In the recent case of Insight Radiology Pty Ltd v
Insight Clinical Imaging Pty Ltd  FCA 1406, the Australian
Federal Court considered a dispute in respect of two logo marks
that include the word "insight":
The facts of the case are as follows: Both parties are in the
business of providing medical imaging services. Insight Clinical
Imaging Pty Ltd ("ICI") has been operating in Western
Australia since 2008 and filed a trade mark application for the
"insight Clinical Imaging" logo mark depicted above
("the ICI logo mark") in October 2012. This application
was accepted in December 2012 and proceeded to registration.
Insight Radiology Pty Ltd ("IR") commenced using the
"insight radiology" logo mark depicted above ("the
IR logo mark") in New South Wales in 2012. IR's sole
director, Mr Pham, filed a trade mark application for the IR logo
mark in his own personal name in December 2011 and Mr Pham then
assigned the application to IR (i.e. the company) in July 2013. The
IR trade mark application was opposed by ICI.
In summary, ICI opposed IR's trade mark application on
various grounds as well as claiming that the use of the IR logo
constituted trade mark infringement, misleading/deceptive conduct
and passing off. IR cross-claimed to cancel ICI's trade mark
ICI contended as part of its opposition that Mr Pham was not the
true owner of the IR logo mark because the evidence pointed to the
company, IR, being the correct owner at the time of filing of the
application. The evidence showed that there was never a licensing
arrangement entered into between Mr Pham and IR authorising IR to
use the IR logo. IR paid for the creation of the IR logo and
commenced use of the IR logo and name in 2012. ICI also contended
that the assignment from Mr Pham to IR was ineffective because it
was made without consideration and that Mr Pham, in any event, had
no rights of ownership to assign. The Court held, however, that
although Mr Pham did not appear to be the correct owner at the time
of filing, IR became the owner via the assignment. The
Court was satisfied that the assignment was properly recorded from
Mr Pham to IR as there was a document evidencing the intention to
transfer the application, a clear identification of the application
and, most importantly, the transfer of ownership was effected to
the correct owner when the application was still
Although ICI was unsuccessful in attacking the validity of
IR's trade mark application on the basis of the ownership
issues, the decision was ultimately in ICI's favour as the
Court held that ICI had established a reputation for the ICI marks
as at the filing date of IR's application and, because of that
reputation, the use of the IR logo by IR would likely cause
deception or confusion. IR had argued that ICI's reputation
should be limited to Western Australia; however, the Court
considered that ICI had established a sufficient reputation so as
to successfully oppose IR's trade mark application on this
With respect to ICI's trade mark infringement claim, the
Court held that IR had infringed ICI's logo and IR failed to
establish that it was entitled to the statutory defences sought. In
particular, IR unsuccessfully argued that it should have a defence
to the trade mark infringement claim on the basis that it had
adopted the IR trade mark in good faith without knowledge of ICI.
The Court rejected IR's submissions finding that IR was not
entitled to claim that use of the IR mark was in good faith given
that IR had not conducted proper and diligent searches to
check whether the name "Insight Radiology" was available
Finally, the Court also held that IR's conduct constituted
misleading/deceptive conduct as well as passing off.
Lesson: Prior to adopting a new trade mark, it is important to
carry out reasonably comprehensive searches to check whether any
other parties are already using a similar trade mark. Searches of
the Trade Marks Register should be conducted as well as general
searches of the internet, businesses directories etc. Then, when
filing trade mark applications, it is important to ensure that the
correct entity is listed as the owner to avoid any ownership
challenge by third parties in the future.
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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