Halal Certification Authority Pty Ltd v Flujo Sanguineo Holdings Pty Ltd [2021] FCA 1399

FEDERAL COURT OF AUSTRALIA

Halal Certification Authority Pty Ltd v Flujo Sanguineo Holdings Pty Ltd [2021] FCA 1399 File number: NSD 1706 of 2018

Judgment of: BROMWICH J

Date of judgment: 12 November 2021

Catchwords: TRADE MARKS – trade mark registered by Halal Certification Authority Australia Pty Ltd (HCA) in respect of classes 42 and 45 of services – where trade mark used as a packaging logo on artificial sweetener products by respondents – where products certified halal by HCA at various times and certificates issued – where products manufactured by contract manufacturer who held agreement with HCA – where certification had lapsed at two times – where no permission was given to use the trade mark on packaging – where there was no direct agreement between HCA and respondents – whether trade mark infringement occurred because packaging was substantially identical or deceptively similar to the goods or services of registration per s 120(1) of Trade Marks Act 1995 (Cth) – whether the trade mark was used as a sign that was substantially identical or deceptively similar to the goods or services of registration per s 120(2)(c) or (d) of the Act – whether respondents could rely on good faith exception in s 122(1)(b)(i) of the Act for use of the trade mark on the products – held: trade mark not being used on products as a trade mark for services – held: trade mark not used in respect of services of the same description, or closely related to registered services – held: no infringement within s 120 of the Act – held: even if infringement had been made out, good faith exception applied – claims dismissed CONSUMER LAW – where submitted that HCA, by the existence and use of the trade mark, had acquired a substantial and valuable reputation and that the respondents had made representation to traders and consumers in relation to HCA and halal certification – whether use of trade mark contravened ss 18 and 29(a), (b), (g) and (h) of the Australian Consumer Law – whether respondents engaged in tort of passing off – held: ordinary consumer would not have perceived necessary connection to HCA through the use of the trade mark on the products – claims dismissed TRADE MARKS – cross-claim – whether the register of trade marks should be rectified by cancelling the trade mark pursuant to s 88(2)(a) of the Act as likely to deceive or cause confusion – whether cancellation should occur on the basis that registration could have been successfully opposed at the time sought pursuant to s 88(2)(c) of the Act – whether the mark should be removed for non-use pursuant to s 92(4)(b) of the Act – where trade mark used in a way to convey authoritative status, and not just to denote private company name – where submitted by cross-claimants that trade mark was being used as a certification mark – where trade mark made up of entirely descriptive components without any sufficient reputation to distinguish it – where broad discretion to rectify the register – held: trade mark likely to deceive or cause confusion but not because of any deception as to use as a certification mark – held: trade mark could have been successfully opposed as being descriptive only and not inherently capable of distinguishing services – held: trade mark could not be removed for non-use as used in a limited capacity at least on certificates – held: the discretion to rectify the register enlivened – held: the register of trade marks should be rectified by cancelling the trade mark on the basis of public interest – cross-claim allowed