Playgro Pty Ltd v Playgo Art & Craft Manufactory Ltd

Playgro Pty Ltd, the plaintiff, brought an action against Playgo Art & Craft Manufactory Ltd, Playgo Craft and Playgo Enterprises, the defendants, alleging infringement of trade marks registered in Australia. The central dispute was whether the respondents' use of the device mark 'PLAYGO' was substantially identical with or deceptively similar to the plaintiff's marks 'PLAYGRO', and whether the respondents had used the mark in Australia, thereby infringing the plaintiff's rights. The case was heard in the Federal Court of Australia.

The court had to decide three main legal issues. First, whether the respondents' device mark 'PLAYGO' was substantially identical with, or deceptively similar to, the plaintiff's trade marks. Second, whether the respondents 'used' as a trade mark the device mark in Australia. Third, whether Playgo Enterprises had a 'common design' with Myer to supply 'PLAYGO' branded toys for sale in Australia, such that Playgo Enterprises was a joint tortfeasor in any infringing sales by Myer.

The court concluded that the respondents' device mark 'PLAYGO' was not substantially identical with, or deceptively similar to, the plaintiff's marks 'PLAYGRO'. The court found that the marks were not similar in appearance, sound, connotation or commercial impression, and that consumers would not be confused by the marks. The court also found that the respondents did not 'use' the device mark as a trade mark in Australia because property in and risk in relation to the goods passed overseas. However, the court found that Playgo Enterprises did not have a 'common design' with Myer to supply 'PLAYGO' branded toys for sale in Australia, and therefore Playgo Enterprises was not a joint tortfeasor in any infringing sales by Myer. The court concluded that the respondents infringed the plaintiff's trade marks contrary to section 120(1) of the Trade Marks Act 1995 (Cth).

The court ordered that the parties bring in minutes of orders within 7 days to give effect to the reasons. The entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.