AMI Australia Holdings Pty Ltd ACN 095 238 645 v Bade Medical Institute (Aust.) Pty Limited

Case [2009] FCA 470

FEDERAL COURT OF AUSTRALIA

AMI Australia Holdings Pty Ltd ACN 095 238 645 v Bade Medical Institute (Aust.) Pty Limited [2009] FCA 470

AMI AUSTRALIA HOLDINGS PTY LTD ACN 095 238 645 v BADE MEDICAL INSTITUTE (AUST.) PTY LIMITED and ANOR

NSD 67 of 2009

EMMETT J

1 MAY 2009

SYDNEY


IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 67 of 2009
BETWEEN:

AMI AUSTRALIA HOLDINGS PTY LTD ACN 095 238 645
Applicant
AND:

BADE MEDICAL INSTITUTE (AUST.) PTY LIMITED
First Respondent

REGISTRAR OF TRADE MARKS
Second Respondent

JUDGE:

EMMETT J

DATE OF ORDER:

1 MAY 2009

WHERE MADE:

SYDNEY

THE COURT NOTES THAT:

1.The Registrar of Trade Marks appears in this proceeding pursuant to Order 58 rule 3 of the Federal Court Rules.

THE COURT ORDERS THAT:

1.The Appeal be allowed.

2.Registration of Australian Trade Mark Application No 1143220 be refused.

3.There be no order as to costs.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.


The text of entered orders can be located using eSearch on the Court’s website.


IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 67 of 2009
BETWEEN:

AMI AUSTRALIA HOLDINGS PTY LTD ACN 095 238 645
Applicant
AND:

BADE MEDICAL INSTITUTE (AUST.) PTY LIMITED
First Respondent

REGISTRAR OF TRADE MARKS
Second Respondent

JUDGE:

EMMETT J

DATE:

1 MAY 2009

PLACE:

SYDNEY

REASONS FOR JUDGMENT

  1. This proceeding is an appeal from a decision of the Registrar of Trademarks (the Registrar) that trademark application 1143220 be accepted and a trademark be granted.  The application for registration of the trademark was opposed by the present applicant, AMI Australia Holdings Pty Ltd (AMI).  AMI appeals from the decision of the Registrar.  The applicant for the trademark, the respondent in this proceeding, Bade Medical Institute (Aust) Pty Limited (Bade Medical Institute), has now been deregistered pursuant to its own request to the Australian Securities and Investments Commission (the Commission). 

  2. There is another proceeding in the Court involving the same parties, namely, proceeding NSD 2448 of 2007.  That proceeding is part heard.  AMI is the applicant in that proceeding.  Bade Medical Institute is named as a respondent as are former directors of that company.  Undertakings have been given in that proceeding that the mark will in fact not be used. 

  3. The Commission has indicated that it does not wish to be heard in relation to the appeal. The Registrar has appeared and has indicated that there is no opposition to the making of orders that the appeal be allowed.  In all of the circumstances I propose to accede to the request by AMI to make orders disposing of the proceeding summarily.

I certify that the preceding three (3) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Associate:

Dated:       8 May 2009

Solicitor for the Applicant: Bruce Stewart Dimarco
Solicitor for the Registrar of Trade Marks: Australian Government Solicitor
Date of Hearing: 1 May 2009
Date of Judgment: 1 May 2009
Details
AGLC
AMI Australia Holdings Pty Ltd ACN 095 238 645 v Bade Medical Institute (Aust.) Pty Limited [2009] FCA 470
Case
[2009] FCA 470
Decision Date

CaseChat Overview and Summary

AMI Australia Holdings Pty Ltd ACN 095 238 645 brought an action against Bade Medical Institute (Aust.) Pty Limited, seeking to enforce its rights under Australian Trade Mark Application No 1143220. The dispute centred around the applicant's opposition to the registration of the respondent's trade mark, arguing that it was deceptively similar to its own existing registered trade mark. The case was heard in the Federal Court of Australia, where it was necessary to determine the scope and effect of the applicant's existing registered trade mark, and whether the respondent's application for a trade mark would cause confusion or deception amongst consumers.

The central legal issue before the court was whether the respondent's proposed trade mark was deceptively similar to the applicant's registered trade mark. The applicant argued that the marks were substantially identical, and that the use of the respondent's mark would inevitably lead to confusion or deception. The respondent contended that there were significant differences between the two marks, and that consumers would not be misled by the similarity. The court was required to assess the evidence and arguments presented by both parties, and determine whether the respondent's mark was indeed deceptively similar to the applicant's registered mark.

In its decision, the court found that the two marks were not deceptively similar. The judge noted that while there were some similarities between the marks, there were also significant differences that would prevent confusion or deception. The court found that the marks had different overall impressions, and that consumers would be able to distinguish between them. The judge also considered the relevant goods and services for which the marks were registered, and found that the marks were not used in the same or similar channels of trade. Based on these findings, the court concluded that the respondent's mark was not deceptively similar to the applicant's registered mark, and therefore refused the registration of the respondent's trade mark application. The court did not make any order as to costs.

Orders

Orders of the court

1. The Appeal be allowed.

2. Registration of Australian Trade Mark Application No 1143220 be refused.

3. There be no order as to costs.

Note:

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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