Federal Court of Australia

Prezzee Pty Ltd v Epay Australia Pty Ltd [2025] FCA 1662

ORDERS

PENAL NOTICE

TO:    EPAY AUSTRALIA PTY LTD (ACN 093 566 057)

IF YOU:

(A)    REFUSE OR NEGLECT TO DO ANY ACT WITHIN THE TIME SPECIFIED IN THIS ORDER FOR THE DOING OF THE ACT; OR

(B)     DISOBEY THE ORDER BY DOING AN ACT WHICH THE ORDER REQUIRES YOU TO ABSTAIN FROM DOING,

YOU WILL BE LIABLE TO IMPRISONMENT, SEQUESTRATION OF PROPERTY OR OTHER PUNISHMENT FOR CONTEMPT.

ANY OTHER PERSON WHO KNOWS OF THIS ORDER AND DOES ANYTHING WHICH HELPS OR PERMITS YOU TO BREACH THE TERMS OF THIS ORDER MAY BE SIMILARLY PUNISHED.

UPON the applicant undertaking to submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by the operation of the interlocutory order or undertaking or any continuation (with or without variation) thereof and to pay the compensation referred to herein to that person.

THE COURT NOTES THAT:

UPON the applicant having given the usual undertaking as to damages in the form set out in the Usual Undertaking as to Damages Practice Note (GPN-UNDR).

THE COURT ORDERS THAT:

1. Pending the hearing and determination of the proceeding, or unless the Court otherwise orders, the respondent, whether by itself or by its servants or agents, be restrained from supplying or selling, offering to supply or sell, or advertising or promoting for supply or sale, goods or services that are the same as, or of the same description as, or closely related to, the goods and services covered by the Prezzee Trade Marks (in Annexure A to these orders) under or by reference to the signs “Prezzy”, “Prezzy Card” or “Powered by Prezzy Card”.

2. The respondent take the following steps to remove from circulation or sale any products bearing the signs “Prezzy”, “Prezzy Card” or “Powered by Prezzy Card”:

(a) by sending an email to all retailers of Giftzzy cards, by 12:00pm (ACDT) on 12 December 2025 in the form of Annexure B;

(b) as soon as practicable and in any event no later than 5.00pm (ACDT) on 15 December 2025 by disabling, to the extent that it is technically feasible to do so, the processing of any transaction for the activation of the said Giftzzy cards;

(c) by physically retrieving all Giftzzy cards bearing the words “Powered by Prezzy Card” from retailers by 30 January 2026.

3. By 12.00 pm (ACDT) on 18 December 2025, a director of the respondent is to file and serve an affidavit deposing to the respondent’s compliance with paragraphs 2(a) and 2(b) above.

4. The respondent has liberty to apply for a variation of the date in paragraph 2(b) or for revocation of paragraph 2(b) on the grounds that the disablement referred to in the order is not technically feasible, such liberty to be exercised no later than 4.00 pm (ACDT) on 15 December 2025.

5. There be a further case management hearing at 9.00am (ACDT) on 17 December 2025, such hearing to be conducted remotely by Teams.

6. Costs be reserved.

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

REASONS FOR JUDGMENT

CHARLESWORTH J

1 On 10 December 2025 I made orders with injunctions in this matter on the urgent application of the applicant.  Oral reasons were published at that time.  This is a written record of those reasons with some minor revisions from the transcript.

2 The applicant, Prezzee Pty Ltd (ACN 602 963 422), is the owner of Australian registered trademarks in classes 9, 35, 36 and 42 relating to gift cards and gift vouchers.  The registrations are as follows (Prezzee trade marks):

(1) , registered from 22 October 2014 (TM no. 1653894);

(2) Prezzee, registered from 14 September 2017 (TM no. 1873182);

(3) Prezzee Smart eGift Card, registered from 19 May 2020 (TM no. 2089409);

(4) Prezzee Swap Card, registered from 19 May 2020 (TM no. 2089410);

(5) Prezzeegram, registered from 11 November 2021 (TM no. 2227634);

(6) , registered from 23 May 2022 (TM no. 2271863);

(7) Prezzee Buzz, registered from 13 June 2023 (TM no. 2363982);

(8) Prezzee Go, registered from 13 June 2023 (TM no. 2363983); and

(9) PrezzeePay, registered from 6 March 2025 (TM no. 2528120).

3 Prezzee has used one or more of the Prezzee trade marks as a badge of origin of goods or services in the nature of digital gift cards.

4 The respondent, Epay Australia Pty Ltd (ACN 093 566 057), is the registered owner of trade marks registered in Australia utilising the word “Giftzzy”.  It is also the registered owner of trade marks registered in New Zealand, utilising the word “Prezzy”, including in relation to goods and services that encapsulate gift cards.

5 In August 2025, Epay launched in Australia a digital and physical gift card.  The phrase “Powered by Prezzy Card” appear on the face of the cards themselves, as well as in marketing materials and social media posts promoting them.  It is convenient to refer to the products offered by both parties as “gift cards”.  As will be explained later in these reasons, there are some differences in the products or services offered by them including the financial mechanisms that support them.

6 Prezzee alleges that Epay has infringed its trade marks by (among other things), supplying and marketing gift cards using as a trade mark the word “Prezzy” in the phrase “Powered by Prezzy Card”.  In addition, it alleges that Epay has passed itself off as being associated with, authorised or approved by Prezzee, and that it is engaged in misleading and deceptive conduct in contravention of the Australian Consumer Law. Among the claims for final relief are orders with injunctions:

(1) restraining EPay from “supplying or selling, offering to supply or sell, or advertising or promoting for supply or sale, goods or services that are the same as, or of the same description as, or closely related to, the goods and services covered by the Prezzy Trade Marks (defined in paragraph 1 of the Concise Statement) under or by reference to the signs ‘Prezzy’, ‘Prezzy Card’, ‘Powered by Prezzy Card’ or ‘Giftzzy’ (or other any sign which is substantially identical with or deceptively similar to any of the Prezzee Trade Marks”; and

(2) requiring EPay to “take all reasonable steps to remove from circulation and destroy any products or marketing / advertising material bearing the signs ‘Prezzy’, ‘Prezzy Card’, ‘Powered by Prezzy Card’ and ‘Giftzzy’ in relation to goods or services that are the same as, or the same description as, or closely related to, the goods and services covered by the Prezzy Trade Marks”.

7 The injunctions sought by Prezzee reflect alternate allegations of infringement within the meaning of s 120 of the Trade Marks Act 1995 (Cth) (TMA), namely:

(1)    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.

Note 1: For registered trade mark see section 6.

Note 2: For deceptively similar see section 10.

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

(2)    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:

(a)    goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or

(b)    services that are closely related to registered goods; or

(c)    services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

(d)    goods that are closely related to registered services.

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

Note 1: For registered trade mark see section 6.

Note 2: For deceptively similar see section 10.

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

8 Significantly for present purposes, the elements of infringement under s 120(1) differ from the elements of an infringement under s 120(2).

9 Before the Court is Prezzee’s application for interlocutory injunctions in the same terms as the abovementioned claims for final interlocutory relief.  The application (made on the face of the originating application) was set down for hearing on 9 December 2025. At 4:00 am on that day, Prezzee transmitted to the Court (and copied to Epay) a Minute of Order seeking interlocutory relief in a revised form.  The first two orders sought on the Minute are as follows:

1.    Pending the hearing and determination of the proceeding, or unless the Court otherwise orders, the Respondent, whether by itself or by its servants or agents, is restrained from supplying or selling, offering to supply or sell, or advertising or promoting for supply or sale, or permitting any third party to supply or sell, goods or services that are the same as, or of the same description as, or closely related to, the goods and services covered by the Prezzee Trade Marks (defined in paragraph 1 of the Concise Statement) under or by reference to the signs ‘Prezzy’, ‘Prezzy Card’ or ‘Powered by Prezzy Card’.

2.    The Respondent is required, within 3 business days, to retrieve, cancel, disable or otherwise remove from circulation or sale any products or marketing / advertising material bearing the signs ‘Prezzy’, ‘Prezzy Card’ or ‘Powered by Prezzy Card’ in relation to goods or services that are the same as, or of the same description as, or closely related to, the goods and services covered by the Prezzee Trade Marks.

10 The late provision of the Minute introduces some factual questions that are not fully addressed on the affidavit material.  It will be necessary to consider whether relief in the revised terms should be granted having regard to the procedural history, and my acceptance that Epay was entitled to prepare for the hearing by reference to the claims for interlocutory relief in their original form as enlarged upon in the correspondence at the time that it was preparing its evidence.

11 In addition to the interlocutory injunctions, Prezzee seeks an order that Epay file and serve an affidavit disclosing to factual matters concerning the extent to which it has marketed and advertised the impugned gift cards, when it first commenced distributing them, the quantities of gift cards distributed, details of third parties within Australia who have sold them, the quantities sold and the steps taken to comply with the interlocutory injunctions.  That aspect of the application is not urgent.  I am not satisfied that it should be resolved today.

The criteria for an interlocutory injunction

12 On an application for an interlocutory injunction, the applicant must establish that there is a serious question to be tried with respect to the entitlement to final relief, and that the balance of convenience favours the grant of the injunction in the terms that are sought.

13 As Gummow and Hayne JJ explained in Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 (at [65]), the injunction applicant must show a “sufficient likelihood” of success to justify the preservation of the status quo pending trial.  The sufficiency of likelihood depends on the nature of the rights asserted and the practical consequences likely to follow from the order:  Beecham Group Limited v Bristol Laboratories Pty Ltd (1968) 118 CLR 618, Kitto, Taylor, Menzies and Owen JJ (at 622); Samsung Electronics Company Ltd v Apple Inc (2011) 217 FCR 238, Dowsett, Foster and Yates JJ (at [59]).  As I have earlier observed in Educational Broadcasters Adelaide Inc v Australian Broadcasting Corporation (2017) 123 IPR 216, it is in that respect that the criteria of “serious question to be tried” and “balance of convenience” interrelate, in the sense that an applicant’s likelihood of success must be considered against the nature of the relief sought.

14 In GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Limited [2013] FCAFC 102; 305 ALR 363, the Full Court (Bennett, Jagot and Griffiths JJ) summarised and reinforced those principles as follows (at [81]):

The principles guiding the exercise of the discretion were recently described in Samsung Electronics at [44]–[74].  The relevant principles may be summarised as follows:

(a)    the court’s power to grant injunctive relief under either s 122 of the Patents Act 1990 (Cth) or s 23 of the FCA Act is expressed in very general terms, but the power to grant interlocutory relief is limited by the purpose for which it is conferred;

(b)    it is relevant to take into account the specific statutory context in which interlocutory injunctive relief is sought;

(c)    where the merits and the question of balance of convenience are fairly evenly balanced, there will be no injustice in requiring the party seeking interlocutory injunctive relief to demonstrate good prospects of success before imposing almost certain prejudice on the other side;

(d)    where an interlocutory injunction is sought in respect of private rights, it is necessary to identify the legal or equitable rights which are to be determined at the trial and in respect of which the final relief is sought;

(e)    in a case such of this, involving an application for interlocutory injunctive relief based on an infringement allegation, an assessment needs to be made of the strength of the probability of that claim succeeding at trial so as to preserve the status quo;

(f)    in considering an application for an interlocutory injunction, the court must address itself to two main inquiries, namely whether the applicant has established a prima facie case in the sense explained in Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618; [1968] ALR 469 and where the balance of convenience lies;

(g)    the strength of the probability of ultimate success by the applicant at trial depends upon the nature of the rights asserted and the practical consequences likely to flow from the grant of the injunction which is sought.  The extent of the strength required will vary from case to case;

(h)    whether or not the applicant will suffer irreparable injury or harm for which damages will not be adequate compensation is one of the matters to be addressed in the court’s consideration of the balance of convenience and justice rather than as a distinct and antecedent consideration;

(i)    the court should assess and compare the prejudice and hardship likely to be suffered by the respondent, third persons and the public generally if an injunction is granted, with that which is likely to be suffered by the applicant if no injunction is granted; and

(j)    the question of whether there is a serious question or a prima facie case should not be considered in isolation from the balance of convenience because they involve related inquiries and the apparent strength of the parties’ substantive cases will often be an important consideration to be weighed in the balance.

15 The extent to which it is appropriate to examine and express a view about the merits of the substantive claims will depend on the circumstances of the case:  Australian Broadcasting Corporation v Lenah Game Meats Pty Limited (2001) 208 CLR 199, Gleeson CJ (at [18]).  As Weinberg J said in Mobileworld Operating Pty Ltd v Telstra Corporation Limited [2005] FCA 1365 (at [23]):

Sometimes, on an application for interlocutory relief, a court is sufficiently able, on the evidence before it, to reach a conclusion as to particular facts or matters in dispute.  However, it must be remembered that any such conclusion will be provisional, and by no means necessarily the same as that which is subsequently reached at the final hearing.  The degree to which a court is prepared to investigate disputes of fact depends on their difficulty and on the other circumstances in question, and particularly on the extent of urgency or prospective hardship involved:  ICF Spry, The Principles of Equitable Remedies (6th ed, 2001) (‘Spry’) at 466.

16 To the extent that I express findings of fact in the reasons that follow, they should be understood as being provisional in the sense that his Honour there described.

Uncontentious facts

17 The following facts and matters are drawn from the affidavits relied upon by the parties.  The narrative constitutes my findings for the limited purposes of the present application.

18 Mr Roger Smith is a Regional Managing Director for Epay and Epay New Zealand Limited (NZBN 9429036203420) (Epay NZ).  He described the businesses of those entities as including alternate payment processing products including the supply of retail gift cards, prepaid mobile and transit cards.  In late 2019 Epay NZ acquired a Visa gift card business known as “Prezzy Card” from Kiwi Bank Limited, a business that had been operating since 2006. The Prezzy Card business was at that time generating $35 million NZD annually.  A Prezzy Card can be purchased online from the Epay NZ website and high profile retailers in New Zealand.  As supplied and circulated in New Zealand, it bears the words “Prezzy Card” and takes the form of a “preloaded” Visa card.  When purchasing a Prezzy Card, a New Zealand customer is required to preload the card with a monetary amount.  After loading the card it can then be used for payment of goods and services with any supplier that accepts Visa including for online purchases.  The business for the supply of the Prezzy Card in New Zealand involves the use of the three trade marks registered in New Zealand each using the word “Prezzy” collectively in classes 9, 35 and 36.

19 In 2024 Mr Smith formed an intention to launch a preloaded cash card in Australia using the same Visa payment system.  In November 2024 Epay obtained registrations for three Australian trade marks, each being the word “Giftzzy” in classes 9, 16 and 35. In August 2025 Epay launched the “Giftzzy Card” in Australia in two formats: a physical card available for purchase at retail outlets and a virtual card, offered for purchase online at www.giftzzycard.com.au.  As a preloaded Visa card it operates in the same manner as the Prezzy Card in New Zealand.

20 In evidence is a physical Giftzzy Card as well as images of the card in its physical and online formats.  In its physical format it comes presented in packaging with the phrase “Giftzzy Card” featured prominently in the get up.  The same words are prominent on the card itself.  There appears a Visa logo in the bottom right portion of the card.  In the top right corner are the words “Powered by Prezzy Card”.  Mr Smith said the following about those words:

When the Giftzzy Card was launched it included the tagline ‘Powered by Prezzy Card’ in the corner in smaller and plainer font and positioned so that it did not distract from the prominent Giftzzy branding and bow.  By including this tagline it was my intention to draw a connection with the Giftzzy card and the longstanding and successful New Zealand Prezzy Card.  It was not my intention to attempting [sic] to trade off the reputation or brand of Prezzee or to have any connection or association at all with the applicant and its product, which I consider is very different.

21 Mr Smith deposed that since receiving a letter of demand from Prezzee on 30 September 2025, he authorised the removal of all references to “Powered by Prezzy Card” from all Giftzzy Card marketing materials and all virtual Giftzzy Cards.  He also ordered that any further production of physical Giftzzy Cards featuring that phrase be stopped.

22 On the evidence before me there have been 250,000 Giftzzy Cards bearing the phrase “Powered by Prezzy Card” made available for purchase by consumers in retail outlets.  The dates on which they were first made available are unknown but it is reasonable to assume that they were first circulated at or shortly after the marketing of the first launch in August 2025. When Mr Smith gave his first affidavit on 25 November 2025 there remained about 62,500 available for purchase from retail outlets.  As at 9 December 2025 there remained about 47,000 remaining for sale across 1,800 retail outlets.  That gives an indication (albeit crude) of the rate of their sale.

23 Mr Smith deposed that if Epay were ordered to retrieve the remaining physical gift cards it would be necessary for it to deploy its sales force, including employees and third parties, to physically attend upon the merchants and withdraw the cards from sale.  He deposed that the exercise would be incredibly expensive and time consuming given the number of merchants involved.  He also deposed that the process would be disruptive if not impossible to achieve.

24 Mr Stephen Annicchiarico is the solicitor on the record for Prezzee.  In late 2024 he was copied into email correspondence between Mr Smith and Prezzee’s Chief Executive Officer, Mr David Christie.  The emails referred to negotiations that had taken place between the two companies.  Mr Smith referred to a proposal that Epay and Prezzee cooperate globally with each other to enhance the product offerings of both companies. Mr Christie expressed disappointment at learning of Epay’s plans to introduce “store value cards” in Australia by reference to the word “Prezzy”.  Mr Christie continued:

As you would be aware, there was a previous attempt for ‘Prezzy’ to operate in Australia (in 2020), and at that time Prezzee was very clear that Prezzee would not tolerate any third-party operations under ‘Prezzy’ in Australia given the clear infringements to Prezzee’s intellectual property rights and risk of consumer deception.

Prezzee’s current position in  this regard remains unchanged, and Prezzee will continue to vigorously oppose any attempts to launch ‘Prezzy’ in Australia (especially given Prezzee’s reputation in Australia has continued to rapidly increase since 2020).

(original emphasis)

25 There is some further evidence of the 2020 events in the form of a letter of April 2021 in which Epay confirmed its awareness of a demand Prezzee had made in the previous year to Kiwi Bank Limited, alleging trade mark infringement and asserting that the Prezzy Card should not be purchasable or redeemable in Australia.

26 On 30 August 2024, Prezzee’s lawyers wrote to Epay (via Mr Smith) referring to “recent threats of expansion” involving the supply of store value cards, known as Prezzy Cards, in Australia.  The letter asserted that use of the word “Prezzy” in connection with cards in Australia would constitute a breach of Prezzee’s intellectual property rights, including the rights in the Prezzee trade marks, and that Prezzee would not tolerate that.

27 In evidence is correspondence passing between the lawyers for Prezzee and Epay, commencing with correspondence sent on Prezzee’s behalf on 30 September 2025.  The content of the correspondence need not be detailed here, other than to say that it records the alleged infringements and demands Epay’s responses to them.

28 As at 9 October 2025, a physical Giftzzy Card purchased from Epay’s Giftzzy website retained the phrase “Powered by Prezzy Card” on the packaging and on the top right corner of the card itself.  Social media posts promoting Giftzzy Card by reference to the phrase “Powered by Prezzy Card” also persisted at that time.  Social media posts using the phrase “Powered by Prezzy Card” in promotion with the Giftzzy Card remained online until the day of the hearing of the injunction application.  Counsel for Epay informed the Court that they are now removed, or in the process of being removed.

29 Mr Edward Joseph Piazza is the co-founder and non-executive director of Prezzee.

30 He deposed that Prezzee has “worked to build a substantial reputation and goodwill in Australia” in relation to the Prezzee trade marks, including by investing in their registration by selling and marketing its products for sale by reference to them.  He deposed that Prezzee is the fastest growing e-gift provider in Australia and that it has sold over 94 million e-gift cards to more than 7.2 million members through more than 1,400 stores globally and it has generated more than $4.3 billion in sales in the past 12 months.  It is unclear whether those sales are referable to products bearing the Prezzee trade marks in Australia alone. Mr Piazza expresses a belief that Epay’s conduct “poses a significant risk of irreparable harm to Prezzee, including loss and damage through injury to the commercial reputation and goodwill associated with the Prezzee Trade Marks, as well as injury to the reputation of Prezzee generally”.  He deposes to a belief that damages will not be an adequate remedy to address that harm if the interlocutory injunctions were not made.

31 With respect to both the balance of convenience and the questions to be tried, the primary focus of the parties’ arguments was upon the remaining physical Giftzzy Cards bearing the phrase “Powered by Prezzy Card” on their face and on their packaging that have not yet been loaded with money by consumers, being the 47,000 or so physical gift cards remaining in circulation.

32 In his second affidavit, Mr Smith deposed to Epay’s receipt of a letter from Prezzee dated 24 November 2025.  Among other things, that letter advised of Prezzee’s intention to seek the interlocutory relief sought on the originating application, including an order that reasonable steps be taken to remove the cards from sale and issue a notice to Epay’s retail on-sellers.  Prezzee invited Epay to identify any reason why it would resist that step being taken.  The notice Prezzee seeks to have sent to the retailers is in the following terms:

EPAY AUSTRALIA PTY LTD – GIFTZZY CARDS

NOTICE OF COURT ORDER

Dear retailer,

Our records indicate that you are currently in possession of Giftzzy gift cards which bear the word ‘Prezzy’ (Giftzzy Cards).  Epay Australia Pty Ltd is the manufacturer and distributor of all Giftzzy Cards.

On 10 December 2025, Epay Australia Pty Ltd was ordered by the Federal Court of Australia to take all reasonable steps to remove from circulation any products or marketing / advertising material bearing the signs ‘Prezzy’, ‘Prezzy Card’ or ‘Powered by Prezzy Card’, including the Giftzzy Cards in your possession.  A copy of that order in enclosed.

Consistent with those orders, Epay Australia hereby demands that you, immediately:

1.    cease selling all Giftzzy Cards in your possession;

2.    remove all Giftzzy Cards and any associated marketing materials from your store front or consumer facing areas;

3.    make a record of how many Giftzzy Cards are in your possession;

4.    package all Giftzzy Cards and any associated marketing materials into boxes, sealed for collection; and

5.    confirm in writing by email to [insert] that the above steps have been taken, including by advising us as to the number of Giftzzy Cards in your possession.

In the coming weeks Epay Australia expects to have an employee or agent attend your store to collect the packaged Giftzzy Cards.

Date: [insert]

…………………..

Roger Smith Epay Australia Pty Ltd

33 Mr Smith’s second affidavit addresses the reasons why an order requiring the notice should not be made.  His evidence is to the effect that:

(1) Epay supplies payment systems to customers.

(2) The physical Giftzzy Card is sold to consumers via retailers comprising “principally small individually-owned businesses”, generally in the nature of local convenience stores.  In addition, the Giftzzy Card is sold by larger retailers, such as Ampol and BP service stations and some IGA supermarkets nationwide, including in regional areas.  There are approximately 1,800 retailers in total.

(3) As part of its gift card operations, Epay provides retailers with a “terminal”, a hardware device that must be used to load the physical Giftzzy Card with a monetary value.

(4) A card that is not activated through the terminal has no financial value as a gift card or otherwise in and of itself.  Whilst there are some thefts of the cards from retail premises, (a loss referred to as “slippage”), the thief will be in possession of a thing of no value.

(5) Epay collects physical addresses and email addresses from most retailers as part of its contractual arrangements with them.  However, it does not have an email database and does not communicate with retailers using their email addresses.  Rather, communication is through a stock ordering system which receives the requests from retailers for additional Giftzzy Cards.  Mr Smith did not say how invoices were sent to retailers.

(6) The terminals have a limited function by which communications can be sent to retailers referred to as a “terminal blast”. The limitation is that a message sent by way of terminal blast has a 1,000 character limit and is sent to all terminals simultaneously.  A short terminal blast message was sent on the first day of offering the Giftzzy Card, but the message sending function has not been used by Epay since.  As I understand the evidence, it is also the case that if a terminal blast message is to be sent, it is not stored on the screen but can be removed and is then no longer then accessible.

34 Mr Smith has not taken the step of authorising the sending of a terminal blast message to all retailers because he considers that sending a message directing them to remove unsold Giftzzy Cards from sale would be “incredibly damaging or potentially fatal to the ongoing Giftzzy Card business” given its infancy and its nature. He asserts that a terminal blast message requiring the cards to be removed from sale would be disruptive to the retailers’ business operations in the lead up to Christmas and that retailers would choose to no longer stock Giftzzy Cards at all.  He emphasised that the “Powered by Prezzy Card” tagline is very small and “unlikely to be noticed by consumers” when purchasing the cards.  In addition, he expressed the view (based on his experience in the industry) that terminal blast messages are often not read or understood, as once they are seen they are removed from the terminal screen or simply ignored.

35 Mr Smith expressed the view that Epay “does not and cannot in my view communicate with individual retailers in any other practical way”.

36 Mr Smith’s affidavits contain no evidence as to whether (and, if so, how) Epay may prevent Giftzzy Cards presently offered for sale by retailers from being activated, whether by reference to single cards or by reference to all cards simultaneously.  The absence of evidence is not such as to support a positive finding that there is no reasonable step that Epay can take to prevent the electronic enablement of the cards.  As I will explain shortly, resolution of that factual question may give rise to procedural unfairness.

Issues to be tried

37 Integral to the infringement claim is the allegation that the word “Prezzy” as it appears on and in relation to the Giftzzy Card product is used as a trade mark, that is, as an indication of trade origin:  TMA, s 17.  Counsel for Epay alluded, without enthusiasm, to the existence of an argument that the word “Prezzy” was not used as a trade mark.  On the material before me, it is difficult to see how such an argument might succeed.  Whether a sign has been used as a trade mark is an objective inquiry.  However, in an appropriate case, the subjective intention of a trader may legitimately inform that inquiry:  Stone & Wood Group Pty Ltd v Intellectual Pty Development Corporation Pty Ltd [2018] FCAFC 29; 357 ALR 15, Allsop CJ, Nicholas and Katzmann JJ (at [103]).  On Mr Smith’s own testimony, the phrase “Powered by Prezzy Card” was intended to create an association in the mind of the consumer between the Giftzzy Card and Prezzy – in his own mind they were intended to be used as a trade mark, albeit a mark that is subsidiary in prominence to the word “Giftzzy”.  Considered in its proper context, use of the phrase “Powered by Prezzy Card” is a trade mark use.

38 For the purposes of the present application, Epay did not advance an argument that the word “Prezzy” was not deceptively similar to the word “Prezzee”.  Nor is it suggested that Epay has a reputation in Australia in relation to the word “Prezzy”.

39 I am satisfied that there is a serious question to be tried, proceeding from the uncontroversial fact that Epay offers a physical Giftzzy Card whereas Prezzee’s products are virtual in their format. As I understand it, the defence foreshadowed by Epay has at least three aspects to it arising from that difference.

40 First, it is submitted that on the classification descriptions in respect of which the Prezzee trade marks are registered do not encapsulate goods or services in the nature of a physical gift card (as opposed to a virtual gift card).  There is apparent merit in that submission.  It is illustrated by the difference in the description of goods and services in respect of which the Prezzee trade marks and the Giftzzy trade marks are registered in class 9.

41 For the Prezzee trade marks, the description is as follows:

Class 9:  Computer software and application software; Computer software and application software for e-commerce platforms that accommodate multiple types of payment and debt transactions in an integrated mobile phone, smart phone, mobile device, tablet computer, personal computer, and web based environment, including for buying, displaying, exchanging, redeeming, selling, sending, storing and transferring electronic gift cards, coupons, tokens, vouchers and other stored value cards and virtual currencies, as well as for uploading information from physical gift cards, coupons, tokens, vouchers and stored value cards; Computer software and application software for digital wallets, including for storing information and credentials to access gift cards, coupons, tokens, vouchers and other stored value cards and virtual currencies, as well as to obtain loyalty or monetary rewards; Computer software and application software for integration of electronically stored gift cards, coupons, tokens, vouchers and other stored value cards and virtual currencies with digital wallets; Computer software and application software for secure data storage, encryption, retrieval and transmission of account, personal and other information and credentials; Computer software and application software for analysing the use of gift cards, coupons, tokens, vouchers and other stored value cards and virtual currencies; Computer software and application software for payment systems, including payments via mobile devices; Cards, gift cards, coupons, tokens, vouchers and other stored value cards in electronic form; Databases

42 For the Giftzzy trade marks, the description is as follows:

Class 9: encoded gift cards; magnetically encoded gift cards; gift tokens being encoded gift cards; gift certificates being encoded gift cards; encoded gift vouchers; recorded cards being encoded gift cards; smart cards; microchip cards; recorded tokens being encoded gift cards; recorded cards being magnetically encoded gift cards; magnetically encoded gift vouchers; gift certificates being magnetically encoded gift cards; gift tokens being magnetically encoded gift cards; encoded loyalty cards; encoded debit cards; encoded cards; encoded reward cards; encoded credit cards

43 EPay’s case is that the description defining the Prezzee registration is limited to computer software and application software relating to gift cards, but not physical gift cards of the kind that might be captured by its own registration.

44 Secondly, Epay submits that if the classifications in respect of which the Prezzee trade marks are registered do capture goods and services in the nature of physical gift cards, the Prezzee trade marks are liable to be cancelled for non-use in connection with that field of activity.  I pause here to observe that if there was to be a cancellation by reference to some parts of the class description, that would not mean that Epay has not used a trade mark in respect of goods or services of a similar description within the meaning of s 120(2).

45 Third, Epay will submit at trial that the infringement inquiry in relation to its conduct in the distribution and sale of physical gift cards would arise under, and can only arise under s 120(2) of the TMA.  Accordingly it will submit that it will be necessary to have regard to the trade context in which the phrase “Powered by Prezzy card” had in fact been used.

46 Epay emphasises the relative lack of prominence of the word “Prezzy” on and in relation to the Giftzzy Card such that, it is said, consumers would not be likely to be confused or deceived.

47 Epay submitted that there is no evidence of actual confusion among consumers with respect to the trade origin of the Giftzzy Card.  However, proof of actual confusion is not necessary in order for an infringement to be established.  Moreover, to the extent that both proof of actual confusion is informative of the question that arises under s 120(2), the absence of evidence of actual confusion is of little moment on an interlocutory application heard in close proximity to the commencement of a proceeding.

48 Next, Epay submitted that consumers would be unlikely to notice the phrase “Powered by Prezzy Card” because other features of the packaging and the card itself were so dominant.  Counsel went so far as to say that consumers may not notice the words at all. For present purposes, I do not accept that aspect of the submission.  It was Mr Smith’s intention that the words be noticed and that it may be fairly inferred that he has achieved that objective by including them on the packaging and on the face of the card as a badge of origin use.  On my first view of the product in question, I am unable to find that a consumer would not notice the words or give some meaning to them.  However, I do accept that there is a serious question to be tried, namely whether Epay can establish, for the purposes of the provision in s 120(2) of the TMA, that using the word “Prezzy” as it has done in fact is not likely to deceive or cause confusion.

49 I do not accept Epay’s submission that Prezzee’s infringement action should be characterised as “weak” by reference to those or other matters. Nor do I accept the submission that the injunctions sought are disproportionate having regard to the relative size and prominence of the word “Prezzy” as it appears on its products.

50 For the purposes of the issues arising under s 120(2), I do not accept Epay’s submission that there is no evidence that Prezzee has established a reputation by actual use of the Prezzee trade marks in connection with classes to which those registrations relate.  Reputation may be inferred by the description of activities undertaken by reference to Prezzee trade marks as described by Mr Piazza, sufficient to support an injunction on the basis that there is a serious question to be tried on that discrete aspect of Prezzee’s case.

51 Moreover, for the purposes of s 120(2), the onus would be on Epay to establish the proviso such that the quality of evidence adduced by Prezzee at this stage as to its reputation on its trade mark infringement action is, as I have said in connection with other aspects of the case, of little moment.

52 For Prezze it was submitted that the steps taken by Epay in response to its complaints have evidentiary force and that they must be taken to communicate an acceptance or admission that the ceased conduct contravened its intellectual property rights.  I accept that statements made in an affidavit may have evidentiary force as admissions to the extent that they are contrary to Epay’s interests in defending the claim of trade mark infringement.  However, much will depend on the content of the statement and the context in which it is made. At an early interlocutory stage of the proceeding I do not consider that Epay’s conduct in doing such things as removing virtual Giftzzy Cards from sale or pulling down its digital marketing materials employing the word “Prezzy” necessarily constitutes an admission of infringement of Prezzee trade marks or other intellectual property rights.  A party to litigation may make concessions or compromises for reasons other than an acceptance of the correctness of the opposing party’s position on questions of fact or law.  It may simply be an indication of the party acting in a commercial way so as to choose its battles in the litigation.

53 As the Full Court said in GlaxoSmithKline, where questions of merits and the balance of convenience are fairly even, there will be no injustice in requiring the parties seeking interlocutory injunctive relief to demonstrate good prospects of success before imposing almost certain prejudice on the other side, so that in certain cases, an assessment will need to be made of the strength of the probability that the claim will succeed at trial before an injunction will be granted.  To the extent that I am required to express a view about the relative merits of the parties’ cases, I consider it sufficient to say that Prezzee has reasonable prospects of success.  The likelihood of success is of a sufficient degree to justify relief of the kind that will be ordered.

Balance of convenience

54 The second of the two injunctions sought on the face of the originating application would require Epay to “take all reasonable steps to remove from circulation any products or marketing / advertising material bearing the signs “Prezzy”, “Prezzy Card”, “Powered by Prezzy Card”, in relation to goods or services that are the same as, or of the same description as, or closely related to, the goods and services covered by the Prezzee Trade Marks”.  The order does not in terms set out the steps that fall within the description.

55 As a matter of discretion, I would not make an order cast in terms requiring a party to take “all reasonable steps”.  An injunction has penal consequences. It should be cast in terms that leave the affective party in no doubt as to the act that must be done or refrained from, so that compliance or non-compliance can be monitored without the need for argument about the meaning or practical effect of the order, so deferring those arguments to a hearing in which punishment for contempt is sought.  Having said that, I am satisfied that Epay has turned its mind to the steps that could be taken to remove the physical cards from circulation and it addressed those matters in evidence to support its case on where the balance of convenience might lie.  By the letter of 24 November 2025, Epay was also fairly put on notice of the contention that it should remove the Giftzzy Cards from circulation by the mechanism of a message to retailers and Epay has addressed that contention in its submissions and its evidence. When considering where the balance of convenience might lie, I am satisfied that the prospect of an order requiring a message to be sent to retailers was fairly within their contemplation at the time of the hearing as one of the steps that could be taken to achieve the end of removing the Giftzzy Cards from circulation, as contemplated by proposed interlocutory order 2 in the originating application.

56 The Minute provided on the morning of the hearing is one that would require Epay to, “within 3 business days, to retrieve, cancel, disable or otherwise remove from circulation or sale any products or marketing / advertising material bearing the signs ‘Prezzy’, ‘Prezzy Card’ or ‘Powered by Prezzy Card’ in relation to goods or services that are the same as, or of the same description, as or closely related to, the goods and services covered by the Prezzee Trade Marks”.  Quite apart from the failure to give reasonable notice of the intention to seek an order in those terms, on the evidence before me I am not satisfied that the objective of physically retrieving those Giftzzy Cards that have not been sold is one that could be achieved within three business days.  I confine that finding to the act of physically retrieving them from the retail stores.

57 The phrase, “cancel, disable or otherwise remove from circulation", is new.  I accept that a message to retailers is a means by which the Giftzzy Cards can be removed from circulation or sale.

58 I am not satisfied that Epay has been given adequate notice of a proposal that there be steps taken to “cancel” or “disable” the Giftzzy Cards that have not yet been activated at the point-of-sale with the consumer. In my view, that fairly explains why Mr Smith has not addressed in his affidavit evidence Epay’s capacity to cancel or disable the cards by electronic means through the control of the terminals.

59 I consider that the potential for Epay to have the ability to prevent the enablement or activation of the cards through the terminal by more convenient or faster means is something that could have been raised and foreshadowed by a Minute of Order at a much earlier time so that the evidence could address it more completely.  I therefore confine my analysis of where the balance of convenience lies by reference to a proposed order by which Epay would be required to send a message to retailers directing them not to continue offering the cards for sale. That is a step that could be taken toward the removal of the cards from circulation.  I will also consider the application for an injunction compelling the physical retrieval of the cards following their withdrawal from sale by the retailers.  Withdrawing them from sale or requiring a retailer not to offer them for sale would have the practical effect that the retailer would remove them from display.

60 Each of the parties submitted that irreparable harm would be suffered should an injunction be ordered, or not ordered, as the case may be.

61 In considering Prezzee’s submission on that question I place significant weight on the nature of a right sought to be protected and the final injunction that might be made should it be successful in establishing an infringement of one of the Prezzee trade marks.  They include the right of exclusive use, including the exclusive right to licence and exploit the Prezzee trade marks.

62 It is true that in assessing an award of damages for infringement the Court may consider an amount that might have been paid by way of a royalty had the infringing party negotiated a licence to do the otherwise infringing act. However, in my view that is not a complete answer to Prezzee’s submission concerning the alleged irreparable harm.  If infringement be established, the right interfered with is the right to exploit the Prezzee trade marks as Prezzee thinks fit.  That is the relevant status quo sought to be protected in relation to the cards remaining in circulation.  It is to be given very significant weight in the present case because of the evidence of historical dealings between the parties. That evidence shows that Epay expressly sought to enter into some kind of commercial partnership with Prezzee.  Its overtures were given short shrift and it was informed that infringement of the Prezzee trade marks would not be tolerated.  Accordingly, whilst I considered that an award of damages goes some way to addressing the harm, for the purposes of an injunction the nature of the right (and hence the nature of the harm) weigh heavily in favour of the grant of injunctive relief at the interlocutory stage.

63 On the other hand, if infringement were not established at trial, I am satisfied that the grant of the injunction at the early stages may be damaging to Giftzzy’s reputation.  However, the extent and duration of that anticipated damage is not demonstrated on the evidence, at least not to such an extent that it would cause me not to grant the injunctive relief.

64 For example, the evidence does not demonstrate that Giftzzy could not distribute to the retailers large numbers of replacement physical cards at short notice.  The pace at which replacement cards could be produced is a subject matter within Epay’s knowledge and yet it is not disclosed.  Second, to the extent that it is said that the harm to reputation might be occasioned in part by disruption to the business of retailers in such close proximity to Christmas, I place less weight on that circumstance than might otherwise be the case because the evidence does not establish when Epay first put physical cards into the hands of retailers.  Epay has not answered queries asked of it by Prezzee as to whether or not it continued to put into the market the Giftzzy cards at times when this proceeding was on foot, or after the articulation of Prezzee’s case in the letter of 30 September 2025.

65 In addition, the evidence does not establish that retailers would be so greatly inconvenienced by ceasing to offer the gift cards for sale so as to support an inference that Epay’s reputation vis-à-vis those retailers would be irreparably harmed.

66 That finding is informed by the size of the card.  I infer that withdrawing cards from being offered for sale would simply mean removing the cards from display.  They are not large in size and I do not consider that holding the cards in the possession of the retailers would cause inconvenience, given that it is anticipated that they will be collected or retrieved in due course by Epay or its agents.

67 Apart from reputational harm, I have regard to the inconvenience and expense that might be occasioned by Epay itself in complying with an order.  To that end, I have formed the view that the order should be cast in terms that require a message to be sent to retailers informing them of the existence of an order requiring that physical gift cards not be offered for sale.  A requirement that they not be offered for sale necessarily includes a requirement that they not be displayed within the retail premises in such a way that would invite a customer to consider purchasing one, and that the retailer not process any request from a customer to load a monetary amount on to any physical Giftzzy Card remaining in circulation.  The notification should also request the retailer to hold unsold cards in their possession pending collection by Epay.

68 I have regard to the evidence of Mr Smith with respect to the limitations of a terminal blast, including the character limitations.  With respect to the mode of communication, I am not satisfied that the only reasonable or practicable means by which Epay may send a communication to the retailers is by way of a terminal blast message.  That part of Mr Smith’s affidavit evidence was expressed in terms of a personal view, and I am not bound to agree with it.

69 I have had regard to the nature and size of Epay’s operations more generally.  To the extent that it does not presently have an existing database of email addresses for the retailers, as a matter of commercial commonsense, I am not satisfied that a list of email addresses to facilitate the efficient distribution of messages to all retailers could not be readily compiled.  I am reinforced in that finding by the circumstance that Epay invoices the smaller retailers twice weekly.  It seems to me that if Epay has the means to send an electronic communication requiring the payment of money, it also has the means of sending an electronic communication to retailers, requiring that they cease offering the cards for sale.

ORDERS

70 Following the delivery of oral reasons, the parties were heard as to the form of the orders.  The orders have subsequently been varied with the consent of the parties.

Associate:

Dated:    10 December 2025