On Friday 11 March, Phillips Ormonde Fitzpatrick Lawyers had a big win for its client Flexopack S.A. Plastics Industry in an important trade mark decision: Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd & Anor  FCA 235.
The win was on all claims made, with Justice Beach finding that Flexopack Australia Pty Ltd infringed Flexopack S.A.’s trade mark, engaged in passing off and breached the Australian Consumer Law.
Importantly, the decision provides guidance as to the operation of the own name defence to trade mark infringement under subsection 122(1)(a) of the Trade Marks Act 1995. Flexopack Australia Pty Ltd argued that it came up with its company name without any knowledge of Flexopack S.A. It submitted that it had no knowledge of the Flexopack S.A.’s registered trade mark for a Flexopack logo as it had not done a trade mark search at the time of deciding on its company name. His Honour found that Flexopack Australia Pty Ltd failed to demonstrate that it acted in good faith when adopting the name. He stated that good faith in this subsection “is properly interpreted as requiring reasonable diligence to ascertain that a chosen name does not conflict with a registered trade mark”.
Other important aspects of the case were that Flexopack Australia Pty Ltd’s director was found to be a joint tortfeasor in the trade mark infringement and passing off, and knowingly concerned in the breach of the Australian Consumer Law. His Honour also found that Flexopack Australia Pty Ltd’s use of its domain name www.flexopack.com.au was trade mark infringement.
Congratulations to the team and everyone involved!