The importance of searches before adopting a trade mark

The case of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 shows the importance of a thorough search of the names and marks of potential competitors before adopting a new trade mark.

The facts

Pham Global was sued by Insight Clinical for using the words “Insight Radiology” and a similar logo to Insight Clinical’s registered trade mark.  Pham Global defended the case, in part, on the basis that it had adopted and used its name and logo honestly.

Mrs Pham gave evidence that she conducted business name, ASIC, trade mark and Google searches for the words “Insight Radiology” (and later other terms), but admitted that she could not actually remember doing these searches and was reconstructing what had happened. She also corrected her evidence twice. Insight Clinical provided expert evidence that if Mrs Pham had conducted Google searches, they would have revealed Insight Clinical’s website.

The law

Honesty can operate as a defence to trade mark infringement in some circumstances but it is not sufficient just to be ignorant of the rights of the earlier trade mark owner. The law expects businesses to be careful before starting to use a new trade mark and make sure that they will not infringe someone else’s rights. This means they must do searches that include:

  • Internet search engines such as Google
  • registered business and company names (ASIC)
  • trade journals and telephone directories
  • the Trade Marks Register.

The trial judge considered that Mrs Pham’s searching was not sufficiently careful and therefore held that Pham Global had not been honest in adopting and using its name and mark.

Take home message

  1. When adopting a new trade mark, a business must carry out the searches set out above.
  2. Searching the Trade Marks Register is not as easy as it seems. For example, if someone currently searches just for the words INSIGHT RADIOLOGY they will not locate a prior registration for INSIGHT CLINICAL IMAGING even though both relate to radiology services.  Professional searching services can often locate prior conflicting marks that may not be picked up in a lay search and can avoid the expense of a dispute with another trade mark owner.
  3. When conducting Google and other searches, it is very important to keep copies of the search results, either in electronic or paper form and file them where they can be easily accessed later. If, several years later, your use of a trade mark is challenged, you do not want to be in the position of Mrs Pham, who had to try and recall what searching she had done years before and explain why her searches had not revealed Clinical Imaging.