‘Lean in’ to IP disputes, don’t trip on your own fancy footwork
Trink Tank tried to pre-empt a claim for trade mark infringement and ended up being out-maneuvered and it cost them a lot more money. Take some time to think through your strategy and ‘lean in’ to the dispute to resolve it. (Do we have a good case or not, and if not, how can we settle this in a reasonable way.) It’s often a bad idea to create a separate dispute that will complicate things and may blow up in your face.
In a typical start to a trade mark dispute, Bickford and Trink Tank’s lawyers exchanged correspondence about trade mark infringement by Trink Tank of Bickford’s ‘Spritz’ mark. Bickford threatened the usual consequence that they would commence proceedings in the Federal Court if the requested undertakings were not given.
In an unusual turn of events, Trink Tank’s response was to file a ‘pre-emptive’ application for unjustified threats before a different court – the Federal Circuit and Family Court of Australia (FCFCoA). Six days later, Bickford commenced proceedings in the Federal Court for trade mark infringement (as they had threatened).
This judgment deals with the fall out when each party asked the Federal court to allow their own proceedings to continue, and that the other should be dismissed.
Bickford won, the FCFCoA case (started by Trink Tank) was transferred to the Federal Court. However, the Federal Court case (commenced by Bickford) was dismissed as there is a statutory bar to commencing proceedings in the Federal Court if there is already a case before the FCFCoA (and within its jurisdiction).
How did Bickford get to move the case to the Federal Court? As it happens, Bickford had already commenced proceedings in the Federal Court against a third party (Noot) for infringement of the same trade mark and that proceedings was held to be ‘Associated’ with the dispute with Trink Tank.
So Bickford has its Federal Court proceedings against Trink Tank (which, having been started by Trink Tank in the FCFCoA only involves an allegation of unjustified threats of trade mark infringement). Presumably Bickford will cross-claim for trade mark infringement in which case the Federal Court has already ordered Trink Tank to pay indemnity costs (ie full solicitor-client costs) thrown away as a result.
