Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd

In the Federal Court, Bohemia Crystal Pty Ltd (BCP) sought to revoke trade marks owned by Host Corporation Pty Ltd (Host) and to establish that certain uses by Host of the term "Bohemia" constituted infringement and misleading or deceptive conduct. The primary dispute centred around the distinctiveness of the trade marks "BOHEMIA" and "BOHEMIA CRYSTAL" and whether Host's use of these terms infringed upon BCP's rights and/or constituted misleading or deceptive conduct under the Australian Consumer Law (ACL). The court had to determine whether the marks were inherently adapted to distinguish the goods and if they had been used in a way that distinguished them from other goods. Additionally, the court examined whether Host's use of the term "Bohemia" amounted to trademark infringement or misleading or deceptive conduct.

The court found that neither the "BOHEMIA" nor the "BOHEMIA CRYSTAL" trade marks were capable of distinguishing the goods in question from those of other persons. The marks were not inherently adapted to distinguish the goods, and there was insufficient evidence to demonstrate that they had been used to distinguish Host's goods. Consequently, the court concluded that the registrations of these trade marks should be cancelled. The court also found that some of Host's uses of the term "Bohemia" constituted trademark infringement, while others did not. No use by Host was found to contravene the ACL.

The court's decision was based on a detailed analysis of the evidence provided by both parties, including dictionary definitions and expert testimony. The court emphasised the importance of the distinctiveness of trade marks and the need for continuous use to maintain their distinctive character. The court also highlighted the need for clarity in the representation made by the use of a term to determine whether it constitutes trademark infringement or misleading or deceptive conduct.

The final orders required the parties to endeavour to agree on the appropriate form of orders, including costs, within 14 days. If an agreement could not be reached, the parties were to notify the Court of their respective contentions and provide written submissions within 21 days. The entry of orders was to be dealt with in accordance with Rule 39.32 of the Federal Court Rules 2011.