In previous proceedings, Ms Karlsson sought damages in the Supreme Court of NSW in relation to the alleged infringement of the KNOW MORE. DO MORE trade mark by Griffith University. The Court dismissed the action (which also included allegations of theft and misleading conduct), and Ms Karlsson sought leave to appeal which was dismissed by the Court of Appeal and the High Court.
In 2021, fresh proceedings were brought by Ms Karlsson against Griffith University based on the same allegations as those raised in the Supreme Court, including seeking similar relief. Two interlocutory applications were filed, including an application for default judgment, and the Respondent filed an application for summary judgement.
The Federal Court found that Griffith University were entitled to a complete defence against the infringement allegation on the basis that they had continually used their unregistered trade mark from a time before registration of the registered trade mark owned by Ms Karlsson in accordance with section 124 of the Trade Marks Act 1995 (Cth).3 On this basis, the Applicant’s application for default judgment was dismissed, and the Respondent’s application for summary judgement was allowed.
This decision clearly demonstrates that section 124 of the Trade Marks Act 1995 (Cth)4 provides owners of unregistered trade mark with a defence against infringement of a deceptively similar or substantially identical registered trade mark, provided their use of the trade mark has been continuous from a date that predates the registration date of the registered trade mark.
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1 Karlsson v Griffith University [2022] FCA 591.
2 Trade Marks Act 1995 (Cth) s 124.
3 Ibid.
4 Ibid.
