Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd (No 2)

In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd (No 2), the respondent, La Sirène, sought a declaration that the trade mark held by the applicant, Urban Alley, was invalid and sought to have it removed from the Register of Trade Marks. The court was required to decide whether to grant the declaratory relief sought by La Sirène and to determine the appropriate costs order in light of the mixed success of the parties. Urban Alley argued that the declaration would produce no foreseeable consequences and would not provide practical relief to La Sirène beyond the rectification of the register. The court agreed and declined to grant the declaratory relief. Regarding costs, the court awarded costs on a lump sum basis as sought by La Sirène, but referred the assessment of costs to a Registrar. The court declined to make any order for the costs of the hearing on relief, and each party was ordered to bear their own costs.

The court found that the declaration sought by La Sirène would produce no foreseeable consequences, as the court would order the cancellation of the trade mark from the Register of Trade Marks and dismiss Urban Alley's infringement claim. The court also found that the form of the declaration was problematic, as the term "invalid" is not a statutory term with a precise meaning under the Trade Marks Act 1995 (Cth). The court held that a declaration that a trade mark is invalid is not informative of the legal findings that were made in relation to the Urban Ale mark. The court also held that the costs should be awarded on a lump sum basis and that the assessment of costs should be referred to a Registrar of the Court. The court declined to make any order for the costs of the hearing on relief, and each party was ordered to bear their own costs.