Symbion Pharmacy Services Pty Ltd v Idameneo (No 789) Limited

The matter before the court was an action brought by Symbion Pharmacy Services Pty Ltd against Idameneo (No 789) Limited. The applicant alleged that the respondent had infringed a trade mark registered under the Trade Marks Act 1995 (Cth) and had breached a contractual obligation not to use the registered mark or a corresponding unregistered mark, or any mark similar thereto or capable of being confused therewith. The dispute arose from a series of transactions in which the applicant, then a subsidiary of the respondent, was sold to a third party, and the respondent made promises not to use certain marks that were retained by or transferred to the applicant.

The court had to decide several legal issues. Firstly, whether the respondent's use of its own mark constituted an infringement of the applicant's registered mark under the Trade Marks Act 1995 (Cth). This required determining whether the respondent's mark was so nearly similar to the applicant's registered mark as to be likely to deceive or cause confusion. Secondly, the court had to consider whether the respondent had breached the contractual obligation not to use the registered mark or a corresponding unregistered mark, or any mark similar thereto or capable of being confused therewith. Thirdly, the court needed to assess whether the contractual term "similar to or capable of being confused with" could be equated with the statutory term "likely to deceive or cause confusion".

The court found that the respondent's use of its own mark did not constitute an infringement of the applicant's registered mark under the Trade Marks Act 1995 (Cth). The respondent's mark was not so nearly similar to the applicant's registered mark as to be likely to deceive or cause confusion. The court held that the contractual term "similar to or capable of being confused with" did not equate with the statutory term "likely to deceive or cause confusion". The court also found that the respondent had not breached the contractual obligation not to use the registered mark or a corresponding unregistered mark, or any mark similar thereto or capable of being confused therewith. The respondent's use of its own mark did not fall within the scope of the contractual obligation.

The court ordered that the proceeding be listed at 9:30 am on Monday 9 May 2011 for the purpose of hearing the parties on the orders to be made to reflect the reasons of the court published today, and on the question of costs. The parties were required to exchange, and file, their draft minutes of the orders proposed to be made no less than 7 days before the date of the hearing.