Ron beats John in CRAZY mark duel

Australia

In Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited, the Full Federal Court has overturned a trial judge's ruling that the word mark CRAZY RON'S infringed a CRAZY JOHN device mark. The court also noted that although the judge had correctly found that the mark infringed a CRAZY JOHN'S word mark, the latter mark was invalid and therefore no infringement had occurred.

In 1995 Mobileworld Communications Pty Limited, part of the Crazy John group of businesses, registered a CRAZY JOHN device mark for telecommunication services. The mark featured the words 'Crazy John' and an image of a man holding a mobile phone seated on a globe or ball. It also registered a CRAZY JOHN'S word mark in 1999. Mobileworld filed a trademark infringement complaint with the Federal Court following Crazy Ron's Communication Pty Limited's adoption and use of a CRAZY RON'S word mark for the same type of services.

The trial judge held that the use of the CRAZY RON'S mark was an infringement of both Mobileworld's device and word mark registrations. On appeal, the Full Federal Court overturned the trial judge's decision in relation to the device mark but upheld the word mark finding.

The full court found that while the words 'Crazy John' and 'Crazy Ron's' were very similar, the words 'Crazy John' were not a significant component of Mobileworld's device mark registration. To enforce the trademark registration against Crazy Ron's, Mobileworld had to prove that the impression created by its mark as a whole was sufficiently similar to the words 'Crazy Ron's'. Mobileworld, said the court, had failed in this task.

Things were different in relation to the CRAZY JOHN'S word mark. The court agreed with the trial judge that this mark was sufficiently similar to the CRAZY RON'S mark and that CRAZY RON'S was therefore infringing. However, for technical reasons relating to how the CRAZY JOHN'S mark had been applied for, the court found that it was invalidly registered and ordered that it be removed from the register. Thus, no infringement of that mark had occurred

The Federal Court also considered arguments relating to allegations of misleading and deceptive conduct and passing off, and injunctions were ordered against Crazy Ron's based on these grounds.

Craig Smith, Freehills, Sydney

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