2015 left much to be desired! I am mobile again and have started to accept briefs. Solicitors do not seem to mind that I have escaped to Mollymook since all the available technology caters very nicely for long-distance lawyering.

My most recent article has now been published in the Australian Intellectual Property Bulletin. It is on a topic I have a great deal of interest in: restraint of trade provisions. It provides a short guide on the issues for consideration when advising on or drafting a restraint clause. The publication also contains a good article on copyright infringement.

As I now have the benefit of no overheads and a view of the ocean, my fees for 2016 are: $350.00 per hr inclusive of GST.

Facton Ltd v Xu [2015] FCA 66

The applicants claimed that Ms Ma had:

Infringed (as a joint tortfeasor) the G-Star trade marks in breach of s 120 of the Trade Marks Act1995 (Cth);Infringed (as a joint tortfeasor) or authorised the infringement of certain copyright works in breach of s 36 of the Copyright Act 1968 (Cth);As a joint tortfeasor committed the tort of passing off; andPrior to 1 January 2011, contravened ss 42 and 44 of the Fair Trading Act and ss 52 and 53 of the Trade Practices Act by the operation of s 75B of the Trade Practices Act and post 1 January 2011, contravened ss 18 and 29 of the Australian Consumer Law NSW.

The applicants said: “The present case is not one where there is evidence that Ms Ma personally handed counterfeit G-Star goods to customers in exchange for money. Rather, the present case is one where such sales were made by a business over which Ms Ma exercised control and asserted ownership and from which she took profits.”

In response, his Honour said: “It is not obvious that, even if Ms Ma exercised control and asserted ownership and took profits from a business that dealt in counterfeit goods, her conduct amounted to one or more of the alleged contraventions and torts. It is necessary to consider the particular conduct proved against the elements of each individual cause of action.”: at [16]. The applicants were unable to meet that onus.

The case was complicated by the fact that Mrs Ma’s involvement in the alleged infringements had to be considered during the period before her divorce from her husband and the period that followed the divorce during which she remained the licensee of the stall from which the infringing goods were sold, owned the warehouse used by her former husband for the storage of the infringing goods and lived in the Lidcombe house where equipment used in the business was kept..

In the context of the facts, the finding that the second respondent was a truthful and reliable witness was clearly a significant element in his Honour’s finding that the applicant had failed to demonstrate liability on the part of Ms Ma for the alleged breaches.

The case provides a warning about the difficulties that can be encountered when seeking to pursue an individual as a joint tortfeasor, and /or for statutory liability.

Cantarella Bros P/L v Modena Trading P/L [2014] HCA48

The majority held that the words "Oro"and "Cinque Stelle" are inherently adapted to distinguish coffee products. They did so on the basis of the evidence led by Modena which was found to fall well short of proving that either word when used on its own is understood in Australia by persons concerned with coffee products to be directly descriptive of the character or quality of such goods. The problem with the use evidence was that it only showed each mark as part of a composite mark rather than on its own. The evidence failed to support the contention that rival traders desired to use these words to directly describe their coffee products.

The majority reviewed the history of the inherent adaptation to distinguish concept, and accepted Cantarella's contention that the inherent adaptability of a mark consisting of a word, including a foreign word is to be tested by checking the ordinary meaning (ordinary signification) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods. in the case of a foreign word it is not the meaning of the word as translated which is critical but rather the meaning conveyed by the foreign word to those who will be concerned with the relevant goods. The fact was that the evidence did not show that either word conveyed a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods to be words having a direct reference to the character or quality of the goods. The existence of a direct reference is essential!

Julstar Pty Ltd v Hart Trading Pty Ltd [2014] FCAFC 151

The appellants had claimed declarations and damages under ss 82 and 87 of the Trade Practices Act 1974 (Cth) arising out of their purchase of two franchises to conduct recruitment businesses in the Gold Coast in Queensland.

The appellants had contended that they had suffered loss and damage principally because, relevantly:

(a) Hart Trading and Mrs Hart had made numerous misleading or deceptive representations to Mrs Stariha between 4 October 2006 and 3 November 2006, on which Mrs Stariha and, through her, Julstar, had relied in deciding to purchase a Frontline franchise business for placement of retail industry staff on the Gold Coast from Hart Trading; and

(b) Frontline and Mr Davis had made misleading or deceptive representations, in November 2006, to Mrs Stariha, first, concerning the prospects of Julstar operating that business successfully, the value of that business and its client base and, secondly, by failing to comply with the Trade Practices (Industry Codes – Franchising) Regulations 1998 (Cth).

The Primary Judge

The primary judge accepted that Mrs Hart had said that “it looked right”, he found that, in context, this remark fell far short of representing that each and every item in Mrs Stariha’s own revisions was accurate. Mrs Hart had invited Mrs Stariha to let her bookkeeper, Ms Hutt, look at the figures, but Mrs Stariha chose not to follow that course and instead chose to act on what she attributed to Mrs Hart’s remark. His Honour found that that remark was not a warranty of accuracy of the spreadsheet. Rather, it was a statement, in context, that the spreadsheet “looked” accurate..His Honour was also not satisfied that Mrs Hart had described the franchise as a “cash cow” or that franchises were highly profitable. The primary judge found that Mrs Stariha relied on her own analysis in reaching a conclusion about the profitability of the business and the acquisition.

Importantly, the primary judge found it odd that “after a period in which Mrs Stariha had been operating the retail business and then the hospitality business, which might be regarded as an objectively reasonable period for a new operator to come to grips with the realisation that the businesses were not profitable in the way she imagined based upon “things” said to her, no complaint is made in emails or correspondence about those matters. By then, it may well have been too late to seek to set aside entry into those businesses but it is odd that Mrs Stariha was not propounding in writing her contentions about the conduct with Mrs Hart, Mr Davis and Mr Downer.

The Full Court

Importantly, the full court made this point which is one that is problematic in this area of the law:

72.In order to determine whether conduct was misleading or deceptive for the purposes of s 52 of the Trade Practices Act and its analogues, the Court must engage in a close analysis of all the circumstances of the transaction: .................As the Court said in Campomar 202 CLR at 85 [102], in approving what Gibbs CJ had said in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 199: “the legislation did not impose burdens which operated for the benefit of persons ‘who fail[ed] to take reasonable care of their own interests’. In the same case, Mason J concluded that, whilst it was unlikely that an ordinary purchaser would notice the very slight differences in the appearance of the two items of furniture in question, nevertheless such a prospective purchaser reasonably could be expected to attempt to ascertain the brand name of the particular type of furniture on offer [Puxu 149 CLR at 210-211].”

73.Importantly, in this case, the witnesses gave their evidence over five years after the events and alleged representations the subject of the litigation in circumstances where Mrs Stariha had not raised any complaint until bringing the proceedings in 2011. That was a considerable period after each of the two purchases had completed. The assessment of the evidence of witnesses in such a case, ordinarily, will be approached in the manner discussed by McLelland CJ in Eq in Watson v Foxman (1995) 49 NSWLR 315 at 318-319 as follows:

“Where, in civil proceedings, a party alleges that the conduct of another was misleading or deceptive, or likely to mislead or deceive (which I will compendiously described as “misleading”) [sic] within the meaning of s 52 of the Trade Practices Act 1974 (Cth) (or s 42 of the Fair Trading Act), it is ordinarily necessary for that party to prove to the reasonable satisfaction of the court: (1) what the alleged conduct was; and (2) circumstances which rendered the conduct misleading. Where the conduct is the speaking of words in the course of a conversation, it is necessary that the words spoken be proved with a degree of precision sufficient to enable the court to be reasonably satisfied that they were in fact misleading in the proved circumstances. In many cases (but not all) the question whether spoken words were misleading may depend upon what, if examined at the time, may have been seen to be relatively subtle nuances flowing from the use of one word, phrase or grammatical construction rather than another, or the presence or absence of some qualifying word or phrase, or condition. Furthermore, human memory of what was said in a conversation is fallible for a variety of reasons, and ordinarily the degree of fallibility increases with the passage of time, particularly where disputes or litigation intervene, and the processes of memory are overlaid, often subconsciously, by perceptions or self-interest as well as conscious consideration of what should have been said or could have been said. All too often what is actually remembered is little more than an impression from which plausible details are then, again often subconsciously, constructed. All this is a matter of ordinary human experience.

Each element of the cause of action must be proved to the reasonable satisfaction of the court, which means that the court “must feel an actual persuasion of its occurrence or existence”. Such satisfaction is “not … attained or established independently of the nature and consequence of the fact or facts to be proved” including the “seriousness of an allegation made, the inherent unlikelihood of an occurrence of a given description, or the gravity of the consequences flowing from a particular finding”: Helton v Allen (1940) 63 CLR 691 at 712.

Considerations of the above kinds can pose serious difficulties of proof for a party relying upon spoken words as the foundation of a causes of action based on s 52 of the Trade Practices Act 1974 (Cth) … in the absence of some reliable contemporaneous record or other satisfactory corroboration.”

74.That caution is also reflected in s 140 of the Evidence Act 1995 (Cth) and in what Dixon J said in Briginshaw v Briginshaw (1938) 60 CLR 336 at 361-363 about the standard of proof. Dixon J emphasised that, when the law requires proof of any fact, the Court must feel an actual persuasion of its occurrence or existence before it can be found. He said that a mere mechanical comparison of probabilities, independent of any belief in its reality, cannot justify a finding of fact.

The appeal was dismissed.

Manhattan (Asia) Limited v Dymocks Franchise Systems (China) Limited [2014] FCA 1143

This case is concerned with a strike out application. It is of interest because both parties are Hong Kong based companies who entered into a franchise agreement for the conduct of a shop in Hong Kong. The primary claim is that the respondent made certain misrepresentations, all of which appear to have been made in Hong Kong!!

It was accepted that section 52 of the Trade Practices Act could only apply if the respondent carried on business at the relevant time in Australia and the representations occurred in trade and commerce between Australia and Hong Kong. The applicant had pleaded that the respondent was at all relevant time controlled by Australian Citizens or persons ordinarily resident in Australia.

During the hearing, the applicant argued that the respondent conducted business in Australia through the conduct of its parent company and “sister” subsidiaries, and as a result of the fact that employees of the Dymocks Group of Companies performed their function as part of an international group.

However, Farrell J points out that carrying on business in Australia requires the applicant to establish that the respondent was involved in activities undertaken as a commercial enterprise in the nature of a going concern on a continuous and repetitive basis ([28]). The fact that the respondent is controlled by an Australia company is not enough.

The claim was not struck out simply because it raises a question of fact which can only be dealt with once the respondent has filed its affidavit evidence.

The applicant also pleaded that the respondent had encouraged it to assume that the Australian Franchising Code would apply to the transaction. It could not apply since it requires a franchise agreement which operates in Australia ([39]).

The applicant then argued that it was an implied term that the provisions of the Code would apply to the franchise agreement. That claim was held to be doomed to fail and struck out ([72]).

The applicant also sought an order for rescission of the franchise agreement. This claim was also struck out.

The respondent sought security for costs. The applicant raised the usual grounds that the applicant’s impecuniosity was caused by the respondent and that the order for security would stultify the litigation. Farrell J noted that the individuals behind the applicant had not established that they as the persons who would benefit from the applicant’s success, are unable, as opposed to unwilling, to provide security. His Honour determined that he would grant security for the respondent’s costs.

Section 15 of the Patents Act 1990 (Cth)

Con Kafataris & Ors v Cory Davis & Ors [2014] NSWSC 1454

Issues: The plaintiff sought a declaration that he is an inventor, within the meaning of section 15 of the Patents Act 1990 (Cth), of the invention the subject of the PCT. He also sought to also establish that the defendants misused his confidential information.

Short Summary of Facts: On 3 April 2012, Mr Davis filed a provisional patent application with IP Australia, with the invention titled "Baccarat game with supplementary betting option" (the provisional application). Mr Thomas was named as the sole inventor of the invention the subject of that application.

On 14 November, the plaintiff was introduced to the defendants at a meeting arranged by Mr George Barbouttis. On 19 December, the plaintiff, defendants and Mr Barbouttis had a meeting to discuss a proposed partnership for the commercial exploitation of the invention. There followed ongoing discussions re the appropriate shareholding structure.

Mr Kafataris asserted that during the period from January to March 2013, he developed a betting opportunity that was specific to blackjack, rather than baccarat. It was the characterisation of this development that formed the central part of the plaintiff's case. The plaintiff asserted that it was a material contribution to the invention set out in the PCT application. The defendant asserted that the development was already covered in the terms of the provisional application or alternatively merely an application of the invention that was obvious to a person skilled in the art, and hence not a material contribution.

Comment: In Bodkin's Patent Law in Australia (2nd edition), the author notes at [8030] that there has been relatively little judicial consideration in Australia of what amounts to inventorship. The limited authorities state that whether or not a person should be regarded as an inventor is quintessentially a question of fact and it is therefore important to carefully analyse precisely what the person has done in relation to the invention and whether that can be described as qualitative or quantitative.

The plaintiff's contended that Mr Kafataris made a material contribution by identifying a supplementary betting option within the game of blackjack. Sackar J did not agree. His Honour said at [235] “ I am not satisfied that his analysis as it were involved any inventive step at all or should be seen as a material contribution to the invention. As Justice Aickin pointed out in Minnesota Mining the opening of a safe is easy when the combination has already been provided. More relevantly perhaps in this case Mr Thomas identified the possibility of a supplementary betting option and provided Mr Kafataris with in effect a torch. Mr Kafataris decided with the acquiescence of Mr Thomas and others that he would use it on the rules of blackjack. But Mr Kafataris was only able to identify a similar opportunity in blackjack after the idea of a supplementary betting opportunity had already been identified in baccarat.

On the issue of breach of confidence, his Honour said: Given the source of the material from a public website and/or the defendants themselves, and the ease with which the information in the odds spreadsheets could be easily duplicated, I am not satisfied that the information has the requisite qualities which would require protection by equity.

Nor am I convinced that the information was imparted in circumstances importing an obligation of confidence. There was never any request to keep such information confidential, nor any attempt to impose a non-disclosure agreement or other similar means of protecting confidential information in commercial negotiations. There is in fact no evidence whatsoever that Mr Kafataris ever indicated, expressly or impliedly, that the information now sought to be protected should be regarded as confidential by the defendants or Mr Walsh.

Finally, to the extent that the information has the necessary quality of confidentiality or was imparted in circumstances suggestive of such, I am not satisfied that Mr Kafataris did anything other than consent or authorise the inclusion of such information in the PCT application. He was a willing participant in such an inclusion.

Regulation 5.15 (1) (b) of the Trade Mark Regulations was repealed by the Raising the Bar Regulations, and that there is now no provision for seeking permission to rely on further evidence. New regulation 5.15 is only concerned with applications for an extension of the time periods stipulated in Regulation 5.14. As Reg. 5.15 (1)(b) was usually used by parties to ensure that further evidence could be relied upon at the hearing of an opposition, its repeal causes problems where there is a need to remedy a paucity of evidence or correct or amplify evidence prior to the hearing of an opposition. Where the opposition was commenced prior to 13 April 2013, familiarity with the transitional provisions is called for! The change clearly calls for a detailed assessment of what is needed to meet the onus on the opponent and, in the case of the applicant, to counter the factual claims made by the opponent, if necessary. You will, it appears, not get a second bite of the cherry at the hearing.

What follows is a short discussion of the main issues of this case. What is striking about it is the lack of reference to relevant Australian authorities, and the emphasis on “authorship”.

Bauer Consumer Media Ltd and Bauer Media Pty Ltd v Evergreen Television Pty Ltd [2014] ATMO 78 (25 August 2014)

Opposition re “DISCOVER DOWNUNDER” mark

The facts are rather convoluted but all parties appear to have agreed that the applicant was the corporate vehicle used by Colin Parrot for the production of TV programs, that the Discover Downunder series was broadcast by Network Ten and its affiliates during 2005 – 2006 while Nine Network broadcasted the series in 2007 – 2009; and that these broadcasts were made under licence from the applicant. The licences included a right to use the Discover Downunder mark in respect of these broadcasts.

Accordingly, there was indisputable evidence that the mark had been used prior to the priority date of 9 October 2009 (priority date). In those circumstances, the issue of “authorship” was irrelevant as “authorship” only has a part to play in determining who was the proprietor of a mark for the purposes of the Trade Marks Act as at the priority date in circumstances where the mark has never been used prior to that date: Colorado Group Ltd v Strandbags Group Pty Ltd (2006) 67 IPR 628 at [23]); approved on appeal by the full court at [4] Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184.

Accordingly, on the basis of the above facts, the proprietor of the mark as at the priority date was the applicant.

The opponents sought to argue that they “owned” the mark because the mark and the concept for the show was developed by an employment in the course of his employment or because they were the first users, or because they have used it since 2005, including in the operation of a website and the securing of sponsorship. Oddly enough there appears to have been adduced no evidence as to how the alleged ACP ownership of the mark found its way to Bauer when it acquired the assets of ACP. This was clearly a matter that called for evidence as the members of a group of companies cannot share ownership of a trade mark (Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd [2012] FCA 1022 at [133] – [92].

The employment issue called for determination of two matters: firstly, was Warren Parrot (Colin’s son) who Bauer claimed authored the mark in 2004, an employee of ACP at that time; and secondly, if he was, was the development of concept for shows part of his contract of employment. No one disputed that Warren Parrot was employed by ACP (part of The Nine Entertainment Group until sold to Bauer in 2012) although he was employed originally as a Senior Accounts Manager and later as “national Corporate Sales Manager”. The decision does not suggest that the opponents provided an explanation as to the specific tasks he was employed to undertake. Whether intellectual property (here the concept for the series, including the name, that was ultimately used) is owned by an employer has been the subject of a number of Australian decisions. In University of Western Australia v Gray [2009] FCAFC 116 the court emphasised that an employee will only be deprived of the benefit of intellectual property developed or produced by him/her if he/she was specifically engaged to do work which involved or anticipated the possibility of the creation of such intellectual property or if he/she is bound by an express term that such intellectual property will vest in the employer and such provision is not found to be unreasonable. Accordingly, even if the mark was authored by Warren Parrot, the issue of ownership was one to be determined by reference to the terms of his contract of employment if, in fact, he was the person who authored the name.

In the case of a contract for services, the intellectual property rights ownership needs to be dealt with in the contract as otherwise the ownership remains with the creator. The evidence adduced by the opponents was more supportive of the existence of a contract for services but failed to establish any agreement as to ownership of the intellectual property.

There is one vital point which the decision does not address nor does it appear was it addressed by the parties. If the opponent had had evidence supporting a finding that Warren Parrot did author both the concept and the mark while employed by ACP and did so pursuant to his contract of employment how would that fact have defeated the applicant’s proprietorship of the mark based on use by its licensees prior to the priority date (there was no convincing evidence of ACP’s use prior to the first use by Network Ten) ? “Use” clearly triumphs over “authorship” unless the act of the applicant involves the misuse of confidential information, breach of the duty of loyalty, breach of fiduciary duty or breach of contract. That all important issue appears to have been neither argued nor considered.

There is a standard misconception about what constitutes trade mark infringement. A misconception dealt with by Shanahan at page 618. You may find the following explanation by the full Fed Court helpful when dealing with an argument based on that misconception.

Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721

19 Under the 1955 Act a registered mark was infringed by someone who "uses a mark which is substantially identical with, or deceptively similar to, the trade mark, in the course of trade". In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 it was said to be implied in both s 58(1) and s 62(1) of the 1955 Act that the "use" there referred to is limited to use "as a trade mark". Section 120 of the current Act expressly incorporates that requirement. Counsel for the respondent submitted that whether the respondent was using the sign as a trade mark depended on the answer to the question - "Do I, just by looking at the confectionary, conclude that the shape is put there to tell us that the Coca-Cola Co is the manufacturer of those goods?" This formulation, it was said, was an adaptation of what Kitto J had said in Shell. In our view counsel's formulation is not a correct adaptation and does not ask the right question. Use "as a trade mark" is use of the mark as a "badge of origin" in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods. See Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 at 341, 351. That is the concept embodied in the definition of "trade mark" in s 17 - a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

20 The authorities provide no support for the view that in determining whether a sign is used as a trade mark one asks whether the sign indicates a connection between the alleged infringer's goods and those of the registered owner. Cases such as Mark Foy's Ltd v Davis Coop & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 at 204-205, the Shell Case at 425, Johnson & Johnson at 347-348, 351, Wingate Marketing Pty Ltd v Levi Strauss [1994] FCA 1001; (1994) 49 FCR 89 at 134-145 and Musitor BV v Tansing [1994] FCA 1242; (1994) 29 IPR 203 at 213, 216 show that the question is whether the sign used indicates origin of goods in the user of the sign; whether there is a connection in the course of trade between the goods and the user of the sign.

In 2000 the full court of the Federal Court reaffirmed that the crucial question in a claim for trade mark infringement is whether the manner of use of the mark by the respondent is use as a trade mark. The High Court in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 said:

41. The concept of "use" of a trade mark which informs ss 92(4)(b), 100(1)(c) and 100(3)(a) of the Trade Marks Act must be understood in the context of s 17, which describes a trade mark as a sign used, or intended to be used, to "distinguish" the goods of one person from the goods of others.

42 Whilst that definition contains no express reference to the requirement, to be found in s 6(1) of the Trade Marks Act 1955 (Cth)[14], that a trade mark indicate "a connexion in the course of trade"[15] between the goods and the owner, the requirement that a trade mark "distinguish" goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of "goods to which the mark is applied"[16]. Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark[17]. There is nothing in the relevant Explanatory Memorandum[18] to suggest that s 17 was to effect any change in the orthodox understanding of the function or essential characteristics of a trade mark.

In Coca-Cola Co v All-Fect Distributors Ltd[19] a Full Court of the Federal Court of Australia said:

"Use 'as a trade mark' is use of the mark as a ' badge of origin ' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of 'trade mark' in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else."

That statement should be approved.”

This an issue fraught with difficulties where the mark is descriptive, and has been exacerbated by the wide-spread use of the internet for search and general marketing purposes.

In Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75, the applicant has a registration for “LIFTSHOP” with some pretty innocuous embellishments. The respondent had in its endeavour to maximise search engine optimization caused to be drafted a title for its website including the top five keywords selected from its competitors webside addresses. With the result that when a search was done what appeared was “EasyLiving Lifts/Home Elevators/Lift Shop –Lift Shop. The court at first instance found that there was no trade mark use.

The judge found that the term “list shop”was being used descriptively by third parties, and that in this industry the term has an understood generic connotation. The appellant contended that the judge was wrong in taking that fact, especially that other parties were using the term in the titles of their websites, into consideration when determining the trade mark use issue. The full court rejected that contention referring to Gummow J’s observations in the Johnson & Johnson case to the effect that infringing use may be considered in light of a usage common to the relevant trade : [44] . In making its determination of whether the use by the respondent was a trade mark use, the court considered the nature and purpose of the use which the court found was simply to tell the public that is is selling lifts: [46].

Halal Certification Authority Pty Limited v Scadilone Pty Limited [2014] FCA 614 was concerned with the alleged infringement of a registered trade mark consisting of a form of Halal certification for , inter alia, issuing halal certifications to business. Such certification means that that the meat offered has been slaughtered in accordance with the relevant Islamic rites. The mark was not registered as a certification mark but as an ordinary trade mark. Both respondents (butchers) had displayed this certificate on their premises. They had no authorization to do so.

The infringement issue was simply dealt with by the court by reference to s.120(c) of the Trade Marks Act, the court finding that the mark had been used in relation to kebabs and that they are goods closely related to the registered services. The judgement contains no discussion of the privotal issue in a trade mark infringement case, was the use by the respondent a trade mark use! Since the content of the trade mark was really only indicative of compliance with certain rites it is rather difficult to see how it could have been acting as a badge of origin when used by the respondents: Koninklijke at 48 IPR 257 at 263 – 264 where the distinction was demonstrated by reference to the Edward Young case (picture of a bullock cart ladden with large a large barrel). The applicant was awarded $91,015 against the first respondent as damages for trade mark infringement.