Catchwords:

TRADE MARKS – infringement – use as a trade mark – whether respondent infringed applicant’s mark by using the “Urban Pale” name as a trade mark – defences to infringement – good faith use – prior use – exercise of a right to use a trade mark – cancellation – whether mark capable of distinguishing goods – whether marks substantially identical or deceptively similar – whether applicant had valid claim to ownership of marks at priority date – whether applicant acquired reputation in its mark – whether use of respondent’s marks would be likely to deceive or cause confusion – whether Court should exercise its discretion under Trade Marks Act 1995 (Cth) to order cancellation of marks – groundless threats – effect of assignment of mark – where cross-claimant delayed in seeking declaratory relief under Trade Marks Act (Cth) – application dismissed – order made for cancellation of applicant’s mark – cross-claim otherwise dismissed



CONSUMER LAW – principles governing the tort of passing off and Australian Consumer Law – whether respondent’s use of the “Urban Pale” name constituted misleading and deceptive conduct and passing off – claims dismissed – infringement – use as a trade mark – whether respondent infringed applicant’s mark by using the “Urban Pale” name as a trade mark – defences to infringement – good faith use – prior use – exercise of a right to use a trade mark – cancellation – whether mark capable of distinguishing goods – whether marks substantially identical or deceptively similar – whether applicant had valid claim to ownership of marks at priority date – whether applicant acquired reputation in its mark – whether use of respondent’s marks would be likely to deceive or cause confusion – whether Court should exercise its discretion under s 88(1)(a) of the(Cth) to order cancellation of marks – groundless threats – effect of assignment of mark – where cross-claimant delayed in seeking declaratory relief under s 129(2) of the(Cth) – application dismissed – order made for cancellation of applicant’s mark – cross-claim otherwise dismissed– principles governing the tort of passing off and ss 18 and 29 of the– whether respondent’s use of the “Urban Pale” name constituted misleading and deceptive conduct and passing off – claims dismissed