Firstmac Limited v Zip Co Limited [2023] FCA 540

Federal Court of Australia

Firstmac Limited v Zip Co Limited [2023] FCA 540 File number: NSD 1004 of 2019

Judgment of: MARKOVIC J

Date of judgment: 29 May 2023

Catchwords: TRADE MARKS – infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) – whether the infringing marks are substantially identical with, or deceptively similar to, the applicant's mark – defence under s 122(1)(f) and (fa) of the Act – whether respondents would obtain registration of the infringing marks if they were to apply for it on the basis of honest concurrent use – defence under s 122(1)(a) of the Act – whether the respondents are entitled to use of the "own name" defence – whether the applicant should be denied relief by reason of estoppel, acquiescence, delay or laches – application for removal of the applicant's mark pursuant to s 92(1) and s 92(4)(b) of the Act – whether the applicant did not during the relevant non-use period use its registered mark in good faith in relation to its services – claim under s 88(1) of the Act to rectify the Register of Trade Marks by cancelling the applicant's mark – whether ground in s 88(2)(c) of the Act is established – whether use of the applicant's mark is likely to deceive or cause confusion – claim under s 129 of the Act – whether the applicant's threats to bring an action were unjustified

Legislation: Designs Act 2003 (Cth) ss 71, 72(2)(b), 77 and 78(b) Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) Trade Marks Act 1995 (Cth) ss 44(3), 88 subs (1)(a) and subs (2)(c), 92 subs (1) and subs (4)(b), 122(1) subss (a), (f) and (fa), 129 subss (1), (2) and (4) Federal Court Rules 2011 (Cth) r 16.21(1) Trade Marks Regulations 1995 (Cth) reg 8.2