FEDERAL COURT OF AUSTRALIA

Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be dismissed.

2.    The notice of contention be upheld.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

ORDERS

THE COURT ORDERS THAT:

1.    The parties are directed to provide minutes of proposed orders giving effect to these reasons within 7 days.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

DAVIES J

Introduction

1    Insight Clinical Imaging Pty Ltd (“Insight Clinical Imaging”) and Insight Radiology Pty Ltd (“Insight Radiology”) both conduct medical imaging businesses. Insight Clinical Imaging has been operating in Western Australia since 2008 and has seven clinics in that State. Insight Radiology has been operating in NSW since 2004 and has three clinics in that State. In 2012 Insight Radiology also opened a clinic in Tasmania.

2    Since 2008 Insight Clinical Imaging has used the following marks in connection with its medical imaging business:

(a)    INSIGHT

(b)    INSIGHT CLINICAL IMAGING (“the ICI word mark”)

(c)    

(“the ICI composite mark”)

3    The ICI word mark and the ICI composite mark (collectively “the ICI trade marks”) are both registered as trade marks pursuant to the Trade Marks Act 1995 (Cth) (“the Trade Marks Act”) in respect of class 44 “radiology services”. Both trade marks have a priority date of 12 October 2012.

4    Since in or around March 2012, Insight Radiology has used the following marks (collectively “the Radiology marks”) in connection with its medical imaging business:

(a)    INSIGHT RADIOLOGY (“the IR word mark”)

(b)    

(“the IR composite mark”)

5    The IR composite mark was the subject of an application for registration as a trade mark by Insight Radiology’s sole director, Mr Alan Pham (“Mr Pham”), in respect of class 44 “radiology services” with the voluntary endorsement:

Registration of this trade mark gives no exclusive right to use or authorise the use of the words INSIGHT RADIOLOGY in the State of Western Australia.

6    Mr Pham made the application on 7 December 2011 in his own name.

7    Insight Clinical Imaging opposed the registration of the IR composite mark on the grounds that:

    the IR composite mark was substantially identical with the ICI composite mark and Insight Clinical Imaging was the owner of the trade mark (s 58 of the Trade Marks Act);

    the ICI composite mark had acquired a reputation in Australia before December 2011 (s 60 of the Trade Marks Act); and

    the use of the IR composite mark constituted a misrepresentation that Insight Radiology was associated with Insight Clinical Imaging and its use was contrary to law (s 42(b) of the Trade Marks Act).

8    In September 2014, the Registrar of Trade Marks (by her delegate) refused registration of the IR composite mark, finding that Insight Clinical Imaging had established its opposition under s 58 of the Trade Marks Act. VID575/2014 is an appeal by Insight Radiology from that decision pursuant to s 56 of the Trade Marks Act.

9    VID714/2014 is an action by Insight Clinical Imaging against Insight Radiology and Mr Pham for infringement of the ICI trade marks, as well as for passing off and contraventions of Schedule 2 to the Competition and Consumer Act 2010 (Cth), the Australian Consumer Law (“Australian Consumer Law”) for misleading and deceptive conduct and false or misleading representations. Insight Radiology has alleged by way of defence and cross-claim that the ICI trade marks are, and/or were at all times, invalid and should have been geographically restricted. Insight Radiology seeks orders for the cancellation or geographical limitation of those marks and corresponding declarations.

10    In summary:

    Insight Radiology has appealed the decision of the Registrar of Trade Marks refusing to register the IR composite mark;

    Insight Clinical Imaging has taken action against Insight Radiology and Mr Pham for infringement of the ICI trade marks, breach of the Australian Consumer Law and passing off in relation to its use of the Radiology marks; and

    Insight Radiology has cross-claimed to cancel or remove the ICI trade marks.

the appeal

11    Under s 197 of the Trade Marks Act, the appeal is by way of a rehearing of Insight Clinical Imaging’s opposition to the registration of the IR composite mark and is determined as if it was an original application: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365; at [32]; Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 (“Food Channel Network”) at [7]. Accordingly, it is not necessary to determine whether the delegate of the Registrar was correct in law in refusing to register the IR composite mark, though weight can be given to the delegate’s opinion as that of a skilled and experienced person: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at [33]. Insight Clinical Imaging has the onus of establishing the grounds of opposition: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at [45]; Food Channel Network.

12    Insight Clinical Imaging contended that the delegate’s decision should be affirmed on the ground that the IR composite mark is substantially identical to the ICI composite mark (s 58 of the Trade Marks Act) and on the following other grounds, namely that:

(a)    Mr Pham, the applicant for registration, was not the owner of the trade mark within the terms of s 27(1)(a) of the Trade Marks Act (s 58 of the Trade Marks Act);

(b)    Mr Pham had no intention to use, authorise the use of, or assign, the trade mark within the terms of s 27(1)(b) of the Trade Marks Act (s 59 of the Trade Marks Act);

(c)    as a result of the reputation acquired by Insight Clinical Imaging in the ICI composite mark, the use of the IR composite mark would be contrary to law (s 42(b) of the Trade Marks Act);

(d)    as result of the reputation acquired by Insight Clinical Imaging in the ICI composite mark, the use of the IR composite mark would be likely to deceive or cause confusion (s 60 of the Trade Marks Act).

Section 58 of the Trade Marks Act:    Is the IR composite mark substantially identical with the ICI composite mark?

13    It was common ground that to succeed on the ground of opposition under s 58 of the Trade Marks Act, Insight Clinical Imaging must establish that:

(a)    the IR composite mark is identical or substantially identical to the ICI composite mark: Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495;

(b)    the ICI composite mark has been used in respect of goods or services as “the same kind of thing” as the IR composite mark: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640; and

(c)    it had the earlier claim to ownership based on its use of the ICI composite mark before the filing of the IR composite mark application or any use of the IR composite mark by Insight Radiology: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413.

14    Insight Radiology did not dispute that the respective services in respect of which the ICI composite mark and the IR composite mark are used as “the same kind of thing”, nor did it dispute that Insight Clinical Imaging had the earlier claim to ownership based on its use of the ICI composite mark before the filing of the IR composite mark or any use of the IR composite mark by Insight Radiology. The area of dispute concerned whether the IR composite mark is substantially identical to the ICI composite mark, as found by the Registrar’s delegate.

15    The well accepted test for determining whether a mark is substantially identical to a registered trade mark was expressed by Windeyer J in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 R.P.C. 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 S.R. (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.

Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are “substantially identical”: Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495 at [62].

16    Insight Clinical Imaging submitted that the two composite marks compared side by side are substantially identical. First, it was said, the essential feature of both marks is the word “Insight” which is the word by which the services of both trade mark owners will be identified. The terms “clinical imaging” and “radiology” are purely descriptive and, at any rate, on the evidence, interchangeable as they are descriptors for the same services. Secondly, the ICI composite mark is used and registered in green and likewise green is the dominant colour in the IR composite mark. The evidence of Joseph Gauci (“Mr Gauci”), the managing director of Insight Clinical Imaging, was that green is not a colour associated with radiology services and both marks therefore use as their dominant colour, a colour that is unusual for radiology services. Thirdly, the devices in both marks comprise discs within discs which, when coupled with a common word element “Insight” invokes an image of an eye or, according to Mr Pham, when coupled with the descriptors “radiology” or “clinical imaging” calls to mind a CT scan tunnel. It was submitted that the slightly different rendering of the devices is immaterial in the context of the totality of the marks and the overall impression of resemblance and, ultimately, it was irrelevant whether the devices invoke the image of an eye, or a CT scan tunnel, or simply an arrangement of discs. It was submitted that the similarities between the devices was such that a person who understands the ICI composite mark to be invoking an eye would also see the IR composite mark as invoking an eye. Similarly a person who saw the IR composite mark invoking a CT scan tunnel would similarly view the ICI composite mark due to their overall similarity with only minor variations.

17    Insight Radiology submitted that the two devices were “plainly” not substantially identical. First, it was argued, the devices are distinguishable. The device element in the IR composite mark are two incomplete secular lines which resemble brush strokes to form a broken “C”. The logo is also equally as prominent as the words in the mark as a whole by virtue of the size of the logo. In comparison, the device element of the ICI composite mark was said to be a solid “eyeball” device with a solid lined inner circle being the “pupil” and a three quarter moon like circle closely and cleanly surrounding the inner pupil. The “eye” concept was said to be emphasised by the “Sight” in “inSight”. The logo was said to be somewhat smaller, taking up a smaller area of the mark as a whole. Further, in the IR composite mark, the words penetrate the broken circle or “C” device whereas the eyeball device sits alongside the words in the ICI composite mark and could not penetrate the logo without covering the pupil of the eye. Secondly, the words “clinical imaging” and “radiology” are visually and aurally very different. Thirdly, the expressions “clinical imaging” and “radiology” have different connotations. In this regard, the evidence of Insight Clinical Imaging’s directors, Mr Gauci and Dr Kumar, was said to show that Insight Clinical Imaging sought to distinguish itself by using the expression “clinical imaging” rather than “radiology” and did so because consumers would appreciate the different connotations. Mr Gauci’s evidence, relevantly, was that:

Dr Kumar and I first considered “Insight Radiology”, as my original business plan referred to “ACME Radiology”. However I did not like the term “radiology” as it had the implication of “radiation producing”, which has a negative connotation in the mind of consumers. For a time we used “Insight Diagnostic Imaging” but ultimately adopted the name “Insight Clinical Imaging” because it reinforced the clinical and outcomes based approach that we wanted to promote with the business. Dr Kumar and I agreed on 11 November 2007 that the name of the business would be “Insight Clinical Imaging”.

To like effect, Dr Kumar in cross-examination stated that:

…And with the discussion with Joe Gauci and a few other people, we decided not to use the word “radiology” because of its connotation, because of its commonality and because it was so widely used in Australia. The two words “radiology” and “imaging” were interchangeable. So we thought we wanted something different and also to express our view that we were just not a radiology clinic or a imaging clinic, but we also were a clinic that was going to provide some clinical services to it. So it was a value add to our business model and therefore the – the – the choice of the word was changed from “Insight Radiology” to “Insight Diagnostic Imaging” and finally to “InSight Clinical Imaging”.

Fourthly, it was argued that to the extent the descriptiveness of the words used in the marks is relevant, the ordinary signification of the phrase “InSight Clinical Imaging” to a person concerned with radiology services would be “insightful imaging used in a clinical setting including radiology” or “imaging used in a clinical setting including radiology provided with insight”. It was submitted that the word “insight” is an obvious laudatory word for a trader to use in the branding of a service and has the added obvious feature, in the context of radiology services, of describing the actual process of “seeing into” the body. It was submitted that where words are descriptive, small differences may be sufficient to avoid a finding of substantial identity on a side by side comparison.

18    The Registrar’s delegate was of the opinion that devices in the two marks appeared to be differing versions of the same thing, both having an inner and outer circle and a break on the right hand side and both having some contrast between the inner and outer circle. The delegate reasoned that as the word “insight” was also an essential feature of both marks, the marks were substantially identical. Whilst acknowledging these similarities, I am not of the same view as the delegate and I do not consider that the IR composite mark is substantially identical to the ICI composite mark. Whilst both composite marks use the word “insight”, there are clear visual differences in presentation. The appearance of the words “insight” and “radiology” in the IR composite mark run into each other, are equally prominent (the same font and size) and appear all in lower case. This is quite distinct from the words in the ICI composite mark where the letter “S” is capitalised in “inSight” and the words “Clinical Imaging” are secondary and beneath “inSight” in smaller and unbolded font. The capitalisation of the word “Sight” in “inSight” has the effect of emphasising the word “Sight”. There are also distinct visual differences in the appearance and positioning of the device. The ICI composite mark has a complete inner circle and is all in green with clear lines whereas the IR composite mark does not have a complete inner circle, the outside circle is in black and the lines are different. There is not a “total impression of resemblance”. The visual differences combined with the different wording, albeit that “imaging” and “radiology” may be interchangeable in relation to the services to which the marks relate, make the marks sufficiently different on a side by side comparison.

19    I do not think that PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47, on which Insight Clinical Imaging relied, requires a different conclusion. In that case, Carr J gave very little weight to the descriptors in the marks under comparison in assessing substantial identity. The marks then compared were CHOC CHILL, VANILLA CHILL, STRAWBERRY CHILL and CHILL. Carr J stated:

I note the differences comprising an extra word of varying length the function of which is to describe flavour, but I note the similarity of the constant use of the word CHILL. I have already mentioned the importance of CHILL and the degree to which it is essential to the mark. Bearing in mind the relative importance of CHILL I give very little weight to the descriptors CHOC, COFFEE, VANILLA or STRAWBERRY.

By parity of reasoning, Insight Clinical argued that customers would know that radiology services and clinical imaging services are the same thing and thus very little weight should be given in the comparison to the descriptors “clinical imaging” and “radiology”. That also was the approach taken by the Registrar’s delegate who gave very little weight in the comparison to the descriptors “clinical imaging” and “radiology”. However, PB Foods Ltd v Malanda Dairy Foods Ltd concerned the comparison of plain word marks whereas in the present case, the devices in the two marks have distinct visual differences. Accordingly, even if very little weight is given in the comparison of the descriptors “clinical imaging” and “radiology”, the other differences between the marks sufficiently distinguish the marks from each other to give a total impression of dissimilarity, not resemblance.

20    Accordingly, this ground of opposition fails.

Sections 58 and 59 of the Trade Marks Act: Were the requirements of s 27(1) of the Trade Marks Act satisfied in relation to the IR composite mark?

21    Section 27(1) of the Trade Marks Act provides:

A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)    the person claims to be the owner of the trade mark; and

(b)    one of the following applies:

(i)    the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)    the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)    the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

22    Registration of a trade mark may be opposed on the ground that the requirements of s 27 are not satisfied.

23    Under s 58 of the Trade Marks Act, an application to register a trade mark “may be opposed on the ground that the applicant is not the owner of the trade mark”. Under s 59 of the Trade Marks Act an application to register a trade mark may also be opposed:

… on the ground that the applicant does not intend:

(a)    to use, or authorise the use of, the trade mark in Australia; or

(b)    to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application

24    Section 6 defines “applicant” to mean “the person in whose name the application is for the time being proceeding”.

25    In the present case, the application to register the IR composite mark was made in Mr Pham’s name and was filed on or about 7 December 2011. After the application had been accepted and during the period for opposition, Mr Pham, on 1 July 2013, executed an “Assignment of Trade Mark” in the following terms:

ASSIGNMENT OF TRADE MARK

Australian Trade Mark no 1463912 for INSIGHT RADIOLOGY and device in class 44 in the name of Alan Pham

1.    Alan Pham (the Assignor) of 31 Teresa Drive, Leeton NSW 2705:

(a)    is the applicant for trade mark application 1463912 (the Trade Mark);

(b)    is a director of Insight Radiology Pty Ltd ACN 110 217 108 (the Assignee) of 79A Kurrajong Avenue , Leeton NSW 2705.

2.    The Assignee has been using the Trade Mark with the permission of and under licence from the Assignor.

3.    The Assignor hereby assigns to the Assignee all of the Assignor’s right, interest and title in and to the Trade Mark in respect of all the goods and services set out in the application.

4.    The assignment takes effect on the date set out below.

26    Mr Pham deposed that he applied for registration of the IR composite mark in his name on the basis that he “originally (at the time) intended to licence the Trade Mark for use by [Insight Radiology] and ANA Healthcare Pty Ltd” (“ANA Healthcare”) (another company owned and controlled by Mr Pham) but ultimately decided that “rather than being licensed by [him], the [IR composite mark] should be held in the name of [Insight Radiology] and licensed by it non-exclusively to ANA Healthcare”. He accordingly “assigned the [IR composite mark] to [Insight Radiology]”. Insight Clinical Imaging submitted that this evidence was uncorroborated, self-serving and should be rejected.

27    Insight Clinical Imaging submitted that the evidence “pointed to” Insight Radiology, not Mr Pham, as the “author” of the IR composite mark and the Court, furthermore, should find on the evidence that it was never Mr Pham’s intention to use the mark, whether by licence or otherwise within the terms of s 27(1)(b). Insight Clinical Imaging accordingly submitted that the application for registration should be refused on the ground that Mr Pham was not the “owner” of the mark (s 58) and/or on the ground of lack of intention (s 59).

28    Insight Radiology argued that Mr Pham’s evidence should be accepted and established that Mr Pham was entitled to claim ownership of the mark and had the requisite intention when he applied for registration. In the alternative, Insight Radiology argued that if the application should have been made in the name of Insight Radiology as the “true owner” of the IR composite mark at the application date, Insight Radiology nonetheless became the applicant during the prosecution of the mark in consequence of the assignment, and thus satisfied the requirements of s 27(1) of the Trade Marks Act.

29    In response, Insight Clinical Imaging contended that the assignment was ineffective.

Ownership

30    It is well settled law that the basis of a claim to ownership of a trade mark for the purposes of s 27(1)(a) of the Trade Marks Act depends on first use of the mark as a trade mark in Australia or, in the case of a mark that has never been used, the combined effect of “authorship” of the mark, an intention to use the mark as a trade mark and applying for registration: Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 (“Shell”) per Dixon J at 627. A person can claim “authorship” of a mark through “origination” or “first adoption” of the mark as a trade mark: Shell at 628; Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 (“Aston”) at 399; Moorgate Tobacco Company Ltd v Philip Morris Ltd [1980] HCA 32; (1980) 145 CLR 457 at 477. If there has been no prior use of the mark, the filing of an application for registration of a mark with the intention of using the mark as a trade mark founds a claim of ownership: Food Channel Network at [67].

The evidence about “ownership”

31    It is necessary to set out the evidence with respect to the origination of the IR composite mark in some detail, and the chain of events leading to the assignment to Insight Radiology, given Insight Clinical Imaging’s contention that Mr Pham should not be believed on his evidence as to why he applied for registration of the mark in his own name.

32    As mentioned, Mr Pham is the sole director of Insight Radiology and he and his wife, Mrs Pham, hold all the shares in the company. Mr Pham is a qualified radiographer.

33    The company was incorporated in July 2004 as “AKP Radiology Consultants Pty Ltd” and commenced business in or around the same time under the registered business name “Leeton Diagnostic Imaging” providing computer tomography scanning, orthopantomogram and ultrasound services. At the time, the company operated its clinic from leased premises in Leeton, New South Wales.

34    Mr Pham deposed that it always intended that the company would operate a number of clinics in New South Wales. In 2006, he and Mrs Pham investigated the possibility of opening a second clinic either in Camden, Wollondilly, Tahmoor or Picton, New South Wales, though it appears that nothing came from this. In 2007, they purchased a property in Leeton, and relocated the clinic there in early 2008 with expanded services, introducing general x-ray and mammogram services and adding a second ultrasound room to the clinic.

35    Mr Pham also wanted to introduce magnetic resonance imaging (“MRI”) services to the company’s business. However the building did not have sufficient power to operate that equipment without major electrical upgrades. Mr Pham once again began considering other locations for clinics, particularly in respect of providing MRI services. In early 2008, he started investigating potential sites in Griffith, New South Wales, about 60 kilometres from Leeton. Both he and Mrs Pham gave evidence that around the same time, they discussed the need to have consistent branding across the Leeton and Griffith clinics. It was also their evidence that Mrs Pham came up with the name “Insight Radiology”, which Mr Pham liked, and they decided that the new name and brand for their clinics would be “Insight Radiology”.

36    The investigations into a suitable site in Griffith were said by Mr Pham to have been “protracted” and the expansion into Griffiths was also delayed “as opportunities to open clinics in a number of other locations arose in 2009 and 2010”. Mr Pham deposed that in 2010, a company associated with Mr Pham’s sister purchased a property in Narellan, New South Wales and that he and Mrs Pham started planning for another clinic at Narellan to be operated by ANA Healthcare Pty Ltd, which would lease the property from Mr Pham’s sister. At around this time, an opportunity for a clinic in Devonport, Tasmania also arose.

37    Mr Pham deposed that “finally, in or around July 2011, after extensive planning” he and his wife decided that Insight Radiology would open three new clinics at Griffith, Narellan and Devonport and that the clinics would all use the “Insight Radiology” name and brand.

38    On 13 July 2011, Mr Pham registered the business name “Insight Radiology” in New South Wales in his name. Mr Pham deposed:

I registered the business name for [Insight Radiology] for it to use in its business and to licence to ANA Healthcare Pty Ltd for use in its business. I had no intention myself of running a business under the name.

39    Also in July 2011, Mr Pham who also has a separate web and graphic design business called AKP Media Design, had the manager of that business, Mr Andrew Mandaglio (“Mr Mandaglio”), register the following domain names in the name of the company (then called AKP Radiology Consultants Pty Ltd):

<InsightRadiology.com.au>,

< InsightRadiology.net.au>

40    Another domain name <InsightRadiology.com> was registered around the same time in the name of Mr Mandaglio. Mr Pham was unable to explain why that domain name was in Mr Mandaglio’s name, and not the company.

41    Mr Pham gave the following evidence in his affidavit about the design of the IR composite mark:

21.    In July and August 2011, the Applicant started the process of designing a logo for the Insight Radiology brand.

22.    I have a separate web and graphic design business operating under the business name AKP Media Design. AKP Media Design is managed by Andrew Mandaglio. AKP Design was engaged by the Applicant to design the Insight Radiology logo.

42    AKP Design in turn contracted out the job to a Mr Dean Robinson (“Mr Robinson”) who actually designed the IR composite mark. Mr Robinson came up with various designs and Mr Pham’s evidence was that:

29.    I liked the logo concepts that incorporated a circular device as it brought to mind a CT scan “tunnel”. Finally in or around the middle of September 2011, Theresa [Mrs Pham] and I settled on the logo which is currently in use…

43    Mr Mandaglio’s evidence was to like effect. He deposed that:

7.    In July 2011 Alan Pham informed me that he wanted me to design a corporate logo for “Insight Radiology”, a new brand name for his radiology business. I suggested that AKP Media Design engaged the services of Dean Robinson to design this logo. Dean Robinson was a classmate of mine at university. Alan Pham told me that he accepted my suggestion that AKP Media Design engage Dean Robinson as an independent contractor to design the logo for “Insight Radiology”.

8.    In July 2011, I, on behalf of AKP Media Design, asked Dean Robinson to design a logo for “Insight Radiology”…

9.    At the time, AKP Radiology Consultants Pty Ltd operated under the business name of “Leeton Diagnostic Imaging”. It had a logo for this business name … I created this logo in 2004, which had been used by AKP Radiology Consultants Pty Ltd since 2004.

10.    I considered that the logo for the new brand and business name of “Insight Radiology” should evolve from the logo for the brand and business name of “Leeton Diagnostic Imaging” so that there would be a historical connection between the two business names. I therefore considered that the logo for “Insight Radiology” should have a circular device, as the logo for “Leeton Diagnostic Imaging” also had a circular device. I told Dean Robinson of this design consideration.

11.    In July and August 2011, the process of designing a logo for “Insight Radiology” was as follows:

(a)    Dean Robinson provided me with various designs for the logo for “Insight Radiology”.

(b)    I would then forward them to Alan and Theresa Pham for their consideration. I would discuss Dean Robinson’s designs with them.

(c)    I would then convey Alan and Theresa Pham’s views on the various logo designs to Dean Robinson. Dean Robinson and I would also discuss how to refine the designs for the logo based on feedback from Alan and Theresa Pham.

(d)    As far as I can recall, in or around late August or early September 2011, after a process of amendment and refinement for various designs for the logo for “Insight Radiology”, Dean Robinson provided me with the design for the logo for “Insight Radiology” that is currently in use for the radiology business of Insight Radiology Pty Ltd.

(e)    Alan and Theresa Pham were happy with this logo, and agreed to adopt it as the logo for “Insight Radiology”.

44    Mrs Pham also gave consistent evidence as follows:

The design process for the logo for the “Insight Radiology” brand occurred from and including July 2011 to September 2011. During that process, Andrew Mandaglio would provide Alan Pham and me with various designs by Dean Robinson for the logo for “Insight Radiology”. Alan and I would then discuss Dean Robinson’s designs with Andrew Mandaglio, who would then inform Dean Robinson of our feedback. Dean Robinson and Andrew Mandaglio would amend and refine the various designs for the logo for “Insight Radiology” taking into account my and Alan’s feedback. In this way, through a process of amendment and refinement, Dean Robinson provided Andrew Mandaglio with the design for the logo for “Insight Radiology” that is currently in use for the radiology business of Insight Radiology Pty Ltd.

45    Mr Robinson invoiced AKP Media Design $300 for designing the mark. There was no direct evidence as to payment but Mrs Pham, who described herself in evidence as the business manager of Insight Radiology, and who also worked for AKP Media Design handling its books, agreed in cross-examination that Mr Robinson’s invoice would have been paid by AKP Media Design. There was the following exchange:

Yes. But when- from what funds would you have paid those – this invoice? –From AKP Media Design.

And then would AKP Media Design have billed anyone else? – I usually work out with our accountant how to handle anything between the entities. So if there’s something that was billed to AKP Media Design and it needed to be invoiced to the company, then I would do that later on.

The company being - - -?---Insight Radiology.

46    I accept on the basis of that evidence that Insight Radiology paid for the design of the logo.

47    On 7 December 2011 Mr Pham applied for registration of the IR composite mark in respect of radiology services in class 44. Mr Pham gave the following evidence in his affidavit:

26.    The trademark application was filed in my personal name on the basis that I originally (at the time) intended to licence the trademark for use by the Applicant and ANA Healthcare Pty Ltd.

48    It was not in dispute on the evidence that a formal licence agreement was never entered into, though it was also uncontroversial on the evidence that Insight Radiology commenced to use the IR composite mark before Mr Pham assigned the mark to it on 1 July 2013. Mr Pham deposed under the heading “Rebranding to Insight Radiology and opening of new clinics”:

24.    In February 2012, the Applicant’s clinic at Leeton was rebranded to “Insight Radiology”, adopting the logo referred to above. As part of the rebranding, a letter was sent to all doctors on the Applicant’s database who were based in Leeton, Griffith, Narrandera, Wagga Wagga and Albury. Annexed and marked AKP-5 is a copy of that letter.

25.    The new clinics at Griffith, Narellan and Devonport all opened within weeks of one another. Griffith opened on 6 August 2012, Narellan opened on 13 August 2012 and Devonport on 27 August 2012. All of the new clinics adopted the Insight Radiology name and the Insight Radiology logo from their commencement.

49    The letter exhibited as AKP-5 was on the letterhead of Leeton Diagnostic Imaging and dated 7 March 2012. It stated:

Dear Doctor,

From the 19th of March 2012 Leeton Diagnostic Imaging will be part of the Insight Radiology group and will be rebranded to become INSIGHT RADIOLOGY.

…

The logo shown below will be found on all our stationary and referral pads.

Please feel free to contact me with any issues or queries you may have.

Kind regards

Alan Pham

Insight Radiology

50    In light of that letter, Mr Pham was challenged on his evidence that the Leeton clinic was rebranded in February 2012. Mr Pham accepted in cross-examination that it was “more likely than not” that the rebranding happened in March 2012, not February 2012 as he had deposed, though in later evidence he said that:

we did have signs up in February, we were wearing staff shirts at that time and there was a paper ad printed in the local paper prior to the 7th – to 19 March. And in that letter which I sent out to the doctors as well I signed the bottom of that Insight Radiology.

51    I accept on the state of the evidence that the Leeton clinic was rebranded to “Insight Radiology” as and from 19 March 2012 but the evidence of Mr Pham indicated that there may have been some use of the mark in February.

52    By letter dated 20 March 2012 Mr Pham received an adverse examination report from IP Australia in relation to his trade mark application advising that the IR composite mark was similar to an earlier filed trade mark for “Insight Health” in the name of Lifeline Screening Holdings LLC in respect of class 44 services. Mr Pham deposed that the “Insight Health” application subsequently lapsed without being accepted on 25 February 2013. By letter dated 2 May 2013, IP Australia notified Mr Pham that his application had been accepted.

53    By letter dated 13 May 2013, lawyers acting for Insight Clinical Imaging put Mr Pham on notice that Insight Clinical Imaging was the proprietor of registered trade marks 1517779 (ICI composite mark) and 1517780 (ICI word mark) and that Insight Clinical Imaging had been trading under the name Insight Clinical Imaging since August 2008 and had established a substantial reputation and good will in the marks. The letter claimed that Mr Pham’s use of the IR composite mark constituted trade mark infringement, misleading and deceptive conduct and passing off. Mr Pham was also put on notice of Insight Clinical Imaging’s intention to oppose his application for registration.

54    On 6 June 2013, Insight Clinical Imaging filed a notice of opposition to Mr Pham’s application.

55    The next event in the chronology was on 17 June 2013. On that date, AKP Radiology Consultants Pty Ltd changed its name to Insight Radiology Pty Ltd and an application for registration of the word mark “Insight Radiology” was filed.

56    Then on 1 July 2013, Mr Pham assigned the trade mark to Insight Radiology effective from that date. He deposed as follows:

In July 2013, I determined that rather than being licensed by me, the Trade Mark should be held in the name of the Applicant and licensed by it non-exclusively to ANA Healthcare Pty Ltd. Accordingly, I assigned the Trade Mark to the Applicant effective on 1 July 2013.

57    An application to the Registrar of Trade Marks to record the assignment was filed on 4 July 2013 and accepted on 17 July 2013.

58    Mr Pham was challenged in cross-examination on the truthfulness of that evidence as to the reason for assigning the IR composite mark to the company. The transcript records the following exchange at T 178-9:

In relation to the application for the assignment your evidence at paragraph 29 of your affidavit, if we could go back to paragraph 29. Your evidence there is that:

In July 2013, I determined that rather than being licensed by me the trademark should be held in the name of the applicant and licensed by it nonexclusively to Ana Healthcare. Accordingly, I signed the trademark to the applicant effective on 1 July 2013.

?---Yes.

Now, again, Mr Pham, it really wasn’t your intention behind this assignment, was it?---Yes. It was.

I put it to you, Mr Pham, that the intention behind – or that this assignment was driven by your lawyer’s advice?---I don’t agree.

So am I to understand that in the midst of receiving a letter of demand followed promptly – in which that letter said “we will oppose and sue you”. Following promptly on that the receipt of a notice of intention to oppose. And in the middle of which you have engaged lawyers to give you advice in relation to those matters quite independently?---Yes.

And why at this point would you have thought it was desirable to assign the application?---I – I just did.

Just did?---Like, I – I’ve always – I just wanted to – just, like, I don’t – I no longer needed it to be under my own personal name so I chose to assign it.

What had changed that you no longer needed it?---Nothing.

Nothing? Nothing had changed?---Yes. I just – yes. I just don’t need it so I thought that it was just more streamlined if it’s all – as you said before it was messy so I just wanted to all – tidy it up and, yes.

And this – the thought suddenly occurred to you around the time you put all these other measures in place?---No. The thought probably came prior to that but then we just done it during that time.

I put it to you, Mr Pham, that the evidence in – what you say in paragraph 29 is not truthful and does not reflect your intention at the time?---I don’t agree.

59    I find it implausible that Mr Pham assigned the IR composite mark at that time for the reasons given by him at paragraph 29 of his affidavit and implausible that the assignment was unconnected with Insight Clinical Imaging’s opposition to the registration of the IR composite mark and claim of infringement/passing off. Despite Mr Pham’s evidence that he filed the application for registration in his personal name with the intention of licensing the IR composite mark for use by the Insight Radiology and ANA Healthcare Pty Ltd, wholly unexplained in his evidence was why he never licensed the use of that mark to them, notwithstanding Insight Radiology’s use of the mark as and from around 19 March 2012 on the rebranding of the Leeton clinic and the use of the IR composite mark at the new clinics that opened in Griffith, Narellan and Devonport in August 2012, which all adopted the Insight Radiology name and IR composite logo from their commencement. In view of the absence of cogent evidence explaining the timing of the assignment, I disbelieve Mr Pham on his evidence at paragraph 29 and the answers given by him in cross-examination which I did not find credible.

Findings on the claim to “ownership”

60    The evidence showed that the IR composite mark was not used by either Insight Radiology or Mr Pham prior to Mr Pham’s application for registration. Accordingly, Mr Pham’s claim of “ownership” of the IR composite mark, within the terms of s 27(1)(a), must rest on the concept of “ownership” of an unused mark as explained by Dixon J in Shell, namely, “the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration”.

61    The evidence clearly showed that the IR composite mark was designed for, and used by, the company for its business purposes. On Mr Pham’s own evidence, the mark was designed following the decision made by Mr and Mrs Pham to rebrand the medical imaging business conducted by the company under the name “Insight Radiology”, which was what happened. The Leeton clinic was rebranded, and the new clinics that opened subsequently have all operated from the outset under the “Insight Radiology” brand, using the IR composite mark. I am also satisfied on the evidence, and find, that the company was responsible for getting the mark designed. That seemed not to be controversial on the evidence in chief of Mr Pham. In his affidavit he deposed that “the Applicant” – viz, Insight Radiology (then known as AKP Radiology) – started the process of designing a logo for the Insight Radiology brand, after Mr and Mrs Pham (the other shareholder) had decided that all clinics were to use the Insight Radiology brand. In cross-examination though Mr Pham changed his evidence when in answer to the question “AKP Media was engaged by your company to design a logo?” he replied “no”. His denial was in conflict with his affidavit evidence and I reject that denial as opportunistic and self-serving. Mr Pham was pressed on his denial and accepted in cross-examination that he used the company email address for the emails that passed between himself and Mr Mandaglio in relation to the design of the logo. Mr Pham stated that he only used one email address for personal and private matters but the evidence all pointed to Mr Pham acting for and on behalf of the company, not in his own right, in instructing AKP Media to have the logo designed.

62    All of this tends to the conclusion that the application for registration was made in the wrong name and should have been made in the name of the company. However, Insight Radiology’s case was that the application in Mr Pham’s name was not a mistake. Its case was that Mr Pham made the application intending to use the mark himself by licencing the mark for use by Insight Radiology and ANA Healthcare. That was Mr Pham’s evidence in chief. In cross-examination he said that he was going to give those companies “permission” to use the IR composite mark “which I have”. When asked if he thought that the companies needed permission he replied “If I was the holder of the mark, yes”. Left wholly unexplained by the evidence, however, was why Mr Pham thought he was the “holder” of the mark – or to put it another way, why he applied for registration in his name and not in the company’s name. The claim that it was not a mistake that the application was made in Mr Pham’s name also raises the question as to whether Mr Pham was acting inconsistently with the duties that he owed to the company as its director, given that the mark was designed for the company, not for Mr Pham personally. Nevertheless, Insight Clinical Imaging did not advance the case that it was not lawful for Mr Pham to become the owner of the mark and I take that matter no further. Rather, what was put into issue was whether the requirements of s 27(1)(a) and (b) existed at the time that Mr Pham applied for registration. It was argued that the requirements were not met because Insight Radiology, not Mr Pham, was the “author” of the mark because the mark was designed for the benefit of Insight Radiology. However, whilst the fact that Insight Radiology was responsible for the origin of the mark, not Mr Pham, may establish authorship (as I consider it has), it is not determinative of this ground of opposition for the reason that Insight Radiology had not used the mark before Mr Pham applied for its registration. As the mark was unused by Insight Radiology, the requirements of s 27(1)(a) and (b) are presumed to be met from the act of Mr Pham filing the application. The presumption is rebuttable and Insight Clinical Imaging has the onus of disproving that the requirements were met: Food Channel Network at [72].

63    Having regard to the way in which the case was conducted by the parties, the contest on “ownership” really concerned the element of intention to use, which is a requirement of a claim of ownership of an unused mark and an express requirement of s 27(1)(b) of the Trade Mark Act. The parties were in dispute about the time at which to judge satisfaction of that requirement. On Insight Clinical Imaging’s case, the applicant must have an intention to use the mark at the time of the application. Insight Radiology’s short answer was that Mr Pham did have such an intention but, in any event, whilst the application was proceeding, Mr Pham assigned the application to Insight Radiology which plainly had that intention and is enough to defeat the s 58 and s 59 claims.

64    In that regard, direct evidence was led from Mr Pham that he did have the requisite intention – namely he intended at the time he applied for registration to licence Insight Radiology and ANA Healthcare to use the IR composite mark. Insight Clinical Imaging challenged that evidence.

65    Mr Pham’s assertion of his intention at the time of applying for registration is not determinative of the question of fact as to whether he actually held that intention. His own conduct after filing the application is also relevant evidence of his intention at the time he filed the application: Food Channel Network at [74]; Malibu Boats West Inc v Catanese [2000] FCA 1141; (2000) 51 IPR 134. It is telling against Mr Pham that apart from asserting what his intention was when he applied for registration of the IR composite mark, the only other evidence supporting actual use of the mark by him was his evidence about the assignment that he effected in 2013. As I have disbelieved Mr Pham on his evidence as to why he assigned the IR composite mark, I have placed no weight on the fact of assignment as corroborative of Mr Pham’s intention at the time of filing his application. Mr Pham’s evidence otherwise focussed on the use of the Radiology marks by the companies but he did not lead any evidence explaining the basis upon which those companies were entitled to use the IR composite mark. His evidence was completely silent about those companies’ right to use the IR composite mark and also completely silent about how he claimed to have the right to apply for registration of the IR composite mark in his name. Under cross-examination Mr Pham was unable to explain why he applied for registration of the mark in his name, why he decided to operate the business in this way rather than with the company owning the mark as he had done for the previous name and why he decided subsequently to change this arrangement after the IR composite mark was opposed. It is a fact that Mr Pham never did licence the companies to use that mark and apart from saying so in cross-examination, it is an inferential case that they did so with his permission. There was no evidence at all about the arrangements that Mr Pham had with the companies about the use of the IR composite mark and I would not draw any inference that there must have been some arrangement at some point because of the companies’ use, as the totality of the evidence is inconsistent with such an inference. The evidence considered as a whole strongly suggests to the contrary that it was never intended by Mr Pham that he would use the mark himself, whether by licencing the companies or otherwise but rather that his intention always was for Insight Radiology to use the mark in connection with its business, which, the evidence shows, has been the case.

66    Accordingly, I do not accept Mr Pham’s evidence that it was his intention to licence Insight Radiology and ANA Healthcare to use the IR composite mark, which I do not consider to be truthful of his actual intention at the time in light of the evidence as a whole. Consistent with the origin of the IR composite mark and its actual use I find that Mr Pham, as the controller of Insight Radiology, intended at the date of filing the application that Insight Radiology would use the IR composite mark, not that he would use the IR composite mark either in the immediate future or at all. Moreover it is apparent on the evidence that Mr Pham did not pay much regard to the corporate structures under which the business activities were carried out and it may reasonably be inferred that Mr Pham wrongly made the application in his name without regard to whether he personally had that entitlement or not.

The construction of “applicant”

67    Insight Radiology argued that if the application should have been made in the name of Insight Radiology as the “true owner” of the IR composite mark as at the application date, Insight Radiology nevertheless became the applicant during the prosecution of the mark and, accordingly, s 27(1)(a) and (b) were still satisfied. Reliance was placed on Mobileworld Communications Pty Ltd v Q & Q Global Enterprise [2003] FCA 1404; (2003) 61 IPR 98 (“Mobileworld”). The facts of that case in broad compass were that a company, Aust Pty Ltd, was running a retail business and using the phrases “Crazy John” and “Crazy John’s” in its advertising and promotion. Aust Pty Ltd applied for registration of the marks as trade marks. Subsequently it was realised that those marks were owned by another company in the same corporate group, Crazy John Pty Ltd, and that Crazy John Pty Ltd should have made the application. The Trade Marks Office was informed of the error and a request was made to record the correct applicant as Crazy John Pty Ltd, which the Registrar authorised. Crazy John Pty Ltd then assigned its interest in the application to Aust Pty Ltd. Allsop J (as His Honour then was) held that the time to judge the satisfaction of s 27(1)(a) is during the application. At [83] His Honour held:

The ground of opposition is s 58 (see s 88(2)(a)). Bearing in mind the definition of applicant in s 6 as meaning the person in whose name the application is for the time being proceeding, the time to judge the satisfaction of s 27(1)(a) is during the application. Aust P/L initially, implicitly, claimed to be the owner, by being identified on the application form as the applicant. Later, this was changed to Crazy John Pty Ltd: see the November letter, which made an express claim on Crazy John Pty Ltd’s behalf that Crazy John Pty Ltd was the owner. I think on the evidence that Crazy John Pty Ltd was the owner. The respondents seek to hoist the applicants upon a proposition put by the latter in submission that notwithstanding that Aust P/L first applied for the mark, the position should be considered as if Crazy John Pty Ltd was the original applicant. Since Crazy John Pty Ltd did not, as at 17 August 1999, claim to be the owner of the mark, but did so only later, in November, it is said s 27(1)(a) was not satisfied. I do not agree. Crazy John Pty Ltd was a person who, while the application was proceeding, claimed to be the owner and who claimed to be the owner at the time of grant. Aust Pty Ltd before then claimed to be the owner, but withdrew that claim. To make the application fail because of innocent error of the kind displayed in the evidence would impermissibly narrow the power of amendment in Part 6 of the TM Act. Crazy John Pty Ltd claimed to be the owner during the registration process. It was an applicant. Section 27(1)(a) was satisfied.

On appeal, the decision was set aside but not on this point: Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196; (2004) 209 ALR 1. At [128], the Full Federal Court agreed with Allsop J on this point stating:

In the light of the findings made by the primary Judge, it is tolerably clear that, while the application was still on foot and at the time of grant, Crazy John Pty Ltd claimed to be, and was the owner of, the 1999 Mark. Crazy John Pty Ltd intended to use the 1999 Mark by licensing it. There was material upon which his Honour could conclude that Crazy John was the owner of the 1999 Mark and intended to authorise another member of the group to use it. The grounds of invalidity referred to in ss 58 and 59 are not made out.

See too Global Brand Marketing Inc v YD Pty Limited [2008] FCA 605; (2008) 76 IPR 161 at [131]–[134]. The facts of that case, relevantly, were that an application for the registration of a trade mark owned by Diesel Spa was made in the name of the licensee, Global Brand, when Global Brand did not have the right under the licence agreement to apply for registration. Whilst the application was proceeding, Global Brand assigned the application to Diesel Spa. Registration of the mark was opposed under s 58 on the ground that Global Brand was not the owner of the mark. Sundberg J, applying Mobileworld, held that the ground of opposition failed by reason that as a result of the assignment of the application, Diesel Spa had become the applicant for registration as “the person in whose name the application is for the time being proceeding”.

68    A distinguishing feature of both those cases from the present case is that in both those cases the “true” owner of the mark claimed to be the owner of the mark prior to acceptance of the application for registration, whereas in the present case the assignment to Insight Radiology did not occur until after acceptance of the application. Insight Clinical Imaging drew on that distinction to contend that Mobileworld is not authority for the proposition that the relevant date for assessing ownership extends beyond acceptance of the application and into the opposition period. Insight Clinical Imaging also sought to distinguish Mobileworld on the basis that the application in the name of the original applicant was a mistake and should have been another company within the same corporate group. However, the decision in Mobileworld was not based on those distinctions but upon the meaning of “applicant” in s 6 of the Trade Marks Act. Crucially the opposition failed because Crazy John Pty Ltd claimed to be the owner while the application was still proceeding. The decision did not depend upon the reasoning that the original applicant, Aust Pty Ltd, had been substituted before acceptance of the application. Nor did the decision depend upon the reasoning that application was made in the wrong company name in error.

69    In the later decision of Food Channel Network, the Full Federal Court, without reference to Mobileworld, stated at [74] that the requisite intention must exist at the date of the application. Although concerned with s 27(1)(b), paragraph [74] would appear to be inconsistent with the decision in Mobileworld, but the decisions are capable of reconciliation in that the issue dealt with in Mobileworld did not arise for consideration in Food Channel Network. On that basis, I should follow Mobileworld and thus, the s 58 and s 59 grounds of opposition fail if the assignment was valid and effective.

Was there a valid assignment

70    Insight Clinical Imaging’s fall back argument was that the assignment was ineffective because it was made by letter without consideration and/or because Mr Pham had no rights of ownership to assign. Neither contention is accepted. Valuable consideration did not have to pass for the assignment to be effective. What was required was a document evidencing the intention to transfer the trade mark application and clearly identifying that application, which was the case here, and the effecting of the assignment in accordance with Part 10 of the Trade Marks Act, which also occurred: Shanahan’s Australian Law of Trade Marks and Passing Off 5th ed at [75.2035]. Section 107(1) provides if a trade mark whose registration is being sought is assigned either the applicant for registration, or the person to whom it has been assigned must apply to the Registrar for the assignment to be recorded. Under s 107(2) the application must be filed in accordance with the regulations. Section 108(2) provides that, on and after the day on which the Registrar records the particulars of the assignment, the person to whom the trade mark has been assigned or transmitted is taken, for the purposes of the Trade Marks Act, to be the applicant for the registration of the trade mark. The evidence showed that on or about 4 July 2013 Insight Radiology applied to the Registrar for the assignment to be recorded and the assignment was accepted and recorded by the Registrar on 17 July 2013. Thus Insight Radiology was, after 17 July 2013, “taken, for the purposes of [the Trade Marks Act], to be the applicant for the registration”.

Conclusion on the sections 58 and 59 grounds

71    It follows that whilst I have concluded that Mr Pham did not meet the requirements of s 27(1)(a) and (b), those requirements were met by Insight Radiology which is, by reason of the assignment, taken to be the applicant for registration of the mark. The grounds of opposition under ss 58 and 59 have therefore not been made out.

Section 60 ground of opposition

72    Section 60 of the Trade Marks Act provides:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)    another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)    because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note:    For priority date see section 12.

“Priority Date” is the date of filing of the application for registration.

73    Section 60 is concerned with any likely deception or confusion between the application trade mark and the opponent’s trade mark (whether registered or not) caused by the prior reputation of the opponent’s trade mark in Australia. If the opponent can show that its mark had a reputation in Australia before the priority date, the ground of opposition succeeds if the use of the application mark is likely to cause deception or confusion. Thus, to establish this ground of opposition, Insight Clinical Imaging must establish that it had acquired a reputation in its mark prior to 7 December 2011 (the date that Mr Pham filed the application for registration of the IR composite mark), and that Insight Radiology’s use of the IR composite mark would be likely to deceive or cause confusion.

74    Insight Radiology did not dispute that the ICI trade marks had acquired a reputation in and around Perth in respect of radiology services prior to December 2011. Furthermore, Insight Radiology accepted that the IR composite mark is deceptively similar to the ICI composite mark. It was conceded that if Insight Clinical Imaging had a reputation in its marks as at 7 December 2011 outside Western Australia, the use of the IR composite mark would be likely to deceive or cause confusion because of the deceptive similarity of the marks. However, Insight Radiology argued that s 60 did not apply because:

(a)    Insight Clinical Imaging did not have a reputation in its marks beyond Western Australia as at 7 December 2011 (and still does not);

(b)    there can be no likelihood of deception or confusion from Insight Radiology’s use of the IR composite mark outside Western Australia; and

(c)    the IR composite mark has the voluntary endorsement that registration of the mark “gives no exclusive rights to use or authorise the use of the words INSIGHT RADIOLOGY in the State of Western Australia”.

75    Insight Clinical Imaging submitted that it had a reputation “in Australia” within the meaning of s 60(a) even if it was not Australia wide and that because of the close resemblance of the IR composite mark in respect of the same services in the same market, the use by Insight Radiology of the IR composite mark would be likely to cause the public to be deceived or confused. Insight Clinical Imaging also argued that if the geographical reach of its reputation was relevant to s 60(b), as Insight Radiology contended, the evidence showed that its reputation in its marks had spread to the rest of Australia.

76    For s 60 to apply three elements must be shown. First, that the opponent has acquired a “reputation in Australia” in a trade mark before the priority date for the registration of the application mark: s 60(a). In ordinary meaning, the word “in”, used as a proposition, simply means “within” and “reputation” in s 60 is “the recognition of the [trade mark] by the public generally”: McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102 (“McCormick”). Secondly, the words “because of” in s 60(b) require a causal connection between the reputation in the opponent’s mark and the likelihood that the use of the application mark will cause deception or confusion. Thirdly, the likelihood of deception or confusion must be real and tangible: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5. As the cases illustrate, deception or confusion might arise if people would have cause to wonder whether the services provided in association with the use of the applicantion mark were being provided by the same person as the owner of the reputation mark: Coca Cola Company v All-Fect Distributors Limited [1999] FCA 1721; (1999) 96 FCR 107 at [39], citing Pioneer Hi-Bread Corn co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at [423]; Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618; (2000) 100 FCR 166 at [86]. Unlike for a claim of misleading or deceptive conduct, it is sufficient under s 60 that there is some uncertainty in the minds of relevant members of the public: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191 at 198.

77    The evidence adduced by Insight Clinical Imaging to show the extent of its reputation in Australia as at 7 December 2011 included evidence of:

(a)    the marketing and promotion of Insight Clinical Imaging by its professional staff at interstate and international conferences, and through publication of academic articles and books;

(b)    the use of its marks on its website www.insightci.com.au since 2008;

(c)    its expenditure on Google adwords to link descriptive words to its website;

(d)    the number of visits to the website by persons located interstate (taken from Google Analytics reports);

(e)    its use of an online recruitment function “Seek” to advertise for professional staff, many of whom were recruited from interstate;

(f)    the number of referrals of patients that it had received from interstate medical practitioners; and

(g)    the number of interstate patients on its records.

78    Its database of referrers showed the number of interstate referrals as at 7 December 2011 as follows:

(a)    Victoria: one referral;

(b)    NSW: two referrals;

(c)    Qld: four referrals;

(d)    SA: one referral;

(e)    NT: one referral;

(f)    Tasmania/ACT/unknown: one referral.

79    Its database of interstate patients showed approximately 237 entries for radiology services provided up to 7 December 2011.

80    Insight Radiology contended that this evidence did not substantiate that Insight Clinical Imaging had established any reputation in its marks outside of Western Australia.

81    It was argued that the evidence disclosed that only an insignificant handful of interstate practitioners had referred patients to Insight Clinical Imaging and, it was said, the mere fact that a referrer from outside Western Australia appears on Insight Clinical Imaging’s database did not necessarily mean that the referrer had known of Insight Clinical Imaging or sought it out and specifically referred a patient to it.

82    It was also argued that Insight Clinical Imaging had an insignificant number of interstate patients on its records and, in any event, in cross-examination Mr Gauci, the managing director of Insight Clinical Imaging, was unable to say whether each entry in the database represented one patient or whether one person could appear as several separate entries and he accepted that it was likely that multiple entries could represent a single person.

83    The evidence regarding articles written by Insight Clinical Imaging’s radiologists was said to be limited to radiological journals and the references to Insight Clinical Imaging in those papers was “passing at best”. It was also submitted that there was scant evidence that other radiologists act as referrers, what proportion of the number of potential and actual referrers they comprise, and if they do refer patients whether that happens other than locally.

84    The evidence regarding the website advertising was said to show that it was directed solely at the Western Australian market.

85    The evidence about the website use based on the Google analytics results was said to have little probative value in evidencing a reputation outside of Western Australia because the actual data captured in the results did not provide any information about who visited the website, or why, or whether the person viewing the website was normally resident at that location. It was also said that the data in itself had little probative value because the results were of the number of “sessions” not the number of actual visitors to the website and the location information contained in the reports can be inaccurate. Further it was submitted that the numbers of visitors to the website were, in any event, insignificant in comparison to the numbers of internet subscribers.

86    It was submitted that “the overwhelming conclusion from [Insight Clinical Imaging’s] evidence must be that as at 7 December 2011, [Insight Clinical Imaging] had neither sought to develop nor had it established any reputation in its marks outside of Western Australia”. I disagree.

87    The evidence clearly established that Insight Clinical Imaging had extended its marketing and advertising beyond the boundaries of its operations within Western Australia through its website and promotions at national conferences and whilst the Google analytics data results may have their limitations, I nonetheless consider that they have some evidentiary value in that they do confirm exposure of Insight Clinical Imaging and its marks throughout parts of Australia, other than Western Australia, through the website. What the data showed is that there were a substantial number of visits to the websites from locations outside Western Australia. The utility of the data as probative evidence is in the extrapolation of that fact.

88    Moreover, the provision of radiology services is a specialist market requiring specialist skills, and the evidence was that radiology services can only be provided to patients with a referral from a doctor or other medical specialists. Whilst no direct evidence was led from any medical practitioner, it is implicit from the fact that Insight Clinical Imaging received referrals of patients from interstate practitioners that those practitioners must have known that the company provided radiology services in Western Australia, either through website searches or from existing knowledge. Either way, the fact that Insight Clinical Imaging received referrals of patients from various interstate practitioners in different States and Territories shows that Insight Clinical Imaging had some market recognition beyond Western Australia and, given Insight Clinical Imaging’s use of its marks in distinguishing its business as a radiology provider, is cogent evidence establishing a reputation in its marks outside Western Australia. The small number of referrals does not detract from a finding that Insight Clinical Imaging had acquired a reputation in its marks outside Western Australia having regard to the fact that it only carried on business in Western Australia. Accordingly, I am satisfied that Insight Clinical Imaging has established that its reputation had extended beyond Western Australia as at 7 December 2011.

89    The next issue to consider is whether because of the reputation of Insight Clinical Imaging’s marks, the use of the IR composite mark by Insight Radiology would be likely to cause deception or confusion and, in my opinion, the likelihood of deception or confusion is real and tangible. The issue here is whether people might believe that, or be led to wonder if, the radiology services were provided by the same source. Insight Radiology has accepted that the IR composite mark is deceptively similar to the ICI composite mark and crucially, registration of the mark is sought in connection with precisely the same services in respect of which Insight Clinical Imaging’s marks had acquired a reputation. The potential for confusion is significant because of the deceptive similarity between the marks and their use in connection with the same services. Furthermore, I do not think that the likelihood of deception or confusion is impacted by whether Insight Clinical Imaging’s reputation in its marks was Australia-wide or localised in Western Australia. The evidence clearly showed that whilst some radiology providers may carry on business in a localised area, they operate in a national industry so that there is a potential for deception or confusion even if Insight Clinical Imaging’s marks had not acquired a reputation beyond Western Australia. It follows that Insight Radiology’s endorsement on its mark does not provide an answer to the s 60 opposition.

90    There was argument over whether the endorsement in those terms would be insufficient in any event. If the endorsement became relevant as an answer to the s 60 opposition, I think for the sake of clarity that the endorsement should be re-expressed to put it beyond doubt that registration of the IR composite mark did not extend to Western Australia.

Conclusion on the s 60 ground of opposition

91    Accordingly the s 60 ground of opposition succeeds.

Section 42(b) ground of opposition

92    Section 42(b) of the Trade Marks Act prohibits the registration of a trade mark “if its use would be contrary to law”. Insight Clinical Imaging has claimed that Insight Radiology’s use of the IR composite mark (and IR word mark) would be contrary to law by reason that:

(a)    before the priority date of the application, as a result of the use by Insight Clinical Imaging of the ICI composite mark and ICI word mark, both marks had acquired a reputation in respect of radiology services; and

(b)    because of that reputation, if the IR composite mark had been used by Insight Radiology as at the priority date (7 December 2011) such use would have contravened ss 18 and/or 29 of the Australian Consumer Law and constituted the tort of passing off.

93    In separate proceedings (VID 714/2014) (“the infringement proceeding”) Insight Clinical Imaging has claimed that Insight Radiology breached both provisions of the Australian Consumer Law as the result of its use of the IR composite mark (and word mark) from March 2012 onwards. As the s 42(b) ground is the same issue (though on the hypothesis of use at an earlier date), this ground is considered together with claims under the Australian Consumer Law and for the reasons that appear later on under the heading “Misleading and deceptive conduct” I have concluded that Insight Radiology contravened ss 18, 29(1)(g) and 29(1)(h) of the Australian Consumer Law by its use of the IR composite mark and the IR word mark. Accordingly this ground has also been established.

the INFRINGEMENT proceedings

94    Section 120(1) of the Trade Marks Act relevantly provides that:

A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

95    Insight Radiology accepts that the Radiology marks are deceptively similar to the ICI trade marks; and also that Insight Radiology has used the Radiology marks in relation to radiology services, being the services in respect of which the Insight Clinical Imaging marks are registered. However, Insight Radiology has relied on statutory defences in s 122(1) of the Trade Marks Act to deny that the Insight Clinical Imaging’s marks have been infringed. Section 122(1) relevantly provides:

In spite of section 120, a person does not infringe a registered trade mark when:

(a)    the person uses in good faith:

(i)    the person’s name or the name of the person’s place of business; or

…

(e)    the person exercises a right to use a trade mark given to the person under this Act; or

…

(fa)    both:

(i)    the person uses a trade mark that is substantially identical with, or deceptively similar to, the first-mentioned trade mark; and

(ii)    the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it; …

96    Insight Radiology and Mr Pham have contended that Insight Radiology’s use of the Radiology marks constituted:

(a)    a good faith use of Insight Radiology’s name: s 122(1)(a)(i);

(b)    the exercise of a right to use a trade mark given to Insight Radiology under the Trade Marks Act: s 122(1)(e); and/or

(c)    use of marks that Insight Radiology would obtain registration of in its name were it to apply for them: s 122(1)(fa).

Section 122(1)(a) defence

97    The defence in s 122(1)(a)(i) was considered in Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130; (2011) 197 FCR 67. At [61] the Full Federal Court stated:

The defence in s 122(1)(a)(i) of the Trade Marks Act must be construed in the context of the statute as a whole. It is true that s 17 defines a trade mark as a “sign” used to distinguish the goods and services of one person in the course of trade from the goods and services of others. Section 120, moreover, defines infringement as occurring when a person uses “as a trade mark a sign that is substantially identical with, or deceptively similar to” a registered trade mark. In other words, infringement occurs when a person uses a sign to distinguish that person’s goods and services in the course of trade from the goods and services of others and the sign is substantially identical with, or deceptively similar to, a registered trade mark. The defence in s 122(1)(a)(i) is that, “in spite of section 120”, a person does not infringe a registered trade mark when the person uses in good faith the person’s own name. In other words, when a person uses a sign to distinguish that person’s goods and services in the course of trade from the goods and services of others, and the sign is substantially identical with or deceptively similar to a registered trade mark, such use will not constitute infringement if it is a use in good faith of the person’s name. Construed in context, as the primary judge said at [164], “the defence bites when the use of the person’s name is the reason for the finding of infringement”. Consideration of earlier decisions confirms this approach.

The requirement that the use be “in good faith” is a requirement of honest use. Honest use is not proven merely by showing that such use was not fraudulent. “Good faith” requires an honest belief that no confusion would arise by reference to the earlier trade mark’s reputation, and the absence of an intention to take advantage of the reputation acquired by another trader. The defence is not available in cases “where the respondent is engaging in sharp conduct with an eye on wrongly diverting business”: Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153; (2013) 308 ALR 1 at [74].

98    For the following reasons, I do not accept Insight Radiology’s defence based on s 122(1)(a)(i) of the Trade Marks Act.

99    As at the priority date of the ICI trade marks (10 October 2012), the name of the respondent company was AKP Radiology Consultants Pty Ltd, not Insight Radiology Pty Ltd (as it is now known). The company did not change its name until 17 June 2013. It follows that until the change of name, Insight Radiology was not the company’s name.

100    Insight Radiology argued nonetheless that a “name” within the meaning of that term in s 122(1)(a)(i) includes a business name under which goods or services are sold by an entity, regardless of its real name. In support Insight Radiology cited Shanahan’s Australian Law of Trade Marks and Passing Off 5th ed at [85.1810]. At p 618, the learned authors stated that “the word ‘name’ presumably does not extend to a mere surname or business name unless it is by that name that the person is known in the trade”. Insight Radiology argued that the registration of the business name “Insight Radiology” on 13 July 2011 which, it was said, was “plainly held on trust by Mr Pham for Insight Radiology as it was the entity trading under that name”, is sufficient to constitute “use of the person’s name” under s 122(1)(a)(i). It was submitted further that “if there were any doubt”, by February 2012 (and it was said well before any knowledge of Insight Clinical Imaging) the registered business names “Insight Radiology Leeton”, “Insight Radiology Devonport”, and “Insight Radiology Griffith” were owned by Insight Radiology in the respective States. I do not accept those submissions which are unsupported by the evidence. First of all, Mr Pham admitted in cross-examination that Insight Radiology was not trading under any of the business names owned by it. Secondly, there was no evidentiary foundation beyond Mr Pham’s mere assertion in cross-examination that the company has traded under the business name “Insight Radiology”. Mr Pham did not give that evidence in chief and no other evidence in chief was led to show that the company in fact has traded under that business name. In the complete absence of corroborating evidence to show that that the company has traded under that business name, I do not accept Mr Pham’s mere assertion as cogent evidence establishing that fact. For this submission to be successful, Insight Radiology had to produce cogent evidence that showed that it is a fact that the company has traded under that business name.

101    Insight Clinical Imaging conceded that the company has used “Insight Radiology” as the corporate name since 17 June 2013 but contended that such use has not been in good faith. It was contended that the Court should find on the evidence that Mrs Pham must have had knowledge of Insight Clinical Imaging’s business through Google searches that she conducted before the IR composite mark was designed and that the adoption of Insight Radiology as the corporate name, which happened very shortly after Mr Pham received the letter from Insight Clinical Imaging’s lawyers putting him on notice of possible infringement of Insight Clinical Imaging’s trade marks, was done to manufacture a defence to the anticipated trade marks infringement claim.

102    Insight Radiology’s case was that Mr Pham chose and adopted the Radiology marks in good faith without any knowledge of Insight Clinical Imaging, and the corporate name was subsequently changed in line with the use of the name in the marks and the business name registrations that already existed and not for any improper purpose. It was contended that the fact that the change occurred after Insight Radiology had become aware of Insight Clinical Imaging does not impugn the good faith adoption of the name.

103     It was Mr Pham’s evidence that the first he knew about Insight Clinical Imaging was on 13 May 2013 when he received the letter from Insight Clinical Imaging’s lawyers putting him on notice that Insight Clinical Imaging was the proprietor of registered trade marks 1517779 (ICI composite mark) and 1517780 (ICI word mark) and that Insight Clinical Imaging had been trading under the name Insight Clinical Imaging since August 2008.

104    Mrs Pham also gave evidence. Mrs Pham was not a director of Insight Radiology but she described herself as the company’s business manager. It was her evidence that she came up with the name “Insight Radiology”. She undertook various searches to ascertain the ability to use the name, but those searches did not bring up Insight Clinical Imaging. She deposed that the first time she became aware of Insight Clinical Imaging was on or about 20 December 2012 when she received a letter from IP Australia advising that Insight Clinical Imaging’s trade marks had been accepted for registration on the basis of s 44(4) of the Trade Marks Act, and the first time that she saw Insight Clinical Imaging’s website was on 13 May 2013 following receipt of the letter from Insight Clinical Imaging’s lawyers. She further deposed that when she received the letter from IP Australia in December 2012 she “did not think very much of the letter” and it did not occur to her that the registration could be opposed. She deposed that she made no enquiries about Insight Clinical Imaging or its activities at the time as she did not think that it could affect Insight Radiology’s trade mark or that Insight Radiology could affect Insight Clinical Imaging’s trade marks and “because [she] did not think much of the letter, [she] did not tell [Mr Pham] about the letter or show it to him”.

105    Mrs Pham swore three affidavits deposing to the searches she conducted. In her first affidavit, Mrs Pham deposed that she could not recall the exact date, but sometime in 2008 she conducted:

(a)    an online search of the New South Wales business names register for “Insight Radiology” and did not find any registrations;

(b)    an online search of ASIC company names for “Insight Radiology” and did not find any registrations; and

(c)    an online search of the IP Australia trade marks database for the marks containing the words “Insight” and “Radiology” and did not find any “refused, lapsed, pending or registered trade marks containing ‘Insight’ and ‘Radiology’”.

106    She further deposed that in or around July 2011, before Mr Pham applied to register the business name “Insight Radiology” she again conducted online searches of the New South Wales business names register, the ASIC company names register and the IP Australia trade marks register and her search did not find “any registered New South Wales business names, registered company names or refused, lapsed, pending or registered trade marks for ‘Insight Radiology’”.

107    In her second affidavit which she swore on 14 May 2015 Mrs Pham corrected her evidence about the searches that she had conducted. She deposed that whilst she could not recall the exact date, it was “likely that it was sometime in 2009 (and not 2008)” that she conducted an online search of the IP Australia trade marks database “for pending or registered marks” containing the words “Insight Radiology”, “Insight Diagnostic” and “Insight Imaging” but her search did not find any “pending or registered” marks containing those words. She also referred to her earlier evidence that she had conducted an online search of the IP Australia trade marks register again in or around July 2011 before Mr Pham applied to register the name “Insight Radiology” and deposed that she wished “to clarify” that she had conducted an online search for “pending or registered” marks containing the words “Insight Radiology”, “Insight Diagnostic” or “Insight Imaging” but her search did not find any “pending or registered” marks containing those words.

108    In her third affidavit which she swore on 13 August 2015, she again corrected her evidence and deposed that in addition to the searches that she had carried out in 2009 and 2011 “at about the same times” she had also conducted searches on the Google search engine, confined to Australia, for the terms “Insight Radiology”, “Insight Diagnostic” and “Insight Imaging”. She deposed she conducted those Google searches to determine if there were any radiology companies in Australia using those names. She deposed that she also conducted the Google searches in 2011, just before Mr Pham applied to register the business name “Insight Radiology”. She deposed that the results of the Google searches did not reveal any radiology services that used the name “Insight Radiology”, or “Insight Diagnostic” or “Insight Imaging” or any other name with the word “Insight” in it, including “Insight Clinical Imaging”.

109    Mrs Pham was cross-examined at length on her evidence about the searches she had conducted and changed her evidence yet again. First she stated that she had also conducted the business name search and the ASIC company names database in 2009, not in 2008. When challenged as to why she changed her evidence about the extent of the searches she had conducted on the IP Australia database, it was apparent that when Mrs Pham did her first affidavit, she had no recollection of the actual searches that she had done and realised from re-conducting the search in 2015 that if she had clicked on “all” that there was another trade mark there which she had not seen when she did her searches. When pressed as to when she became aware that her first affidavit was incorrect she stated that she could not recall but it was around the time she did the second affidavit. When asked what prompted her to make the second affidavit she stated:

Because I knew that here was another mark when you go down the others. When I did those searches again, I saw that there was a previous mark registration for – it was Insight Imaging, Insight Radiology on the one line. So that never showed up in the first search.

When asked what prompted her to re-do the search she replied:

To be honest, I don’t know. It was just me being curious as to exactly how the database worked, and then I’ve realised there was a dropdown box, so I then started proceeding through those and seeing what was in there.

When asked what prompted her to recall that in addition to searching “Insight Radiology” she also searched “Insight Diagnostic” and “Insight Imaging” she stated that:

We used to be Leeton Diagnostic Imaging, so that was always something that I would search, because I was familiar with those terms.

When asked what prompted her to remember that she had also done Google searches (some seven months after her first affidavit) she replied:

Because that was one of the first searches I did to see-they were just all done together so I could gather as much information as I could.

When it was put to Mrs Pham that had she done those Google searches she would have come up with Insight Clinical Imaging’s website, she denied that she had seen it.

110    Mrs Pham’s evidence was shown not to be reliable because her recollection of the searches she conducted was shown to be poor and based in part upon reconstruction.

111    According to expert evidence led by Insight Clinical Imaging, Insight Clinical Imaging’s website would have appeared on the first page of Google search results from a Google search of “Insight Imaging” or “Insight Radiology” at the time. Insight Radiology argued that the opinion of the expert that a search with those terms would show up as a first page result was speculative as the expert did not know the algorithms used by Google in setting out results from a search, and the expert accepted in cross-examination that one factor that affects the ranking of the search results is the location of the person searching so that it was quite possible that a user in Western Australia would see a different set of search results to a user making exactly the same search at the same time but from Victoria. It was submitted that the expert’s asserted certainty that Mrs Pham’s Google searches (in Leeton) would show the Insight Clinical Imaging website (in Perth) on a first page of search results should accordingly be given little or no weight. I disagree. The expert opinion is cogent probative evidence that Insight Clinical Imaging’s website would have appeared on the first page of Google search results, and that evidence is not disproved by Mrs Pham’s evidence as she had no clear recollection of what she had searched. In addition when pressed in cross-examination, Mrs Pham agreed that it was possible that she may have clicked on more pages than just the first page results. Given Mrs Pham’s testimony that her purpose in conducting the Google searches was to determine if there were any radiology companies in Australia using the names “Insight Diagnostic”, “Insight Imaging” or “Insight Radiology”, it is a reasonable inference that had Mrs Pham done a proper and diligent search to ascertain whether the name “Insight Radiology” was available for use, she would have viewed Insight Clinical Imaging’s website at the time had she conducted the searches. Moreover, the evidence about Insight Clinical Imaging’s website established that had Mrs Pham searched the website at the time, the website would have shown the ICI trade marks and their use in connection with promoting Insight Clinical Imaging’s radiology services business.

112    Mrs Pham was certainly put on notice by late December 2012, when she read the letter addressed to Mr Pham from IP Australia advising of the registration of Insight Clinical Imaging’s two marks in class 44 radiology services pursuant to s 44(4) of the Trade Marks Act. Mrs Pham gave evidence that she did not tell Mr Pham about that letter. Mr Pham’s evidence also was that he first learnt of Insight Clinical Imaging and its two marks when he received the letter of demand from Insight Clinical Imaging’s lawyers in May 2013. That letter was received before Mr Pham changed the company name, so that whether or not they are to be believed about when Mr Pham first knew about Insight Clinical Imaging, he undoubtedly knew about Insight Clinical Imaging and of the potential for confusion of the trade marks before he changed the company’s name.

113     There was no evidence as to the reason why the company changed its name to Insight Radiology Pty Ltd when it did, and without such evidence the inference is readily drawn that the name change was precipitated by that letter. Mr Pham did not explain his reason for, or timing of, the name change in his evidence and it is left to inference as to why he effected the name change when he did. The evidence points strongly against a finding that Mr Pham was acting in good faith in effecting the name change. It is telling that the company had used the Radiology marks since as far back as at least March 2012, and opened three new clinics in the meantime, without any apparent need to have the company name brought into line with the business name registrations or the Insight Radiology brand. It is also telling that the name change was made in the face of the claim, and with the knowledge, that the company’s use of the IR composite and IR word marks potentially infringed the ICI trade marks. Left to inference in the absence of cogent evidence to explain the reason and timing of the name change, Mr Pham has not shown that he was acting in good faith in changing the corporate name when he did.

114    Accordingly the s 122(1)(a)(i) defence has not been established.

Section 122(1)(e) defence

115    Under this defence, it is not an infringement of Insight Clinical Imaging’s trade marks if Insight Radiology is exercising a right to use its marks given to it under the Trade Marks Act. Presently, of course, Insight Radiology has no trade mark registrations. The application for registration of the IR composite mark was refused by the Registrar in September 2014 (Insight Clinical Imaging v Insight Radiology Pty Ltd [2014] ATMO 85; (2014) 109 IPR 86) and the application for registration of the IR word mark lapsed. An application to revive the application has been made but IP Australia has not made a decision on that application. In the circumstances, Insight Radiology is not exercising any rights to use its marks given to it under the Trade Marks Act and the defence does not apply.

116    Accordingly the s 122(1)(e) defence has not been established.

Section 122(1)(fa) defence

117    This defence would succeed if Insight Radiology succeeded on its appeal (and on the premise that Insight Radiology’s cross-claim for revocation is upheld). As I have concluded that the s 60 ground of opposition has been established, and Insight Radiology has not succeeded on its appeal, I should deal with this defence in case I am wrong in reaching my conclusion that the appeal should be dismissed.

118    This defence does not depend upon extant rights given to Insight Radiology under the Trade Marks Act in respect of the use of its marks. Under this defence, there is no infringement of the ICI trade marks if the Court is of the opinion that Insight Radiology would obtain registration of its trade marks, if it applied for registration. Neither party addressed the relevant date at which to consider the registrability of those marks, but it is implicit from the terms of the section that the availability of the defence falls to be considered on the basis of a hypothetical application made now.

119    In view of the concession made by Insight Radiology that its marks are deceptively similar to the ICI trade marks, the question of whether Insight Radiology would be entitled to obtain registration of its marks, if it was to make an application now, must be determined by reference to s 44 of the Trade Marks Act, specifically s 44(3). Section 44 relevantly provides as follows:

(1)     …

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)    a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

(3)    If the Registrar in either case is satisfied:

(a)    that there has been honest concurrent use of the 2 trade marks; or

(b)    that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4)    …

120    For the provision to apply, Insight Radiology has the onus of showing that there has been honest concurrent use of the Radiology marks, and the case is a proper one for the exercise of the discretion under s 44(3) in favour of Insight Radiology. Insight Clinical Imaging submitted that the defence was not available by reason that Insight Radiology’s concurrent use of the IR marks was:

(a)    not honest; alternatively

(b)    not sufficient to warrant acceptance under s 44(3).

121    I note for completeness sake that s 44(3) does not act as an exception to s 60, so that rejection of Insight Radiology’s application under s 60 means that it could not secure registration even if s 44(3) were to apply: McCormick at [93] and [96] per Kenny J.

Honest concurrent use

122    Honesty in this context has been held to mean “commercial honesty”: McCormick at [32].

123    Insight Radiology contended that Mr Pham adopted the Radiology marks without knowing of Insight Clinical Imaging or its marks and there has been honest concurrent use of the Radiology marks.

124    No explanation was provided in the evidence as to how Mrs Pham decided upon “Insight Radiology” and specifically why she chose the word “insight” to brand the company’s radiology services business. The choice of “Insight Radiology” is curious given that “Insight” was not already part of the company name or business name under which the company operated. Be that as it may, the choice of “Insight Radiology” was not put into issue by Insight Clinical Imaging. Rather the contention was that it was not honest to adopt the Radiology marks knowing at the time that Insight Clinical Imaging was trading in the same field using similar marks.

125    The evidence does not support a finding that either Mr or Mrs Pham knew about the use of similar marks by Insight Clinical Imaging before Insight Radiology commenced using the Radiology marks. Nonetheless, I do not think that it can be said that there has been honest concurrent use of the Radiology marks. In Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [293], Dodds-Streeton J found there had not been honest concurrent use in circumstances where, amongst other things, the applicant had failed to carry out an adequate search, seek professional advice or take reasonable precautions in relation to its adoption of a trade mark. In Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239, Beach J considered that if a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then the person is not acting in good faith in the sense of “honestly” within the terms of the good faith “own name” defence under s 122(1)(a) of the Trade Marks Act. In the present case, I have accepted the expert’s evidence that the Google search that Mrs Pham conducted would have come up with Insight Clinical Imaging. Had reasonable diligence been exercised by her at the time, it is reasonable to expect that she would have searched the website and found out that Insight Clinical Imaging was trading in the same field, using similar marks. Whilst there is insufficient evidence from which to conclude that she had looked at the website, the evidence does point to a failure on her part to conduct an proper and adequate search, either because her search was not sufficiently comprehensive to bring up the website in the search result or, if it did, because she failed to visit the website. Furthermore, no searches were done once the IR composite mark had been designed to check whether there were any similar marks used by other traders or before Insight Radiology commenced using the logo. These matters demonstrate a lack of diligence and reasonable care in carrying out adequate searches before the marks were adopted for use by Insight Radiology. It cannot be said that there has been “honest” concurrent use of the Radiology marks within the terms of s 44(3) when the searches, if conducted properly, would have come up with Insight Clinical Imaging’s website and its similar marks. If Mr Pham was not aware of Insight Clinical Imaging’s marks before he had Insight Radiology adopt and commence to use the Radiology marks, it was because of the inadequacies in the searches that were conducted and lack of care taken.

126    Furthermore, once it undoubtedly came to Mrs Pham’s attention in December 2012 that Insight Clinical Imaging was trading in the same field, using similar marks, she did nothing. She did not try to find out anything more about Insight Clinical Imaging or, on her evidence, even tell her husband about the letter from IP Australia but simply ignored it. Mrs Pham was challenged on her evidence that she did not bring that letter to the attention of her husband but it matters not whether she did or did not. Her own inaction does not mean that the continued use of the Radiology marks thereafter was “honest” because Mr Pham did not know about the letter. The answers given by Mr Pham in cross-examination disclosed that Mr Pham did not involve himself but left it to Mrs Pham, whom he “trusted”, to deal with his trade mark application and that letter put Mrs Pham on notice of Insight Clinical Imaging’s registered marks and the potential for confusion. Mrs Pham stated that she did nothing because she “did not think very much of the letter” and it did not occur to her that Insight Clinical Imaging could oppose the application for registration of the IR composite mark. If she held that belief at the time, it does not excuse the inaction. The failure to take the basic step of obtaining professional advice at that point in time reflects adversely upon a claim to honest concurrent use.

127    It undoubtedly came to Mr Pham’s attention in May 2013 that Insight Clinical Imaging was trading in the same field, using similar marks. It is noteworthy that there is no evidence from Mr Pham as to why the marks were continued to be used in the face of knowledge of the ICI trade marks. Indeed, there was no evidence at all from him that although he was then aware that Insight Clinical Imaging was using similar marks in connection with radiology services, that he did not think that the use of the Radiology marks in connection with the radiology services provided by Insight Radiology would be likely to cause any confusion. I consider it significant that Mr Pham did not give any evidence that he did not, at the time, consider that the likelihood of confusion was slight. The absence of such evidence from Mr Pham also reflects adversely upon a claim to honest concurrent use.

Discretionary considerations

128    A finding of honest concurrent use would not mean that registration under s 44(3) would be granted. In the present case, there are a number of reasons against the exercise of discretion under s 44(3) to permit acceptance of an application for registration of the Radiology marks.

129    First, if I am wrong that there was not honest concurrent use, it is nonetheless relevant to the exercise of discretion that had proper searches been undertaken and reasonable care exercised at the time, it should have come to Mr Pham’s attention before adopting and using the Radiology marks that Insight Clinical Imaging was trading in the same field using deceptively similar marks.

130    Secondly, Insight Radiology has conceded that the marks are deceptively similar to the ICI trade marks. Due to the deceptive similarity of the marks, there is a substantial possibility of confusion between them.

131    Thirdly, there is evidence of actual confusion from the concurrent use of the two sets of trade marks. That evidence was led by Insight Clinical Imaging from Mr Gauci, the managing director of Insight Clinical Imaging and Mr Zucal, the Chief Executive Officer of Insight Clinical Imaging.

132    Mr Gauci deposed that he first learnt of Insight Radiology in May 2012 as the result of an email he received from an industry group ADIA, seeking clarification that Insight Radiology was a separate entity to Insight Clinical Imaging and that:

…For example, since 2012, I have received a number of phone calls from other members of the industry calling to confirm whether we had opened a new practice in NSW, including calls from ADIA and Kestral Computing (an IT company that provides the computer system used by Insight and I believe other medical imaging providers). I also recall that in the first half of 2013 I received a telephone call from a representative of Shepparton Radiology (regional VIC) enquiring whether we had opened a practice in Leeton (regional NSW).

133    Mr Gauci also exhibited a quotation received by Insight Clinical Imaging that was incorrectly addressed to Insight Radiology and a newspaper article about an accidental fire at one of Insight Clinical Imaging’s clinics which the media incorrectly reported as the “inSight radiology clinic”.

134    Mr Zucal deposed that on 26 February 2014 he attended a radiology function at the Princess Margaret Hospital for Children in Perth and during that function he had a discussion with a radiologist from that hospital who told him he had searched online for Insight Clinical Imaging and in doing so “became confused thinking that Insight [Clinical Imaging] was in fact based in New South Wales or had opened clinics in suburbs of New South Wales”.

135    Whilst I do not place much weight on Mr Gauci’s highly generalised and unspecific evidence concerning the telephone calls, Mr Zucal’s evidence has some corroborative value and the quotation and the media article are each probative of actual instances of confusion, which I accept have occurred. Furthermore, it is undoubted that the potential for confusion is significant because of the substantial similarity between the marks and their use in connection with the same services and in the same market, notwithstanding the different geographical locations in which the companies have operated to date.

136    Fourthly, the evidence did not disclose that any real prejudice would have been caused to Insight Radiology if it had changed its marks in December 2012 when it was first learnt that Insight Clinical Imaging had similar marks also in connection with radiology services. Whilst the company had been using the marks since February/March 2012, that was only in connection with the Leeton clinic. The other clinics had only been operating since August 2012 and the evidence did not show that the use of the Radiology marks had built up such a reputation in that time that to change them would have impacted significantly upon Insight Radiology’s business. I accept that there may have been some inconvenience and costs involved, but the evidence did not demonstrate that Insight Radiology’s use of those marks had built up sizeable commercial value. It is also relevant that the company was not even then called Insight Radiology Pty Ltd.

137    Fifthly, in contrast, Insight Clinical Imaging had at that time been using its logo in connection with the provision of radiology services since 2008 and the evidence showed that it had built up a sizeable reputation in its marks at least in Western Australia.

138    Having regard to those factors, it seems to me that the discretion would not be exercised in favour of Insight Radiology to allow registration of the Radiology marks, even with a geographical limitation upon those marks. In so concluding, I take into account that since May 2012, Insight Radiology has expended reasonable sums of money on advertising and promotion and built up a reputation in its marks, at least in the localised areas of its clinics. However, from December 2012 that was all done with knowledge of the deceptive similarities of the marks and, as stated, there is no evidence that Mr Pham believed, let alone genuinely believed, that the risk of confusion between the two sets of marks was slight.

139    Accordingly the s 122(1)(fa) defence has not been established.

misleading and deceptive conduct

140    Insight Clinical Imaging alleged in its process and statement of claim filed 24 November 2016 that Insight Radiology engaged in conduct that was misleading or deceptive (or likely to mislead or deceive) in contravention of s 18 of the Australian Consumer Law, or had made false representations in contravention of s 29(1)(b) and (1)(h) of the Australian Consumer Law by the use of the Radiology marks. In closing written submissions, Insight Clinical Imaging relied on ss 18(1), 29(1)(g) and 29(1)(h) of the Australian Consumer Law.

141    Section 18(1) of the Australian Consumer Law provides:

A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

142    Sections 29(1)(b), (g) and (h) of the Australian Consumer Law provide:

A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

…

(b)    make a false or misleading representation that services are of a particular standard, quality, value or grade;

…

(g)    make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

(h)    make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation; or

…

143    The principles applicable to determining whether conduct or representations contravene either of these sections are well established. Conduct is, or is likely to be, misleading or deceptive if it has a tendency to lead into error, notwithstanding that there was no intention to mislead or deceive: Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2013] HCA 54; (2013) 250 CLR 640 at [39] (French CJ, Crennan, Bell and Keane JJ). Whether conduct is, or is likely to be, misleading or deceptive is objectively determined by reference to the class of the public likely to be affected by the conduct (Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191; Campomar Sociedad Limited v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45 at [103]-[105]). The question is whether a “not insignificant number” of “reasonable” or “ordinary” members of that class of the public would, or are likely to, be misled or deceived: Peter Bodum A/S v DKSH Australia Pty Ltd [2011] FCAFC 98; (2011) 280 ALR 639 at [204]–[210]. Whilst it is not necessary to demonstrate actual deception, conduct that may cause some confusion or uncertainty as to whether products or services might have come from the same source is not necessarily co-extensive with misleading or deceptive conduct: Google Inc v Australian Competition and Consumer Commission [2013] HCA 1; (2013) 249 CLR 435 at [6], [8] (French CJ, Crennan and Kiefel JJ).

144    Insight Radiology conceded that it contravened s 18, s 29(1)(g) and s 29(1)(h) of the Australian Consumer Law if Insight Clinical Imaging had developed a reputation in its marks extending to the places in which Insight Radiology is operating (i.e. NSW and Tasmania). However it was contended that Insight Clinical Imaging’s reputation was essentially within Western Australia and denied that it has engaged in conduct contrary to s 18 or s 29(1)(g) or (h) of the Australian Consumer Law by adopting and using the Radiology marks in relation to radiology services.

145    The relevant date for assessing Insight Clinical Imaging’s reputation is when the Leeton clinic was rebranded to Insight Radiology and the Radiology marks commenced to be used: i.e. February/March 2012. It is undoubted that by that point in time Insight Clinical Imaging had an established prior reputation in its marks that was distinctive of the radiology services that it provided. Furthermore, for the reasons given in the context of consideration of the s 60 ground of opposition that as at December 2011, I have held that Insight Clinical Imaging had an established reputation in its marks outside of Western Australia.

146    For the same reasons that the s 60 ground of opposition must succeed, so too Insight Radiology’s adoption and use of deceptively similar marks in respect of the same services in the same market is conduct that was misleading or deceptive or likely to mislead or deceive or was the making of a false or misleading representation within the terms of s 29(1)(g) and (h) of the Trade Marks Act. In the present case the market for radiology services is broadly two tiered: namely the referrers and patients, with referrers being the predominant market. By using similar marks in relation to the same services directed at the same market, reasonable members of the relevant market for those services would be likely to be misled into thinking that the radiology services provided by Insight Radiology and Insight Clinical Imaging were from the same source. In so concluding I take into account that the evidence did not show that Insight Clinical Imaging had developed a substantial reputation in its marks outside of Western Australia but the likelihood of deception or confusion is not mitigated by the different geographical locations in which the parties have been conducting business because they operate in a national industry and Insight Radiology has not distinguished its services from those of Insight Clinical Imaging by the branding that it adopted. The capacity for, and likelihood of, not just confusion, but mistake as to identity is real and not remote.

147    I find that by advertising and promoting its services using the Radiology marks, Insight Radiology has engaged in misleading and deceptive conduct and made misleading representations contrary to ss 18, 29(1)(g) and 29(1)(h) of the Australian Consumer Law.

passing off

148    Insight Clinical Imaging has also alleged that Insight Radiology had engaged in passing off by its use of the Radiology marks. The elements of the tort of passing off are:

(a)    the existence of a reputation in the mind of the relevant purchasing class for the applicant’s goods or services by association with a brand name or mark;

(b)    a misrepresentation by the respondent to the public, whether intentional or inadvertent, that its goods/services are those of the applicant, leading or likely to lead the public to believe that goods or services offered by the respondent are the goods or services of the applicant; and

(c)    that the applicant has suffered or is likely to suffer damage by reason of the erroneous belief engendered by the respondent’s misrepresentation that the source of the respondent’s goods or services is the same as the source of those offered by the applicant: Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 at 499.

149    It is unnecessary for Insight Clinical Imaging to prove there was actual deception or confusion and also unnecessary to prove any actual, subjective intention to mislead.

150    For the same reasons given above in respect of the claims under the Australian Consumer Law, I am satisfied that this claim has also been established.

evidentiary matters

151    It was submitted for Insight Radiology that it was not put to Mr Pham or any other witness for Insight Radiology that the change of name was done for an improper purpose or put to Mr Pham that he in fact considered that the use of the Insight Radiology name would mislead or deceive customers or infringe any valid right of Insight Clinical Imaging. It was also submitted that the failure to put those matters to the witnesses was fatal to Insight Clinical Imaging’s attack on Insight Radiology’s defences in circumstances where the original adoption and use of the mark was plainly in good faith. No authority was cited in support and the basis upon which the submission was put was not articulated. Presumably it is a Browne v Dunn (1893) 6 R 67 point. The rule in Browne v Dunn is a rule of fairness which requires a party or a witness to be put on notice that a statement made by the witness may be used against the party or witness, or put on notice that an adverse inference may be drawn against the witness in order that the witness may respond to that issue and give an explanation. The rule requires notice to be given of a proposed attack on a witness or on the witness’ evidence where that attack is not otherwise apparent to the witness. The rule does not require that there be put to the witness every point upon which his or her evidence might be used against him or her or against the party who calls the witness. The rule does not apply, and will not be treated as being transgressed, notwithstanding a witness’ version is challenged, an inference may be drawn against her or him, or an adverse comment may be made, if the witness is on notice by reason of the contents of the pleadings, an opening in the case or the manner in which the case is conducted: White Industries (Qld) Pty Ltd v Flower & Hart (a firm) [1998] FCA 806; 156 ALR 169, at 218. The rule has not been transgressed in this case – Insight Radiology was clearly on notice that good faith was in contest and of the claims of infringement and misleading and deceptive conduct. It was not necessary for any of those matters to be put formally to Mr Pham (or any other witnesses).

the claim against Mr pham

152    Insight Clinical Imaging has made a separate claim against Mr Pham as a joint tortfeasor with the company.

153    Recently in Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239 Beach J at [333]–[340] helpfully set out the relevant principles to apply in attributing personal liability on an individual director as a joint tortfeasor with a company. His Honour stated as follows:

Let me first deal with what is required to establish that an individual director is a joint tortfeasor with the company. Keller v LED Technologies Pty Ltd (2010) 185 FCR 449 elaborates on a number of different approaches to establishing such joint liability. They are variously that the alleged joint tortfeasor must have:

(a)     done something more than acting as a director and been involved in invading the applicant’s rights (at [83] and [84] per Emmett J);

(b)    had a close personal involvement in the infringing acts of the company (at [291] per Besanko J); or

(c)    made the company’s tort his own (at [405] per Jessup J).

The variation between these particular formulations is of little moment in the present case although I note that there are conceptual differences but generally broad consistency (see Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 3) (2010) 88 IPR 242; 275 ALR 258 at [108] to [118] per Nicholas J).

In Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 at [94] to [105], Kenny J accepted (albeit in the context of a summary judgment application) that there was a strong prima facie case that two of the directors of the respondent who were “in effective control of the business of [the company]” and who were “intimately involved in the company’s activities” were liable as joint tortfeasors and as persons involved in contraventions of applicable consumer law provisions. Relevantly, Kenny J found that the directors knew that the company’s use of the applicant’s trade mark on business cards and letterhead was, or was likely to be, infringing. Her Honour concluded that there was a strong case that the directors were personally involved in the trade mark infringements, passing off and statutory breaches of the applicable consumer law provisions by the company and used the company for their own wrongdoing.

Similarly, in Taleb v GM Holden Ltd (2011) 94 IPR 459; 286 ALR 309 at [18] to [23] per Finn and Bennett JJ, the Full Court upheld the conclusion of the primary judge that the appellant was liable as a joint tortfeasor for the trade mark infringement and passing off of the company. The appellant had established the business and directly controlled it until his son took over its day-to-day management.

A further example of the manner in which these principles have been applied can be found in Bob Jane. Besanko J found that there was sufficient evidence to find both Mr Jane (who set up the companies) and Mr Rigon (who oversaw the impugned website), both directors of the relevant company, to be joint tortfeasors. His Honour summarised the various formulations in Keller at [142] to [148] and considered the liability of Mr Jane to follow from his involvement in the company to be “quite plain”, his Honour apparently applying his preferred formulation of “a close personal involvement”.

In relation to accessorial liability concerning the contraventions of the Australian Consumer Law, the following may be noted. The grant of an injunction may include any person who is involved in a contravention. The Australian Consumer Law defines a person involved in a contravention in the following terms (s 2(1)):

involved: a person is involved, in a contravention of a provision of this Schedule or in conduct that constitutes such a contravention, if the person:

(a)     has aided, abetted, counselled or procured the contravention; or

(b)     has induced, whether by threats or promises or otherwise, the contravention; or

(c)     has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention; or

(d)     has conspired with others to effect the contravention.

Further, damages can be awarded against persons involved in a contravention.

It is necessary to show inter alia that the person had knowledge of the essential matters that make up the contravention: Yorke v Lucas (1985) 158 CLR 661 at 670 per Mason ACJ, Wilson, Deane and Dawson JJ. Knowledge of each of the essential elements of the contravention on the part of the individual must be established: Keller at [334] to [337] per Besanko J.

Whilst it is insufficient to attribute liability to a director as a joint tortfeasor merely on the basis that the director, whilst acting in that capacity, caused or directed the company to engage in the unlawful act or acts, liability will attach where the director was personally involved in the commission of the infringing acts and knew that the company may be infringing another person’s rights: Keller v LED Technologies Pty Ltd [2010] FCAFC 55; (2010) 185 FCR 449.

154    Mr Pham is the sole director, secretary and 50% shareholder of Insight Radiology with his wife. He was instrumental in establishing each of Insight Radiology’s radiology clinics and in choosing the Insight Radiology name, logo and branding style, initially for the Leeton clinic in March 2012 and for Insight Radiology’s other clinics in August 2012. On his own evidence, although it was his wife who came up with the name “Insight Radiology” he was the one who made the final decision. On the evidence he was the one who authorised the company to use the marks and the one who changed the corporate name. He did so at a time when he was clearly on notice that the company may be infringing Insight Clinical Imaging’s registered marks and, in the face of that knowledge, facilitated the continued use by the company of the Radiology marks. As found, I have not accepted that the corporate name change was done in good faith nor, as mentioned, did Mr Pham give evidence that at the time he believed, let alone honestly believed, that that the risk of confusion between the two sets of marks was slight. His actions were deliberate, and in knowing pursuit of a course of conduct that was likely to constitute infringement or which reflected an indifference to the risk of it: Keller v LED Technologies Pty Ltd [2010] FCAFC 55; (2010) 185 FCR 449 at [273].

155    Accordingly, I conclude that Mr Pham is liable as a joint tortfeasor and for aiding and abetting Insight Radiology’s wrongful use of the marks.

Cross-Claim

156    By way of cross-claim to the infringement proceedings, Insight Radiology has sought orders pursuant to s 88 of the Trade Marks Act cancelling, or alternatively amending the registration by placing a geographical limitation on the registration of the ICI trade marks. Section 88 provides:

(1)     Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:

(a)     cancelling the registration of a trade mark; or

(b)     removing or amending an entry wrongly made or remaining on the Register; or

(c)     entering any condition or limitation affecting the registration of a trade mark that ought to be entered.

(2)     An application may be made on any of the following grounds, and on no other grounds:

(a)     any of the grounds on which the registration of the trade mark could have been opposed under this Act;

(b)     an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation;

(c)     because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion;

(e)     if the application is in respect of an entry in the Register—the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation.

157    Insight Radiology has alleged against Insight Clinical Imaging that:

(a)    the ICI trade marks are not capable of distinguishing Insight Clinical Imaging’s services in respect of which those marks are registered: s 41 and s 88(2)(a);

(b)    the use of the ICI trade marks would be contrary to law by reason that Insight Clinical Imaging has, by the use of its marks, engaged in conduct that is misleading or deceptive or likely to mislead and deceive in contravention of s 18(1) of the Australia Consumer Law: s 42(b) and s 88(2)(a);

(c)    the ICI trade marks are substantially identical with, or deceptively similar to the IR composite mark and s 44(2) applies: s 44(2)(a)(ii) and (b), and s 88(2)(a);

(d)    Insight Clinical Imaging’s use of its registered marks would be likely to deceive or cause confusion within the terms of s 60: s 60 and s 88(2)(a);

(e)    because of the circumstances applying at the time when Insight Radiology’s application for rectification was filed, the use of the ICI trade marks are likely to deceive or cause confusion: s 88(2)(c).

Sections 41 and 88(2)(a) – inherent adaptability to distinguish

158    Insight Radiology has claimed that the ICI trade marks are not capable of distinguishing Insight Clinical Imaging’s services in respect of which the trade marks are registered from the services of Insight Radiology: ss 41 and 88(2)(a). Section 41 of the Trade Marks Act (as it was before the 2013 amendments) provided as follows:

(1)    For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1:    For applicant and predecessor in title see section 6.

Note 2:    If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2)    An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

    Note:    For goods of a person and services of a person see section 6.

(3)    In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)    Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)    If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)    the Registrar is to consider whether, because of the combined effect of the following:

(i)    the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)    the use, or intended use, of the trade mark by the applicant;

(iii)    any other circumstances;

    the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)    if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)    if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1:    For goods of a person and services of a person see section 6.

Note 2:    Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6)    If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)    if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does not distinguish the designated goods or services as being those of the applicant – the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)    in any other case – the trade mark is taken not to be capable of distinguishing the designated good or services from the goods or services of other persons.

Note 1:     Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)    the time of production of goods or of the rendering of services.

Note 2:    Use of trade marks by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsection (1) and (7)(3) and section 8).

159    In deciding whether a mark is capable of distinguishing the designated goods from the goods of others, the Court must take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of others: s 41(3) of the Trade Marks Act. In order to determine a mark’s inherent capacity to distinguish, it is necessary first to consider the ordinary signification of the mark in Australia to anyone ordinarily purchasing, consuming or trading in the relevant goods or services (the target audience) and then to inquire into whether other traders may legitimately need to use the word in respect of their goods or services: Cantarella Brothers Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; (2014) 254 CLR 337 (“Cantarella”) at [71] and [77]. In Cantarella the majority stated at [71]:

As shown by the authorities in this Court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish. (footnotes omitted)

The two parts of the test are closely related questions: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156; (2015) 237 FCR 388 at [124]–[126].

160    Insight Radiology contended that the ordinary signification of the phrase “Insight Clinical Imaging” to a person concerned with radiology services would be “insightful imaging used in a clinical setting including radiology” or “imaging used in a clinical setting including radiology provided with insight”. It was submitted that the word “insight” is an obvious laudatory word for a trader to use in the branding of a service and submitted that it also has the added obvious feature in the context of radiology services of describing the actual process of “seeing into” the body, and that the addition of the stylised eye-ball in the ICI composite mark simply reinforces these ideas. Accordingly, so the argument went, other traders would, without improper motive, wish to use the ICI trade marks, or ones so nearly resembling them so as to infringe, in respect of radiology services, such that the ICI trade marks are only to some extent capable of distinguishing. The submission was also repeated that Insight Radiology chose and used its marks for the same services, without improper motive.

161    Insight Clinical Imaging contended that, in the context of its trade marks, the word “Insight” is a “covert and skilful illusion”, and not a “direct reference” to radiology services.

162    In Cantarella, the majority stated at [59]:

…It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

At [50], the majority emphasised the distinction between a word making some “covert and skilful allusion” to the goods (prima facie registrable) and a word having a “direct reference” to goods (prima facie not registrable).

163    I reject the submission for Insight Radiology that the word “insight” is not capable of distinguishing Insight Clinical Imaging’s radiology services. The ordinary signification of the word “insight”, whether as a contraction of the word “insightful” or in itself, does not directly describe any type of radiology service, nor does the word have some overtone of meaning which makes the word descriptive of any such services. Nor did the evidence show that the word is ordinarily used to indicate such services. The word “insight” is also not a laudatory description in ordinary signification. Rather the word is connotative of the understanding and expertise of the clinicians, not denotative of the radiology services as such. Accordingly, I accept that the ICI trade marks are inherently capable of distinguishing Insight Clinical Imaging’s radiology services in the minds of the target audience (i.e. referrers and patients) and were properly accepted as being prima facie registrable pursuant to s 41(3) of the Trade Marks Act (as it relevantly applied before the 2013 amendments). The ICI composite mark is further distinguished by the addition of the logo, which similarly is not directly descriptive of such services.

164    If I am wrong, and the ICI trade marks either are not to any extent inherently adapted to distinguish, or are only to some extent inherently adapted to distinguish, Insight Clinical Imaging’s radiology services from other radiology services providers, the criteria for acceptance under ss 41(5) and (6) of the Trade Marks Act is satisfied by Insight Clinical Imaging’s evidence of its extensive use of the ICI trade marks as trade marks since 2008, and a well established reputation as at December 2012, in connection with the provision of its radiology services.

165    If, and to the extent that, it is relevant in this context also to take into account the reputation acquired by Insight Radiology in relation to the use of its marks (see Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; 164 FCR 506 at [30]) (as to which I make no finding), I do not accept the argument for Insight Radiology that because of its use of its marks, it cannot be said that Insight Clinical Imaging’s marks are inherently adapted to distinguish its services. The relevant date at which to make the assessment of distinctiveness is 12 October 2012, the date of lodgement of the application for registration of the ICI trade marks. The short answer is that whilst Insight Radiology had been using its marks since February/March 2012, the ICI trade marks had become distinctive of Insight Clinical Imaging’s business well before then by reason of their extensive use since 2008. As at 12 October 2012, the Radiology marks had been in use for just eight months in Leeton and only a period of a couple of months in Griffith, Narellan and Devonport in a very limited geographical area. It was still a new mark and would not have impacted on the ICI trade marks’ capacity to distinguish Insight Clinical Imaging’s radiology services in a substantial way.

Sections 42(b) and 88(2)(a) – contrary to law

166    It was argued for Insight Radiology that as at the lodgement date of the ICI trade marks, Insight Radiology had established a relevant reputation in its word and composite mark in respect of radiology services in at least the localised areas in which it operated (i.e. Leeton, Griffith, Narellan and Devonport. As a result, it was submitted, a not insubstantial number of referrers and patients in those areas would likely believe that, if Insight Clinical Imaging were to provide radiology services under either of its ICI trade marks in those areas, that those services were either provided by or affiliated with Insight Radiology. Accordingly it was submitted that the use by Insight Clinical Imaging of its marks in New South Wales (in particular Leeton, Griffith and Narellan and surrounding districts) and Tasmania (in particular Devonport and surrounding districts) in respect of the services in which those marks are registered would comply as conduct that was misleading or deceptive or likely to mislead or deceive in contravention of s 18(1) of the Australian Consumer Law. Accordingly it was submitted that neither of the ICI trade marks should have been accepted or entered on the register alternatively should only have been accepted for registration and entered on the register subject to a limitation that Insight Clinical Imaging’s exclusive rights to use or authorise the use of the trade mark be limited to use in the State of Western Australia or some other geographical limitation. This claim is also rejected. For the reasons already given, Insight Radiology has not established a defence to the infringement claim, the claim of misleading and deceptive conduct and the tort of passing off. It has been using its marks unlawfully and, in the circumstances, there is no warrant either for cancelling the registration of the ICI trade marks or limiting the registrations geographically by reason of Insight Radiology’s unlawful use of its marks.

Sections 44(2)(a)(ii) and (b) and 88(2)(a) – prior inconsistent application

167    Section 44 was said to apply because Insight Radiology’s application for registration was filed prior to Insight Clinical Imaging’s application for registration and was still pending when the ICI trade marks were registered. Insight Radiology submitted that s 44(4) did not operate to preclude the application of s 44(3) so as to allow the Registrar to accept Insight Clinical Imaging’s application subject to a geographical limitation. Insight Clinical Imaging disputed that an application accepted under s 44(4) could be subject to a limitation under s 44(3) of the Trade Marks Act.

168    It is unnecessary to reach any conclusion on whether s 44(3) does overlay the operation of s 44(4) because, due to Insight Radiology’s unlawful use of its marks, there is no justification for imposing any limitation upon the registration of the ICI trade marks. I note also that if s 44(3) did allow the Registrar otherwise to impose a geographical limitation on the registration of Insight Clinical Imaging’s marks, as a factual matter the evidence disclosed that the ICI trade marks have not been used only in Western Australia but throughout Australia through the promotional advertising activities conducted by Insight Clinical Imaging and, as found, Insight Clinical Imaging had established a reputation in its marks outside of Western Australia. A limitation on the registration would not be appropriate in any event.

Sections 60 and 88(2)(a) – reputation

169    Insight Radiology contended that by reason of the deceptive similarity between the Radiology marks and ICI trade marks, and Insight Radiology’s reputation in its marks as at 12 October 2012, there is a real tangible danger of confusion occurring in at least the areas in which Insight Radiology operates and therefore, the ICI trade marks should be limited to exclude those territories. This claim should also be rejected, principally for the reason that Insight Radiology’s unlawful use of its marks does not justify any limitation on the registration of the ICI trade marks.

Section 88(2)(c)

170    The application for rectification was lodged on 5 February 2014 and accepted for filing on 9 February 2014 and, accordingly, it was submitted that this provision calls for a consideration of events up to the date of lodgement. By that time, it was said, Insight Radiology’s reputation in New South Wales and Tasmania had increased with no relevant reputation built by Insight Clinical Imaging at that time in those areas. Whether or not that be the case, if there be deception or confusion it is the consequence of Insight Radiology’s unlawful use of its marks and this claim must also be rejected.

Discretion

171    As Insight Radiology has not established any basis either for the cancellation or amendment of the registration of the ICI trade marks, it is unnecessary to consider Insight Radiology’s argument that the Court should exercise its discretion under s 88 of the Trade Marks Act to rectify the registration of the ICI trade marks.

Conclusion

172    In view of my conclusions, the appeal will be dismissed, there will be judgment for Insight Clinical Imaging on the infringement, misleading and deceptive conduct and passing off claims and the cross-claim will be dismissed.

Associate:

Dated:    23 November 2016