Intellectual Property Update - The Cultural Intelligence Project Pty Ltd v The Entourage Education Group Pty Ltd

Intellectual Property Trade Practices
Tom Cordiner Headshot
M Marcus
C Cunliffe 2
Marcus Fleming Headshot 1

[2021] FCCA 504

Trade Marks – Infringement – Interlocutory Injunction – Serious issue to be tried – balance of convenience – application granted.

The applicant was the owner of a registered trade mark for the word mark ‘MAKE IT HAPPEN’ (the ‘Mark’) in respect of office functions in class 35 and a range of services in class 41, including, inter alia, education and providing of training.

The applicant used the Mark through a platform for First Nations entrepreneurs to arrange workshops to accelerate learning, to support development in local communities and to support First Nation entrepreneurs to pursue their works, ideas, and businesses. The applicant had developed considerable goodwill in connection with the ‘MAKE IT HAPPEN’ brand and the activities associated with it. A critical aspect of that goodwill was that the Mark is associated with providing support to Indigenous people, rather than with general commercial activities.

The respondent was promoting an online forum for entrepreneurs, and persons wishing to become entrepreneurs, under the banner or brand ‘The Make it Happen Summit’ on 2 March 2021. The Summit was free to register and attend, but included paid, pre-recorded, masterclasses. Seven or eight thousand people had registered. The focus was on commercial and individual entrepreneurship across a broad range of industries.

The applicant first became aware of the respondent’s promotion of and proposal to run its online forum under the name ‘Make it Happen Summit’ on about 8 February 2021. On 16 February 2021, the applicant’s solicitors wrote to the respondent and demanded that the respondent change the name of the Summit to a name that did not include the Mark (or a deceptively similar mark) and remove the Mark from its website and social media accounts. The respondent responded on 17 February 2021, denying infringement.

In its evidence, the respondent raised a question about whether it would wish to put on a cross-claim for revocation of the Mark, because the respondent had historically made use of the phrase ‘Make it Happen’ in an exhortatory and descriptive sense. However, the respondent’s impugned use was of the Mark as the name for, and promotion of its upcoming Summit and masterclasses. The respondent acknowledged that an injunction stopping the use of the Mark as the name of the event would not prevent the event from taking place. However, the respondent expressed a concern that, because of the proximity of the event to the hearing, it would be very difficult for the respondent to rebrand, in its entirety, the upcoming event, because the particular speaker presentation sessions communicated at the Summit were pre‑recorded, and used the phrase ‘Make it Happen’, in connection with the Summit and the masterclasses.

Judge Baird found that there was a strong prima facie case for the grant of an injunction for relief because the applicant had a registered trade mark which was prima facie valid, and the respondent’s proposed use included the Mark in its entirety, and added descriptive or non-distinctive material, and was within the scope of the class 41 specified services.

Her Honour identified the key concern as balance of convenience. A limitation of the respondent’s use of the Mark for the summit would cause it financial damage. Against that, the applicant had a concern that the use of the Mark by the respondent would irreversibly damage the exclusivity it had in respect of use of the Mark. Furthermore, the applicant was concerned that the respondent’s use of the Mark for a broader range of commercial entrepreneurship activities, that was not focused to the indigenous use in respect of which the applicant has built its use of the Mark, would cause a damage that would be irremediable. Her Honour accepted the probability of a diminution of the applicant’s goodwill as a result of the respondent’s use which would be difficult in nature to quantify in monetary terms.

Her Honour concluded that with the quality of the speakers identified, and the respondent’s expertise and experience, the event could go ahead with an appropriate alternative branding, but she considered that the pre-recorded seminar sessions fell in a different category.

Her Honour therefore granted an injunction preventing the use of ‘MAKE IT HAPPEN’, or any other substantially identical sign, which excluded use of the name in pre-recorded sessions.

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