Starr Partners Pty Ltd v Dev Prem Pty Ltd

Starr Partners Pty Ltd sought to enforce its registered trade mark against Dev Prem Pty Ltd, which was accused of infringing the mark by using a similar mark in its real estate business. The case was heard in the Supreme Court of New South Wales, with the appeal subsequently reaching the Court of Appeal. The central issue was whether Dev Prem Pty Ltd's use of its mark constituted an infringement of Starr Partners Pty Ltd's registered trade mark under s 120(1) of the Trade Marks Act 1995 (Cth). This section provides that there is infringement if the respondent uses a sign that is "substantially identical with" or "deceptively similar to" the appellant's registered mark in relation to services for which the latter is registered. The court needed to determine whether Dev Prem Pty Ltd's mark was deceptively similar to Starr Partners Pty Ltd's registered mark. The Court of Appeal found that the primary judge had erred in overemphasising a literal comparison of the marks at the expense of broader considerations, including the likelihood of confusion among consumers. The appellate court concluded that the marks were deceptively similar and that Dev Prem Pty Ltd's use of its mark was likely to cause confusion, thus constituting an infringement. Consequently, the appeal was allowed, and the orders made by the primary judge were set aside. The Court of Appeal granted Starr Partners Pty Ltd an injunction against Dev Prem Pty Ltd, prohibiting it from using the infringing mark in relation to its real estate business, and ordered Dev Prem Pty Ltd to pay Starr Partners Pty Ltd's costs of the appeal and the proceeding at first instance.