Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512

FEDERAL COURT OF AUSTRALIA

Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512 Appeal from: Enagic Co Ltd v Horizons (Asia) Pty Ltd [2018] ATMO 192

File number: NSD 2363 of 2018

Judgment of: CHARLESWORTH J

Date of judgment: 2 December 2021

Catchwords: INTELLECTUAL PROPERTY – appeal from decision of a delegate of the Registrar of Trade Marks accepting for registration a word mark in relation to services in class 35 – where appellant is the registered owner of identical or deceptively similar mark having an earlier priority date in relation to goods – whether the relevant goods and services are "closely related" for the purposes of s 44 of the Trade Marks Act 1995 (Cth) – whether the registration should be subject to a condition or qualification – whether the appellant is the owner of the mark subject to the registration – consideration of the parties' use of the subject mark in relation to goods as opposed to services before the priority date – consideration of commercial activities inherent to the sale of goods, not being activities constituting the provision of a service as a course of trade – consideration of use of trade marks in the context of a direct marketing scheme – appellant's ownership of the subject mark established in respect of goods and identified services – whether other services are the "same kind of thing" as the identified services – consideration of the reputation of the subject mark in Australia for the purposes of s 60 of the Trade Marks Act 1995 (Cth)– consideration of the class of consumer to whom the appellant's goods and services are directed – reputation in Australia not established – whether the registration of the subject mark would be contrary to law – whether the application for registration of the subject mark was made in bad faith – respondent copying the specification of services from an earlier registration secured by the appellant – respondent engaging in conduct before and after priority date directed to the illegitimate disruption of the appellant's business – consideration of the consequence of the respondent's failure to call witnesses to give evidence going to critical questions within their knowledge – bad faith established – appeal allowed