Halal Certification Authority Pty Limited v Scadilone Pty Limited [2014] FCA 6

2014-06-26 14:50:47

In 2000 the full court of the Federal Court reaffirmed that the crucial question in a claim for trade mark infringement is whether the manner of use of the mark by the respondent is use as a trade mark. See also  E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 at [41] and [42].          

 Halal  Certification Authority Pty Limited v Scadilone Pty Limited [2014] FCA 614 was concerned with the alleged infringement of a registered trade mark consisting of a form of Halal certification for , inter alia, issuing halal certifications to business.  Such certification means that that the meat offered has been slaughtered in accordance with the relevant Islamic rites.  The mark was not registered as a certification mark but as an ordinary trade mark. Both respondents (butchers) had displayed this certificate on their premises. They had no authorization to do so.

The infringement issue was simply dealt with by the court by reference to s.120(c) of the Trade Marks Act, the court finding that the mark had been used in relation to kebabs and that they are goods closely related to the registered services. The judgement contains no discussion of the pivotal issue in a trade mark infringement case, was the use by the respondent a trade mark use!  Since the content of the trade mark was really only indicative of compliance with certain rites it is rather difficult to see how it could have been acting as a badge of origin when used by the respondents: Koninklijke at 48 IPR 257 at 263 – 264 where the distinction was demonstrated by reference to the Edward Young case (picture of a bullock cart ladden with large a large barrel).  The applicant was awarded $91,015 against the first respondent as damages for trade mark infringement.