Halal Certification Authority P/L v Scadilone P/L
 FC 614
Misuse of certification trade mark
First award of "flagrant infringement" additional
damages under section 126(2) of the Trade Marks Act 1995 for
HCA owned a trade mark used to certify that food had been
prepared in accordance with halal (Islamic) requirements, for which
it charged authorised users a licence fee to use and display the
Quality Kebab Wholesalers Pty Ltd (QKW) supplies meat products
to various retail outlets including S and White Heaven Pty Ltd.
They sought QKW's assurance that the products complied with
Without authorisation from HCA (including payment of applicable
licence fees), QKW copied and provided certificates bearing
HCA's mark to S and White Heaven, who displayed the
certificates in their stores.
HCA took action against QKW, S and White Heaven alleging trade
mark infringement and breaches of the Australian Consumer Law
seeking damages, injunction and other orders.
COURT DECISION AND REASONING
Held: QKW and the outlets were infringing the trade mark by
using it without HCA's authorisation. An injunction to restrain
further unauthorised use by QKW was granted.
QKW also infringed the Australian Consumer Law including by
falsely representing that it had a licence from HCA, with the
managing director of QKW knowingly involved in the
No compensatory damages based on HCA trade mark licence fees
were awarded as there was no evidence that QKW or the outlets would
have acquired a licence from HCA to use its mark if required to pay
the fee. No reputational damages were awarded to HCA due to a lack
of proof of damage.
Significant additional damages of $91,000 were awarded against
QKW due to its flagrant infringement and conduct calculated on the
notional licence fees payable to HCA for the relevant period plus a
50% uplift. Additional damages are intended to perform a deterrent
function rather than a compensatory function.
QKW was ordered to undertake corrective advertising in 2 widely
circulating Islamic newspapers to advise that it had not been
certified by HCA.
Only $10 nominal damages were awarded against H and White Heaven
given their lack of knowledge.
Seeking licence based compensatory damages requires proof that
the infringer would have taken a licence.
Significant additional damages may be available even if actual
damage cannot be quantified.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Australian IP Firm of the Year 2013.
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