Trade Mark Litigation
Warrnambool Campus, 8 January 2019
His Honour Judge Josh Wilson QC
LLM, PhD, Professor of Law Deakin University
Judge, Federal Circuit Court of Australia
- Welcome to all of you who have cut short your summer holidays to participate in this intensive concerning trade mark litigation. Truth be known, Professor Lightowler and I selected the title as little more than an omnibus headline, an eye-catcher so to speak, with a view to providing a door opener to a more freewheeling discussion tonight on matters of general interest in the field of intellectual property.
- It may be unduly restrictive to confine tonight’s comments strictly to trademarks although trademarks do feature very considerably.
- Tonight I propose to address a handful of matters and offer them for your consideration. As the title suggests, I propose to conduct an overview of trademark litigation in the year just past in the federal arena. I also propose to explore certain local, economic and political developments in intellectual property focusing on the work of the UK Intellectual Property Enterprise Court. Then I propose to discuss some newly minted reforms currently in operation in the Federal Circuit Court of Australia, Australia’s largest federal court. With questions, that is likely to consume the time allocated to me.
- But before launching into the substance of tonight’s address, let me turn to some bigger issues in intellectual property litigation in Australia.
The nature of IP litigation
- When we speak of IP litigation most practitioners incorporate by reference a handful of areas of law. Traditionally those are cases under the –
- Copyright Act 1968;
- Trade Marks Act 1995;
- Designs Act 2003;
- Plant Breeders’ Rights Act 1994;
- Competition and Consumer Act 2010; and
- accrued jurisdiction of federal courts.
Some interesting cases from 2018
- While preparing for this address I scrutinised AustLII’s catalogue of single judge decisions in the Federal Court of Australia on the broad subject of intellectual property over the 2018 calendar year. Not a particularly sophisticated filter, you would be entitled to say. That was deliberate. I wanted a random snapshot of the calendar year’s judgments in the federal arena so as to demonstrate the typical breadth of cases in the IP field. From that large list I selected a handful of trademark cases. They are in no special order, whether as to date or significance. They give something of an IP year in review.
- The first decision is Tim Ho Wan v Viadar Holdings Pty Ltd.1
- The case is unexceptional at one level as it was an undefended application for interlocutory relief restraining the use of a registered trade mark. That is typical of the sort of case that trademark litigation throws up. The case is useful for the legal test to be applied when seeking an injunction. The two lead authorities remain Beecham Group Limited v Bristol Laboratories Pty Ltd2 and Australian Broadcasting Corporation v O’Neill.3 The test was set out at paragraph 28 of Thawley J’s decision.
- The facts were straightforward. Two chefs opened a dim sum restaurant in Hong Kong in 2009 called Tim Ho Wan. From 2012, a chain of restaurants was opened in Singapore in south-east Asia called Tim Ho Wan with a company called Pui Keung Company Ltd as master franchisor. THW Singapore was the master franchisee of the Tim Ho Wan chain of restaurants. THW Singapore was the registered owner of the Tim Ho Wan trade mark.
- THW Singapore, as master franchisee and the owner of the Tim Ho Wan trade mark, entered into a franchise agreement of one in relation to the Tim Ho Wan restaurants in Sydney with respondent, Viadar Holdings Pty Ltd. Under the franchise agreement Viadar agreed that it would use the Tim Ho Wan trademark strictly in accordance with the franchise agreement.
- Viadar did not operate any Tim Ho Wan restaurants. Instead, companies associated with Viadar operated Tim Ho Wan restaurants in three Sydney locations. That was a breach of the franchise agreement. Notices of default under the franchise agreement were served. The breaches were not remedied. The franchise agreement was terminated. The respondents continued to use the Tim Ho Wan trade mark. THW Singapore sought orders restraining the respondents from using the THW trade mark.
- Thawley J held that the evidence established a case for trade mark infringement and made orders enjoining the respondents. His Honour also held that a case for misleading and deceptive conduct had been established. That was at an interlocutory stage.
- This is a typical infringement case of the sort that you will encounter time and again. If for no other reason the case is useful in encapsulating the key authorities that an applicant must successfully reply upon in an application for an interlocutory injunction.
- The next case is Hoser v Sportsbet Pty Ltd.4 It involved the question of whether a television commercial using the phrase “Oi, snake man!” infringed the applicant’s registered trade mark. The case is instructive in its consideration of the concept of “use” of trade mark.
- The facts bear a little attention. Raymond Hoser was a reptile expert and government-licensed wildlife demonstrator. He performed work as a snake charmer, a snake catcher and a licensed fauna surveyor. He owned the registered trade marks “snake man” and he had been widely known since the 1960s as the snake man. He gave evidence that he owned domain names, he had written books about snakes, he had written major scientific papers about snakes and he regularly appeared on commercial television networks over 30 years as “snake man”. He said he owned registered word trade marks in Australia, the UK, the USA and elsewhere conferring on him international brand recognition and a monopoly on the word “snake man”.
- Sportsbet commenced an advertising campaign depicting a snake charmer and a voice-over stating, “Oi, snake man!” He said the use of the word “snake man” was very likely to cause confusion and to mislead the general public into thinking a connection existed between Sportsbet and Mr Hoser. He said the use of the word “snake man” by Sportsbet diluted his trade mark.
- The respondent’s advertisement depicted an Indian snake charmer on a rug on sand, playing on the flute, concentrating fully on charming the snake. The voice-over, “Oi, snake charmer!” words were spoken, causing the snake charmer to stop and look up when he saw a display of a Sportsbet special offer promotional material. When the promotional offer faded, the scene returned to the snake charmer, but he was nowhere to be seen, inferring that he had dashed off to take up the special offer promoted by Sportsbet.
- Three questions were posed for answer by Robertson J. The first and most important was whether the television commercial was a “use” by the respondent of the snake man trade mark. Robertson J held it was not. His Honour held as follows –
- As the High Court explained in E & J Gallo Winery v Lion Nathan Australia Pty Ltd  HCA 15; 241 CLR 144 at , approving the statement of the Full Court of this Court in Coca-Cola Co v All-Fect Distributors Ltd  FCA 1721; 96 FCR 107, at :
Use “as a ‘trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.
- In my view the reference to “snake man” in the advertisement is not a use of a trade mark as a badge of origin. The first step in determining whether there was use “as a trade mark” is to identify the goods or services to which the mark is said to be applied. In this case those constituted offers for online sports betting services. The next step is to consider whether the mark was used in such a way as to indicate a connection in the course of trade between those services and the respondent, so as to distinguish those services from goods or services dealt with or provided by any other person.
- In my opinion, the use of the ordinary English words “Snakeman” or “snake man” in the respondent’s advertisement did not indicate a connection in the course of trade between the online betting services offered and the respondent and was not used to distinguish services dealt with in the course of trade by the respondent.
- Robertson J gave three reasons –
- the words themselves had no connection to the respondent;
- the words were spoken when there was no other brand or sign on screen; and
- the advertisement was in three parts, and the words “Oi, snake man” were confined to a part where there was no promotional material.
- The injunction application was refused.
- You may think that was a harsh result in view of the applicant’s worldwide status as “snake man” and the unauthorised use of that phrase.
- The final case in this survey is PKT Technologies Pty Ltd v Peter Vogel Instruments Pty Ltd.5
- This case involved damages and an account of profit for trade mark infringement. It is a long report and only a few paragraphs are useful.
- In that case the applicant argued that in calculating the loss for which it sought recovery it was entitled to recover profits earned from sales made from trademark infringements in other countries. Nicholas J held that only profits from sales derived from trademark infringements were recoverable if those profits arose from offers to sell that were made in Australia.
- His Honour held that the relevant test for the taking of accounts was as held in Coldbeam Palmer Limited v Stock Affiliates Pty Ltd6 at paragraph 145 as follows (with citations omitted) –
It was also submitted by PVI that any profits made by PVI by sales of the Fairlight Apps have not been shown to be profits made as a result of selling the Fairlight Apps under the Fairlight name. As Windeyer J explained in Colbeam Palmer Ltd v Stock Affiliates Pty Ltd  HCA 50; (1968) 122 CLR 25 at 37-38:
... in the case of a registered trade mark, infringement consists in the unauthorized use of the mark in the course of trade in relation to goods in respect of which it is registered. The profit for which the infringer of a trade mark must account is thus not the profit he made from selling the article itself but, as the ordinary form of order shews, the profit made in selling it under the trade mark. This creates a difficulty in taking the account–a difficulty which also arises sometimes in cases of patents for improvements: see e.g. Goodlet v. Fowler. In passing-off cases an infringer has sometimes been required to account for the whole profits made by his selling of an article under a spurious description. For example in Lever v. Goodwin the Court of Appeal upheld the order of Chitty J. to this effect, Cotton L.J. saying that the sale of soap “in a fraudulent dress was a wrongful act” and that “the profit for which the defendants must account is the profit which they have made by the sale of soap in that fraudulent dress”. In a case of that sort, where a man sells goods by a false representation, the profit for which he is accountable may well be the profit which he makes by selling the goods. But there is nothing in the evidence to suggest that in this case the defendant by its use of the plaintiff's trade mark in fact passed off the painting sets it sold as the goods of the plaintiff. There is no evidence that the name Craftmaster had come to denote for the Australian public the plaintiff’s goods. Indeed it seems that the name was as likely, perhaps more likely, to have meant a kind of article than the products of either the plaintiff or the American company.
- The profit made in selling the product and the infringing trade mark is key.
- To wrap up the survey, we have seen a typical infringement of trade mark case in which an injunction was sought. We saw in the snake man case how “use” can often be of critical importance. And in the PKT case we saw the limits on recoverable profits in an account of profits claim.
- Now I want to move to the next phase of this discussion, the drivers for reform.
Drivers for reform
- Two key events occurred that led to important reforms in IP litigation in Australia that we now see. The first was the establishment of the Intellectual Property Enterprise Court in the UK to deal with a particular category of IP cases. The second was the edict of the Federal Productivity Commission in Australia to make IP litigation accessible, affordable, less complicated and more streamlined in the Federal Circuit Court of Australia. Both of those events provided the background against which the 2018 Intellectual Property Practice Direction of the Federal Circuit Court of Australia was forged.
- Let me to go the UK Intellectual Property Enterprise Court.
- For many years, in the UK intellectual property litigation was conducted in the Chancellory Division of the High Court of Judicature. It had unlimited jurisdiction to deal with IP cases. No scope existed to litigate an IP case elsewhere, save for the jurisdiction of the County Court to deal with patent cases of considerably lesser value. The Lord Chancellor, in conjunction with the Home Office, expressed his concern that a large body of IP litigation which had comparatively lesser monetary value at play, but which nevertheless involved thorny IP points of law were necessarily driven to the Chancery Division to be dealt with there. The response? The creation of the Intellectual Property Enterprise Court.
- Its origins are traceable to the Wolff reforms of the late 1990s. His Honour Judge Birss QC was installed as the judge-in-charge. His Honour inaugurated a set of wholly streamlined rules designed to simplify and demystify the litigation process for IP cases. A monetary sum was introduced, capping claims to be brought in the IPEC at £500 000 and legal costs at £50 000. In 2013 the IPEC was formally constituted as a specialist list of the High Court of Judicature and Chancery Division. Cases can be transferred seamlessly between the courts. Appeals go to the Court of Appeal.
- Simplicity of procedure has been a hallmark in the success of IPEC. Rights of audience have been extended beyond traditional boundaries so that patent attorneys and such like have a right of audience. A simplified claim form is used to commence the case. A response is then filed to answer the claimant’s claim. If a defendant fails to respond, default judgment can be sought. In defended cases, a case management conference is convened before the judge to discuss issues in dispute, documents to be relied on, any expert evidence and a roadmap for the hearing. When the case is heard the judge is interventionist, questioning the witnesses and, where necessary, controlling cross-examination. If the parties agree, and the case warrants it, the case can be dealt with on the papers. A decision is then given, sometimes ex tempore but often after a short period of reservation. The precise details of the operation of IPEC’s operations are set out in rule 63 of the UK High Court Civil Procedure Rules. For those interested, you will find them to be a particularly useful means of taking a cumbersome procedure and simplifying it to give better access to justice to a particular user group of the community.
- IPEC continues to work well in the UK.
- In late 2016 the Federal Productivity Commission published its report into intellectual property arrangements. In essence, the Productivity Commission found that Australia’s IP arrangements fell short in many ways. It recommended improving the entire spectrum of IP in Australia. The Commission focused on the UK model of the IPEC. The Commission recommended the introduction of a specialist IP list with procedures similar to IPEC. The Commission recognised that such measures would increase the workload of the Federal Circuit Court of Australia. But it recommended the Federal Circuit Court of Australia to be Australia’s version of the IPEC. Its precise terms were as follows7 –
While large, well-resourced firms are able to satisfactorily resolve their IP disputes, SMEs are often deterred from doing so due to the high costs and risks involved. Participants pointed to the UK’s Intellectual Property Enterprise Court (IPEC) as one model for addressing these concerns. The Commission has examined this model and the evidence suggests that the IPEC has improved access to justice for SMEs, who now have an avenue for timely and low cost dispute resolution.
The Federal Court has already initiated reforms to improve the efficiency of IP litigation in Australia. While welcome, these reforms are unlikely to provide the savings to litigants afforded by the IPEC model. The benefits of the IPEC derive from its ability to minimise parties’ court appearances and the limits on claimable damages and costs. Some see the specialist nature of the court as further contributing to its success.
The Federal Circuit Court was established to be a lower cost court with less formal rules. Consistent with this approach, the Federal Circuit Court routinely refers IP cases to mediation prior to litigation. Its ‘low-cost DNA’ and informal approach makes it well placed to play a greater role in resolving lower value IP disputes.
The Commission recommends the Federal Circuit Court introduce a specialist IP list, with procedural rules similar to the IPEC. The Court’s jurisdiction should be expanded to cover the full range of IP matters, mandatory caps should apply to cost and damages awards, and strict case management adopted to minimise court events. A separate small claims track suitable for self-represented litigants should provide an informal forum for low value cases.
The Commission anticipates that these reforms will result in some additional demand for the Court’s services. The Court should be adequately resourced to ensure that any increase in its workload does not result in longer resolution times.
- It was against that backdrop that I, as judge-in-charge of general federal law in the Federal Circuit Court of Australia, was requested to undertake and implement the recommendations of the Productivity Commission into intellectual property arrangements. A committee of my court was duly formed, consultations were set in train with the legal profession, with IP users, with IP professionals and academics interested in the field. As with the specialisation of IPEC, several barristers with deep experience in the IP field were recruited to assist in the establishment of the specialist list.
- The result is the Federal Circuit Court of Australia’s Intellectual Property Practice Direction, being PD1 of 2018.
- Before going to the detail, it is useful to get a feel for the end game that the Federal Circuit Court of Australia was seeking to achieve. This too must be set in context.
- For those unaware of the operations of the Federal Circuit Court of Australia, it is a federal court established under Chapter III of the Constitution of the Commonwealth of Australia. It is the largest federal court in the Commonwealth and the reach of its jurisdiction is eclipsed only by that of the High Court of Australia. It is a court of record and law and equity. Its judges, almost 70 of them across Australia, hold tenure until 70 years of age. It deals with over 100 000 cases each year and reserved judgments are handed down inside of three months. Each judge of the court has something in the order of 500 to 650 cases under management at any given time. Some cases are short, being dealt with at trial inside of two days whereas others take up to two weeks at trial or more. Jurisdiction is given to the court mainly by statute although in the accrued jurisdiction of the court claims in common law and equity are typically advanced. The court has no criminal jurisdiction (yet) nor power to deal with applications under the Corporations Act. I am told that moves are afoot, following the wake of the Banking Royal Commission, to confer criminal jurisdiction on the Federal Circuit Court of Australia to deal with committals and summary cases mainly for breaches of federal legislation of a regulatory nature. Likewise, income taxation matters are not presently dealt with in the Federal Circuit Court of Australia and moves are also afoot to change that, so I am told.
- Currently, the court deals with cases in admiralty, administrative law, bankruptcy, consumer law, extradition, equal opportunity and discrimination, human rights, family law, employment law, migration, intellectual property, terrorism and other fields.
- The Federal Circuit Court of Australia is a very, very busy court.
- So why, you ask, does it make sense to burden it with further work?
- The answer is efficiency.
- Intellectual property litigation in the Federal Circuit Court of Australia can be in respect of –
- trade marks;
- plant breeders’ rights; and
- accrued causes of action.
- Its jurisdiction is concurrent with the intellectual property jurisdiction of the Federal Court of Australia save that the Federal Circuit Court of Australia has no power to determine patent cases. And, if as part of the accrued jurisdiction, say, passing off, misleading and deceptive conduct or such like a claim is also advanced, damages are limited to $750 000 for that aspect of the claim. The Federal Circuit Court of Australia’s monetary jurisdiction for damages or for an account of profit is unlimited.
- Let me now go to the detail of intellectual property in the Federal Circuit Court of Australia.
- For copyright claims, matters under Part V are amenable to hearing in the Federal Circuit Court. Typically they are injunctions, claims for declaratory relief, damages or an account of profits or equitable compensation.
- For trademark cases, they fall into –
- appeals from decisions of the Registrar of Trademarks;
- applications for relief against unjustified threats;
- decisions on whether a person has used a trademark;
- determinations on whether a trademark has become generic;
- amending or cancelling registration;
- ordering removal of trademark for non-use;
- applications for rectification of the register.
- For design cases, the Federal Circuit Court can deal with –
- applications from decisions of the Registrar of Designs;
- applications for relief from unjustified threats; and
- under that, an array of other relief.
- The scope of case is very broad.
- Pausing there, intellectual property is a very specialised field. It is not for a judge who dabbles in it periodically. It calls for highly developed skills but most importantly, the users (especially professional bodies who use IP lists) will only retain confidence in the legal system if the judgments given in IP cases are given by judges with demonstrated expertise in the area. In a national court operating out of 36 registries in Australia, that presents some logistical intrigues. Not every registry is stocked with judges possessing IP skills, not every registry has IP cases in it and sometimes judges with the requisite IP skills are distracted with long-running cases in other jurisdictions.
- But litigants should not have to wait. Nor do they. Those two issues have been addressed by the Federal Circuit Court in its new IP practice direction. This is how it has been done.
- Two judges of the Federal Circuit Court of Australia have undeniable pre-eminence in IP cases. Her Honour Judge Baird SC was a Sydney silk practising exclusively in IP cases for 25 years. His Honour Judge Kendall was the Dean of Law at Murdoch University in Western Australia prior to his appointment to the Federal Circuit Court of Australia, lecturing and publishing in intellectual property. Both are held in very high regard by the legal profession and by the IP community. One sits in Sydney and one sits in Perth. In addition, several other judges of the Federal Circuit Court of Australia have highly credentialed backgrounds in IP cases, some of whom were silks at independent Bars across Australia.
- This approach was consonant with the approach adopted by IPEC in the United Kingdom.
- Simplicity is the key to the process. To commence a proceeding, an application and an affidavit is filed. Beware! Different forms are used –
- for copyright cases, the form is in the Copyright Act;
- for trade mark, design and plant breeders’ rights cases, the usual Federal Circuit Court application form is used; and
- for appeals from decisions of the Registrar of Trademarks or the Registrar of Designs, a notice of appeal using Federal Court Form 92 is used.
- Just like in IPEC where a response is filed, so too in the Federal Circuit of Australia a respondent can defend by filing –
- an affidavit in opposition;
- points of defence to points of claim; and
- a full defence to a statement of claim where one is used.
- An innovation is the concise statement to be used instead of points of claim or a statement of claim. The affidavit in support must still be filed. But the concise statement sets out key issues, key facts and the relief sought. It can be in narrative form. Where one is used, a respondent uses a concise statement in response.
- The subject of discussion at the first return date is another innovation. Depending on the urgency, once filed an application will be brought on within three weeks for a case management conference. At that, a discussion will take place about –
- the issues that are truly in dispute;
- the amount of money involved;
- any practical problems associate with advancing the case;
- streamlining the presentation of the case; and
- getting the case to mediation as soon as possible.
- If the case proceeds to trial –
- it usually will be dealt with inside of two hearing days;
- where the parties agree, the decision can be on the papers; and
- a decision will be given within a month, or in urgent cases, within a week.
- Urgent applications are dealt with urgently. At a practical level, if one of the two IP judges is unavailable, the case will be allocated to me as judge-in-charge, usually resulting in my dealing with the case.
- Video teleconferencing and all IT support is used in the Federal Circuit Court of Australia. That means that there is no reason why a case cannot be heard where one party is in one state, the other party is in another state and the judge is in a third state. That works.
- Early indicators reveal promising trends for the success of intellectual property litigation in the Federal Circuit Court of Australia. The recommendations of the Productivity Commission have been put in motion and are seeing tangible achievements. In the meantime, mega-litigation involving IP litigation continues to be heard in the Federal Court of Australia and to a lesser extent, in the state and territory Supreme Courts. The mainstay of IP litigation is heard in the Federal Circuit Court. IP expert Glen McGowan QC formerly of the Victorian Bar but now a solicitor with Gadens, wrote the following –
From 1 July 2018 the Federal Circuit Court is pushing hard to be the main court to deal with non-patent IP cases. The push is clearly directed at SMEs, individual rights holders and young innovators.
The court has jurisdiction covering the bulk of the IP landscape.
For IP practitioners, this is a welcome development. Too often, the simpler or smaller IP cases have felt obliged to issue in the Federal Court because of either jurisdiction or expertise on the bench. The result has been costs blowing out to sums well beyond the value of the case.
I am now actively encouraging clients to consider using the FCC because of its relative ease of use and inexpensive practices. Its forms of relief are not limited and include injunctions, damages, accounts of profits, Anton Pillar orders, Nowrich Pharmacal orders.
What are the disadvantages to using the FCC in IP cases? Not many.
- That came from Mr McGowan’s paper Intellectual Property in the Federal Circuit Court dated 20 November 2018. He referred to the ability of the Federal Court to transfer a proceeding commenced in the Federal Court to the Federal Circuit Court and hinted that such power could even be applied to patent cases. Time will tell on that.
- From the foregoing, several propositions emerge. In no special order they include –
- trade mark litigation, as indeed any IP litigation in superior courts in Australia is a costly, time-consuming and complex exercise;
- in most instances, small to medium enterprises find the cost, inconvenience and complexity of IP litigation such as to be uneconomic, irrespective of the legitimacy of the right a party wishes to enforce;
- prior to 2018 IP litigation was conducted predominantly in the Federal Court or in state Supreme Courts, although the FCC had since its inception dealt with minor IP cases;
- since 2018, the Federal Circuit Court of Australia’s new practice direction has paved the way for IP litigation (not being mega-patent litigation) to be dealt with comparatively cost-effectively and in a timely and relatively straightforward manner.
- Thank you for the opportunity to speak with you this evening. I welcome questions and will do my best to provide succinct answers to all questions asked.
His Honour Judge Josh Wilson QC
8 January 2019
1  FCA 715, 18 May 2018, Thawley J.
2 (1968) 118 CLR 618.
3 (2006) 227 CLR 57.
4 (2018) FCA 1557, 16 October 2018, Robertson J.
5  FCA 1587 , 30 October 2018, Nicholas J.
6 (1968) 122 CLR 25.
7 Productivity Commission, Intellectual Property Arrangements, Inquiry Report No 78 (September 2016) 24 (available at <https://www.pc.gov.au/inquiries/completed/intellectual-property/report>)