Austbar Pty Ltd v ABA Australian Bar Association Ltd (No.2)

Austbar Pty Ltd (the applicant) sought an order from the Federal Circuit Court of Australia that ABA Australian Bar Association Ltd (the respondent) be restrained from using the name "Australian Bar Association" and the associated logo. The applicant claimed that the respondent's use of this name and logo infringed its registered trade mark, which also comprised the name "Australian Bar Association" and a similar logo. The dispute centred on whether the respondent's activities constituted trade mark infringement and whether the applicant was entitled to an injunction to prevent such use.

The primary legal issues before the Court were whether the respondent's use of the name and logo constituted an infringement of the applicant's registered trade mark under the *Trade Marks Act 1995* (Cth), and if so, whether an injunction should be granted. This involved determining whether the respondent was using a "sign" that was "identical with or deceptively similar" to the applicant's registered trade mark in relation to goods or services for which the trade mark was registered. The Court also considered the scope of the respondent's activities and whether they fell within the relevant classes of goods and services.

Dowdy J found that the respondent's use of the name and logo was indeed deceptively similar to the applicant's registered trade mark. The Court reasoned that the respondent's activities, which included providing services related to the legal profession and promoting the interests of barristers, were within the scope of the goods and services for which the applicant's trade mark was registered. Consequently, the Court concluded that the respondent had infringed the applicant's trade mark rights.

The Court ordered that the respondent be restrained from using the name "Australian Bar Association" and the associated logo in connection with the provision of services that were identical or deceptively similar to those for which the applicant's trade mark was registered. The respondent was also ordered to pay the applicant's costs of the proceeding.