Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd [2020] FCA 82

FEDERAL COURT OF AUSTRALIA

Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82 File number: VID 223 of 2018

Judge: O'BRYAN J

Date of judgment: 7 February 2020

Catchwords: TRADE MARKS – infringement – use as a trade mark – whether respondent infringed applicant's mark by using the "Urban Pale" name as a trade mark – defences to infringement – good faith use – prior use – exercise of a right to use a trade mark – cancellation – whether mark capable of distinguishing goods – whether marks substantially identical or deceptively similar – whether applicant had valid claim to ownership of marks at priority date – whether applicant acquired reputation in its mark – whether use of respondent's marks would be likely to deceive or cause confusion – whether Court should exercise its discretion under s 88(1)(a) of the Trade Marks Act 1995 (Cth) to order cancellation of marks – groundless threats – effect of assignment of mark – where cross-claimant delayed in seeking declaratory relief under s 129(2) of the Trade Marks Act (Cth) – application dismissed – order made for cancellation of applicant's mark – cross-claim otherwise dismissed CONSUMER LAW – principles governing the tort of passing off and ss 18 and 29 of the Australian Consumer Law – whether respondent's use of the "Urban Pale" name constituted misleading and deceptive conduct and passing off – claims dismissed

Legislation: Australian Consumer Law ss 18, 29(1)(g), 29(1)(h) Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) Trade Marks Act 1995 (Cth) ss 7(1), 41, 44(1), 58, 88(1)(a), 88(2)(a), 88(2)(c), 120(1), 122(1)(b)(i), 122(1)(e), 124(1), 129(1), 129(2)(a), 129(4), 129(5)