Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235

FEDERAL COURT OF AUSTRALIA

Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235 File numbers: VID 650 of 2014 VID 52 of 2015

Judge: BEACH J

Date of judgment: 11 March 2016

Catchwords: TRADE MARKS – infringement – thermoplastic polymers – packaging goods – goods falling within the scope of the registration – goods of the same description – services closely related to registered goods – operation of ss 120(1) and (2) of Trade Marks Act 1995 (Cth) – defences to infringement – defence of use of own name – s 122(1)(a) – defence of "right to register" – s 122(1)(fa) – block to hypothetical registration by s 44(1) – counter-response of honest concurrent use – s 44(3)(a) – block to hypothetical registration by s 60 – further block to hypothetical registration by s 62A – proviso under s 120(2) – defences rejected – infringement claims established TRADE MARKS – removal from the Register for non-use – application under s 92 – application dismissed – removal from the Register for lack of distinctiveness – application under s 88 – ground under s 41 – operation of the then s 41(5) – grounds not established – s 88 application dismissed TRADE PRACTICES – misleading or deceptive conduct – ss 18 and 29(1)(a), (g) and (h) of Australian Consumer Law – knowing involvement of director – elements of claims established – passing off – reputation – whether director a joint tortfeasor – elements of claims established

Legislation: Competition and Consumer Act 2010 (Cth) Sch 2, ss 2(1), 18, 29(1)(a), (g), (h) Evidence Act 1995 (Cth) s 64(2) Trade Marks Act 1995 (Cth) ss 41, 42(b), 44(1), (3), 57, 60, 62A, 88, 92, 100, 101, 120(1), (2), 122(1)(a), (fa) Trade Marks Regulations 1995 (Cth) Sch 1