHER J

Date of judgment: 24 February 2016

Catchwords: INTELLECTUAL PROPERTY – trade marks – application for removal of trade marks for non-use successful under s 92 of the Trade Marks Act 1995 (Cth) (Act) – whether allegation of non-use rebutted by the production of evidence of use in good faith during relevant period – whether abandonment of trade marks during rebranding – exercise of discretion under s 101(3) of the Act – whether affected by repudiation of agreement – whether trade mark used by award of medal – whether trade mark used by listing in the telephone book INTELLECTUAL PROPERTY – trade marks – whether infringement of trade mark under s 120(1) of the Act – whether breach of franchise agreement leads to conclusion that application for registration of trade mark is 'contrary to law' under s 42 of the Act – determining the owner of trade mark in connection with finding under s 58 of the Act – whether registration of trade mark was 'likely to deceive or cause confusion' under s 60 of the Act – whether trade mark was accepted for registration on the basis of evidence of representations that were false in material particulars under s 62(b) of the Act – whether application for registration of trade mark was made in bad faith under s 62A of the Act – whether use of trade marks constitutes passing off – whether use of trade marks constitutes misleading and deceptive conduct in breach of s 18 of the Australian Consumer Law – whether time limitation precludes the claim – whether trade marks should be removed or cancelled pursuant to s 88(1) of the Act