Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd

Sensis Pty Ltd initiated legal proceedings against Senses Direct Mail and Fulfillment Pty Ltd, seeking to enforce its rights under the Trade Marks Act 1995 (Cth). Sensis alleged that Senses Direct had infringed its registered trade marks, which are related to the provision of direct marketing and data processing services. The case was heard in the Federal Court of Australia, which was tasked with determining the infringement of trade marks and the non-use of the applicant's registered marks.

The central legal issues included whether Senses Direct's use of its trade marks was deceptively similar to Sensis's registered marks, thereby constituting infringement under section 120(1) of the Act. Additionally, the court had to consider the applicability of the defence under section 122(1)(fa) of the Act, which pertains to the date at which the defence is to be assessed. The court also needed to determine whether Sensis had established a reputation for its marks that would preclude the registration of Senses Direct's marks under section 60 of the Act. Furthermore, the court had to decide whether the doctrine of honest concurrent use under section 44(3)(a) of the Act applied to Senses Direct. Finally, the court examined whether Sensis had used its registered marks within the non-use period and if there were grounds for removing the non-use services from the registration.

The court concluded that Senses Direct's marks were indeed deceptively similar to Sensis's marks, and thus constituted infringement under section 120(1) of the Act. The court held that the defence under section 122(1)(fa) should be assessed at the date of the alleged infringing conduct. The court also found that Sensis had not established the required reputation in its marks to preclude the registration of Senses Direct's marks under section 60 of the Act. Furthermore, the court determined that section 44(3) was not available as a defence to Senses Direct because it did not use its marks prior to the date of the first infringing use. The court found that Sensis had used its marks within the non-use period in respect of services within the scope of the proposed amended excluded services.

The court directed the parties to provide proposed minutes of order within fourteen days, giving effect to these reasons. The entry of orders was to be dealt with in accordance with Rule 39.32 of the Federal Court Rules 2011. The court ordered that the parties provide orders by 7 June 2019.