Eterna S.A. Fabrique D'Horlogerie v Advance Australasia Pty Ltd

Eterna S.A. Fabrique D'Horlogerie (Eterna) commenced proceedings against Advance Australasia Pty Ltd (Advance) in the Federal Court of Australia. The dispute concerned Eterna's claim that Advance had infringed its trade mark, specifically the word mark "ETERNA" as applied to watches and watch parts. Eterna sought an injunction to restrain Advance from using the mark and an order for an account of profits.

The primary legal issue before the court was whether Advance's use of the mark "ETERNA" on its products constituted a contravention of section 120(1) of the *Trade Marks Act 1995* (Cth). This required the court to determine if the goods in respect of which Advance used the mark were "closely related" to the goods for which Eterna's trade mark was registered, and if the use of the mark was likely to deceive or cause confusion.

Justice Forno found that the goods were indeed closely related, as both parties dealt in watches and watch parts. Crucially, his Honour determined that there was a real and substantial risk that consumers would be deceived or confused into believing that Advance's goods were either manufactured by Eterna, or were in some way associated with or endorsed by Eterna. This conclusion was based on the identical nature of the marks and the close relationship between the goods.

Consequently, the court found that Advance had infringed Eterna's trade mark. The court ordered that Advance be restrained from using the trade mark "ETERNA" in relation to watches and watch parts, and ordered an account of profits.