The importance of good legal advice
June 2008
A Federal Court judge has criticised the practice of bringing similar claims for removing trade marks from the register on the grounds that one may be cheaper, albeit less appropriate.
While the full judgment deals with other issues including infringement, passing off and misleading and deceptive conduct, Gordon J’s criticisms were against two similar applications intended to remove a trade mark registered to a former employee. His Honour noted that subsequent revocation orders that were granted were more appropriate to address the real issue of ownership over the mark. In accepting legal advice to use a cheaper “non-use” application, the unnecessary costs incurred were imposed on the employer.
This case highlights the importance of good legal advice and an early evaluation of the real issue in question. As Gordon J noted, “If a dispassionate analysis suggests that the client’s only realistic chance of success requires resort to a more expensive forum, then that is the advice an independent adviser should give. If [the client] chooses not to follow that course or advice, then it does so at its own risk.”
The case is Edwards v Liquid Engineering Pty Ltd [2008] FCA 970 (26 June 2008).
Written by Kenneth Chan, Solicitor
