Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406

FEDERAL COURT OF AUSTRALIA

Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406 Appeal from: Insight Clinical Imaging v Insight Radiology Pty Ltd [2014] ATMO 85

File numbers: VID 575 of 2014 VID 714 of 2014

Judge: DAVIES J

Date of judgment: 23 November 2016

Catchwords: TRADE MARKS – appeal of decision of the Registrar to refuse to register trade mark – whether marks substantially identical – whether owner of the trade mark for the purposes of section 58 and 59 of the Trade Marks Act 1995 (Cth) – construction of the meaning of "applicant" under the Trade Marks Act 1995 (Cth) - whether there was a valid assignment of trade mark– whether use of the applicant trade mark likely to deceive or cause confusion – whether use of the trade mark would be contrary to law – whether defence of use in good faith available– whether defence of right to use marks under the Trade Marks Act 1995 (Cth) available – whether there was honest concurrent use – whether use of the applicant trade mark constituted conduct that was misleading or deceptive, or likely to mislead or deceive – whether false representations – whether passing off – whether breach of the rule in Browne v Dunn – whether individual director a joint tortfeasor with the company – cross claim – application for cancellation or rectification of the Trade Mark Register - inherent adaptability of trade marks to distinguish – whether prior inconsistent application for registration

Legislation: Competition and Consumer Act 2010 (Cth), Schedule 2, Australian Consumer Law, ss 18(1), 29(1)(g), 29(1)(h) Trade Marks Act 1995 (Cth), ss 27(1), 42, 44, 58, 59, 60, 88, 120(1), 122(1)(a), 122(1)(e), 122(1)(fa)