21 December, 2016

Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406

Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406


Insight Clinical Imaging Pty Ltd (ICI) and Insight Radiology Pty Ltd (IR) both conduct medical imaging businesses in Australia.

Since 2008, ICI has been operating in Western Australia and has 7 clinics in that state. ICI has been using the word marks INSIGHT and INSIGHT CLINICAL IMAGING, as well as the composite mark shown below (ICI Composite Mark), since 2008. ICI has also registered the INSIGHT CLINICAL IMAGING word mark and the ICI Composite Mark for radiology services in class 44.


IR, previously named AKP Radiology Consultants Pty Ltd, has been operating in NSW since 2004 under the name Leeton Diagnostic Imaging and has three clinics in that State. In 2012, IR opened a clinic in Tasmania. IR commenced use of the word mark INSIGHT RADIOLOGY and the following depicted composite mark in 2012 (IR Composite Mark).


A trade mark application for the IR Composite Mark was filed by Mr. Pham, the sole director of IR. The application was opposed by ICI.

The Opposition

ICI alleged that it was, pursuant to section 58 of the Trade Marks Act 1990 (Cth)(Act), the owner of the IR Composite Mark as it was “substantially identical” to its ICI Composite Mark.

The Hearing Officer agreed that the marks were “substantially identical”. In coming to this decision, the Hearing Officer noted that the ‘radiology’ and ‘clinical imaging’ elements of the respective marks should be discounted for their generic/descriptive values. The Hearing Officer also considered that the device elements of the marks were “differing versions of the same thing”, and that the services provided under both marks would be provided by reference to the identical element ‘insight’.

In view of ICI’s success under section 58, no further grounds of opposition were considered by the Hearing Officer. A copy of the decision can be accessed here.

IR appealed this decision to the Federal Court of Australia. The opposition appeal was heard and determined concurrently with proceedings commenced by IC for trade mark infringement, passing off and contravention of the Australian Consumer Law (ACL).

The Opposition Appeal

On appeal, Justice Davies overturned the decision of the Hearing Officer under section 58 as her Honour did not consider the IR Composite Mark to be “substantially identical” to the ICI composite mark.

Accordingly, ICI sought to rely on other grounds of opposition:

  • Section 59- The Applicant has no Intention to Use the Trade Mark: Pursuant to section 59 of the Act, ICI argued that Mr. Pham lacked the necessary intention to use the IR Composite Mark. Whilst her Honour found that Mr. Pham did not have the requisite intention to use the IR Composite Mark at the time of filing the trade mark application, her Honour considered that IR did have the requisite intention and, by reason of an assignment from Mr. Pham to IR (which took effect whilst the trade mark application for the IR Composite Mark was pending, and under opposition), IR is taken to be the applicant for registration of the mark.
  • Section 60- Use of the Applicant’s mark is likely to mislead or confuse due to the Opponent’s Prior Reputation: Pursuant to section 60 of the Act, ICI also argued that, as a result of its reputation in the ICI Composite mark, the use of the IR Composite mark would be likely to deceive or cause confusion. ICI was successful on this ground, notwithstanding that its business activities were limited to Western Australia. Her Honour considered that ICI had acquired evidence outside of Western Australia because of its promotional activities, and that it had received referrals from various interstate practitioners. Her Honour also considered that, because of this reputation, use of the IR Composite Mark would be likely to deceive or cause confusion.
  • Section 42: Use of the Applicant’s Mark would be Contrary to Law: Pursuant to section 42(b) of the Act, ICI argued that as a result of the reputation acquired in the ICI Composite Mark, the use of the IR Composite Mark would be contrary to law. Her Honour agreed on the basis that use of the IR Composite Mark and the INSIGHT RADIOLOGY word mark contravened the ACL and amounted to passing off.

Accordingly, ICI was successful in its opposition against the trade mark application for the IR Composite Mark.

Infringement, Australian Consumer Law and Passing Off

IR conceded infringement of ICI’s trade mark registrations but relied on a number of statutory defences in section 122(1) of the Act, which it failed to establish.

Accordingly, Her Honour found that IR’s conduct amounted to trade mark infringement, contravention of the ACL and passing off. Her Honour also held that Mr. Pham, as sole director, secretary and 50% shareholder of IR, is liable as joint tortfeasor and for aiding and abetting IR’s wrongful use of the marks.

Cross claim by IR

IR argued that ICI’s marks were wrongly registered on various grounds, but her Honour dismissed those contentions and noted that IR’s unlawful use of its marks does not justify cancellation or any geographical limitation to ICI’s registered marks.

A copy of the Federal Court decision can be accessed  here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.



Principal / Trade Mark Attorney
Trade Marks Team
Sydney, Australia


Associate / Solicitor
Trade Marks Team
Sydney, Australia

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