National Roads and Motorists' Association Limited v Construction, Forestry, Maritime, Mining and Energy Union [2019] FCA 1491

FEDERAL COURT OF AUSTRALIA

National Roads and Motorists' Association Limited v Construction, Forestry, Maritime, Mining and Energy Union [2019] FCA 1491 File number: NSD 1065 of 2019

Judge: GRIFFITHS J

Date of judgment: 11 September 2019

Catchwords: TRADE MARKS – infringement proceeding under ss 120(1) and (3) of the Trade Marks Act 1995 (Cth) – where a trade union is using a sign depicting the applicant's brand or logo as part of an industrial campaign against the employer – where the employer is a wholly owned subsidiary of the applicant – whether the union's sign is being used as a trade mark – no use of the sign as a trade mark CONSUMER LAW – claims of misleading or deceptive conduct arising from representations made during the course of an industrial campaign – whether impugned conduct is "in trade or commerce" – principles derived from Concrete Constructions (NSW) Pty Ltd v Nelson (1990) 169 CLR 594 considered – conduct not "in trade or commerce" TORTS – claims of injurious falsehood arising from statements and representations made during an industrial campaign – malice – necessity to establish actual damage – no malice or actual damage

Legislation: Competition and Consumer Act 2010 (Cth) ss 4, 6, Sch 2 ss 2, 18 and 29 Fair Work Act 2009 (Cth) ss 345 and 349 Fair Work (Registered Organisations) Act 2009 (Cth) Judiciary Act 1903 (Cth) s 78B Trade Marks Act 1995 (Cth) ss 10, 17, 120 and 185 Trade Practices Act 1974 (Cth) ss 4 and 52 Work Health and Safety Act 2011 (Cth) Fair Trading Act 1987 (NSW) Fair Trading Act 1999 (Vic) s 9 First Council Directive 89/104/EEC art 5 European Parliament and Council Directive 2015/2436 art 10 Trade Mark Act of 1946 s 43, 15 U.S.C. § 1125(c)(1)(2012) Marrakesh Agreement Establishing the World Trade Organization. Opened for signature 15 April 1994. 1867 UNTS 3 (entered into force 1 January 1995). Annex 1C ('Agreement on Trade-related Aspects of Intellectual Property Rights') art 16 Paris Convention for the Protection of Industrial Property. Opened for signature 20 March 1883 (entered into force 7 July 1884) art 6bis