Federal Court: trade mark licence restraints can be wider than Trade Marks Act deceptive similarity
By Darron Saltzman and Timothy Creek | Monday, May 23, 2011
Symbion Pharmacy Services Pty Ltd v Idameneo (No. 789) Limited [2011] FCA 389
The Federal Court has held that a contractual restraint prohibiting the respondent-licensee from using a mark similar to or capable of being confused with the licensed mark had a wider effect than what constituted infringement under the Trade Marks Act. The Court, however, dismissed the applicant's claim for trade mark infringement on the basis that it did not call evidence about the likelihood of the respondent's mark to deceive or cause confusion in the "specialised market" (radiology services) in which that mark was used.
This case demonstrates, among other things, that parties to a trade mark licence or assignment need to be diligent in ensuring that they understand the full implications of the licence or assignment document, including any restraints that may be imposed upon them, and the meaning of terms that are expressly included in the document, before they enter into it.
On 24 May 2011, Jessup J ordered that Idameneo 789 be permanently restrained from using the Idameneo 789 Mark.
For a more in-depth analysis of the Court's reasoning, and a discussion of the practical implications of this case, please see the upcoming June 2011 edition of IP Update.
