Federal Court clarifies requirements for substantial identity and timing of ownership

What you need to know

• The Full Federal Court has clarified that to establish the trade mark opposition grounds that rely on proving ownership, ownership of a trade mark application must be satisfied at the time the application was made.
• The Full Court also confirmed the evaluation process for assessing whether trade marks are substantially identical.

What you need to do

• Trade mark applicants should ensure that they are the true owner of the mark in question prior to lodging an application for registration.
• When creating and adopting a new trade mark, businesses should ensure that it is not substantially identical to a mark of a competitor, having regard to the essential elements of the marks and the relative importance of the differences and similarities between those essential elements.  

Background

The parties to this dispute were in the business of providing radiology services. Insight Clinical operates in Western Australia and commenced trading under its mark (depicted below) in 2008. Pham Global (previously known as Insight Radiology) commenced trading in 2012 in New South Wales using the mark depicted below.

Insight Clinical successfully opposed Pham Global's application to register its mark before the Registrar of Trade Marks. A single judge of the Federal Court dismissed Pham Global's appeal against the refusal to register the mark, and found that Pham Global's use of the mark infringed Insight Clinical's mark and amounted to misleading or deceptive conduct under the Australian Consumer Law and passing off. Pham Global appealed the decision to the Full Federal Court.

The Decision

While Pham Global was granted leave to appeal, all of its grounds of appeal were dismissed. The Full Court also found in favour of Insight Clinical on additional grounds.

Ownership

A focus of the decision was the question of ownership. The INSIGHT RADIOLOGY device mark was applied for in the name of Mr Pham, the owner of Insight Radiology. However, the judge at first instance found that Mr Pham was not the owner of the mark and never intended to use the mark for radiological services - rather it was Insight Radiology who was the owner of and used the mark.

Insight Clinical argued that the ground of opposition under section 58 of the Trade Marks Act 1995 (Cth) (the Act) (which provides that registration may be opposed on the grounds that the applicant is not the owner of the mark) should succeed because Mr Pham (who was the applicant) was not the owner of the mark. The judge at first instance dismissed this argument, concluding that the requirement that the applicant own the mark may be satisfied at any time during the currency of the application and because Mr Pham assigned the mark to Insight Radiology that requirement was satisfied.

This finding was overturned by the Full Court. The Full Court concluded that ownership by the applicant must be satisfied at the time the application was made and cannot be satisfied at any time thereafter. The Full Court pointed to numerous earlier decisions and provisions of the Act that support that conclusion.

Substantially identical

The Full Court also found that the INSIGHT RADIOLOGY device mark was substantially identical to the INSIGHT CLINICAL IMAGING device mark. The Full Court stated that the primary judge's process of evaluation when assessing substantial identity miscarried because the primary judge did not refer to the essential elements of the marks or assess the relative importance of the differences and similarities having regarding to those essential elements. In the Full Court's view, the essential elements of both marks are the word "insight" and the circular device. The Full Court concluded that, not only is there a total impression of resemblance between the marks, but also the differences are slight having regarding to their essential elements. Accordingly, section 58 of the Act was satisfied because it was Insight Clinical not Mr Pham or Insight Radiology that was the owner of the INSIGHT RADIOLOGY Device mark.

Reputation

While not crucial to the outcome of the case, the Full Court also made some comments on how reputation is established in a trade mark in Australia. Of particular note, the Full Court stated that given current modes of communication and discourse and free and unfettered rights of travel within Australia, a substantial reputation in Western Australia in a national industry can constitute a sufficient reputation for the grounds of opposition which rely on reputation to be engaged.

A version of this article has been published in World Trademark Review.

Authors: Annika Barrett, Senior Expertise Lawyer; Lisa Ritson, Partner.