Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd

Polo Textile Industries Pty Ltd initiated proceedings against Domestic Textile Corporation Pty Ltd, contending that the latter's use of the mark "Polo Club" infringed Polo Textile's registered trade mark "Polo". The dispute centred around the sale of similar goods, with the plaintiff arguing that the quality of the defendant's stores was not sufficiently different to negate the infringement. The case was heard in the Federal Court of Australia.

The legal issues included whether the defendant's use of "Polo Club" constituted an infringement of the plaintiff's trade mark "Polo", and whether the defence under section 62(2) of the Trade Marks Act 1995 (Cth) was applicable. Additionally, the court needed to determine if the cross-claim by the defendant that the plaintiff's mark was a surname and had not been used for three years was valid. The plaintiff's reliance on the use of the trade mark by an unregistered licensee and the definition of "goods of the same description" under section 23(2) of the Act also needed to be examined.

The court held that the use of "Polo Club" by the defendant did infringe the plaintiff's trade mark, as the stores' quality did not sufficiently distinguish the use of the marks. The defence under section 62(2) was not applicable, as it did not focus on the specific circumstances required to consider infringement. The cross-claim by the defendant was dismissed, as occasional use of the trade mark was sufficient to counter the claim of non-use for three years. The court also ruled that the plaintiff could rely on the use of the trade mark by an unregistered licensee and that the goods sold by the defendant were of the same description as those for which the plaintiff's trade mark was registered. The court exercised its discretion under section 23 to grant relief.

The court ordered that Polo Textile Industries Pty Ltd and Domestic Textile Corporation Pty Ltd bring in short minutes of orders to reflect the reasons of the Court, with settlement and entry of orders to be dealt with in accordance with Order 36 of the Federal Court Rules.