Charles Worthington takes away hair product mark

Australia

In Charles Worthington Hair & Beauty Company Limited v International Hair Products Pty Ltd, the Federal Court of Australia has determined that International Hair is not the owner of the registered trademark TAKE AWAYS. Finding that Charles Worthington had used the mark on the relevant goods before International Hair filed its application, the court ruled that Charles Worthington should be the registered owner of the TAKE AWAYS mark.

Charles Worthington applied to register 'Take Aways' as a trademark for hair care products in March 2002. International Hair filed an opposition on the grounds of its mark TAKE AWAYS, registered in June 2001 for the same goods. It also threatened to start a court action for trademark infringement. Charles Worthington brought an action requesting that:

  • International Hair remove its opposition to the registration;

  • International Hair's registration be cancelled in view of Charles Worthington's use of the TAKE AWAYS mark prior to International Hair's registration in June 2001; and

  • International Hair pay damages under Section 129(2) of the Trademarks Act 1995 (which covers groundless threats of proceedings) to recover the costs sustained as a result of International Hair's conduct.

The court ruled in favour of Charles Worthington, restraining International Hair from threatening Charles Worthington with groundless legal action. However, as International Hair neither contested the proceeding nor submitted evidence, the court decided not to award costs on an indemnity basis. Instead, it ordered International Hair to pay Charles Worthington costs to be either agreed by the parties or imposed.

Lisa Ritson and Melinda Upton, Blake Dawson Waldron, Sydney

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