Carefully consider your trade mark rights 2 min read
In Halal Certification Authority v Flujo Sanguineo Holdings, the court dismissed Halal Certification Authority Pty Ltd's (HCA) claims of trade mark infringement, misleading or deceptive conduct and passing off against the Flujo Group of companies relating to the use of a halal-related trade mark, and ordered that its registration for that mark be cancelled. We discuss this fascinating decision in more detail below.
- To be liable for trade mark infringement, the alleged infringer must use your trade mark 'as a trade mark'. A key factor is how the relevant mark has been used in comparison to any other branding or logos which appear on, or are used in connection with, the relevant goods.
- In this case, the requirement that the trade mark be 'used as a trade mark' was not met, with the court citing, in particular, the 'small size and relatively obscure placement' of the trade mark on the product packaging, contrasted with the 'large and dominant size' of the product's core branding.
- Businesses seeking to enforce their trade mark rights should tread carefully, to ensure they are not exposed to a cross-claim for cancellation.
- An appeal has been filed, so interested parties should stay tuned for further updates.
Marketing teams and in-house counsel
HCA is a private company that provides halal certification in relation to halal goods and related services. HCA held a standard trade mark registration for the logo depicted below.
In 2020, HCA brought proceedings against various entities within the 'Flujo Group' of companies, alleging that its trade mark had been used on various 'Natvia' and 'Raw Earth' food products without its permission. HCA brought claims of trade mark infringement, misleading or deceptive conduct and passing off. The Flujo Group in turn sought cancellation of HCA's trade mark registration.
The Federal Court dismissed HCA's claims and ordered that HCA's trade mark registration be cancelled. HCA has appealed the primary decision.
Trade mark infringement
The court determined that the Flujo Group had not used the trade mark on its products as a trade mark, and as such, it had not infringed HCA's rights.
There is a tension between the court's reasons for this finding and the general concept of using trade marks for certification purposes (as opposed to product branding). Further, the court's comments appear to impute a significant degree of ignorance to the consumer in their interpretation of product packaging.
In particular, the court noted the 'small display size and relatively obscure placement on the packaging' of the trade mark as against the 'large and dominant size' of the 'Natvia' and 'Raw Earth' trade marks on the products. The court also observed 'most consumers or other casual readers would probably not even notice the logo was there'.
The court also ordered that HCA's trade mark registration be cancelled because it was likely to deceive or cause confusion. Key to this finding was the use of the word 'authority' within the trade mark. HCA argued that the word was not a reference to it having any official status, but rather, 'expressed a status as to knowledge'. The court was not satisfied, ultimately finding that if a person were to read the words 'Halal Certification Authority Australia' presented 'in the form of an official stamp or seal', they would 'most likely be left with the impression that there was some official, authoritative body that was saying that the goods were in fact halal, as opposed to the specific certification of a private company' – which was untrue. The court also held that the trade mark 'was not capable of distinguishing the service provided by HCA from a like service provided by anyone else'.
- To the extent that your business uses any trade mark to certify that its products meet particular standards or criteria, ensure that you have permission to do so from the owner of the relevant trade mark and that all necessary criteria have been met.
- When seeking to enforce your trade mark rights, carefully consider whether in doing so, you may be exposed to a claim for cancellation, and seek expert advice as needed.