Federal Court affirms strong protection for registered trade marks

The Federal Court of Australia has recently delivered two significant decisions concerning trade mark rights in Australia:

1. on 10 December 2025, the Court issued its judgment in Prezzee Pty Ltd v Epay Australia Pty Ltd [2025] FCA 1662, granting Prezzee Pty Ltd (Prezzee) an urgent interlocutory injunction restraining Epay Australia Pty Ltd (Epay) from infringing its trade mark rights; and
2. on 27 February 2026, in Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd [2026] FCA 161, where Her Honour Justice Rofe found that Intermodal Solutions (Group) Pty Ltd (ISG) had infringed the ‘ROTAINER’ trade mark owned by Container Rotation Systems Pty Ltd (CRS).

In both matters, the existence of registered trade marks enabled the rights holders to successfully enforce their marks against competitors, with significant consequences for the infringing party.

These decisions highlight the value of trade marks in protecting brand assets and serve as a timely reminder for businesses to review their brand protection and ensure that key designs, logos, names and other distinguishing elements are properly protected.

Prezzee Pty Ltd v Epay Australia Pty Ltd [2025] FCA 1662

Prezzee and Epay are competitors in the gift card and online payment solutions markets, with Prezzee owning several Australian registered trade marks in these industries revolving around “Prezzee.”

In or around 2020, Epay contacted Prezzee to propose an arrangement concerning the coexistence of their respective marks, PREZZEE and PREZZY, within the same industry. Prezzee declined the proposal, making it clear that it would not accept any use of “Prezzy” by third parties in Australia and would actively oppose any attempt to introduce that brand into the Australian market.

In or around 2025, Epay launched both digital and physical gift cards in Australia under the brand “GIFTZZY.” These cards displayed the phrase “Powered by Prezzy Card”, which Epay also used across its marketing materials and promotional campaigns.

Prezzee sought interlocutory relief alleging that Epay had:

1. infringed its trade mark(s) under ss 120(1) and 120(2) of the Trade Marks Act 1995 (Cth) (TMA);
2. engaged in the tort of passing off; and
3. engaged in misleading or deceptive conduct in contravention of the Australian Consumer Law (ACL).¹

Justice Charlesworth found that the phrase “Powered by Prezzy Card” constituted trade mark use, even though “Giftzzy Card” appeared more prominently on the card.

Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd [2026] FCA 161

CRS and ISG are competitors in the containerised bulk handling field with respect to rotating containers and transportation systems involving rotating containers.

CRS alleged that ISG infringed its various ‘ROTAINER’ trade mark from in or around 2016 in 10 different ways, including in ISG’s emails and on its website.

It was alleged that when searching online for CRS’s trade mark, consumers would be misled and directed to ISG’s websites. ISG conceded that it was motivated to use ‘rotainer’ on its website to attract Google search traffic².

By way of the above conduct (and more), CRS alleged that ISG had:

1. infringed its trade mark under s 120 of the TMA;
2. contravened ss 18(1) and 29(1)(a), (g) and (h) of the ACL; and
3. engaged in the tort of passing off.

Her Honour Justice Rofe held that ISG’s use of the mark constituted use as a trade mark, including because the capitalisation of the letter “R” and/or the full word was more indicative of trade mark use than merely descriptive wording. Her Honour also found ISG’s intention in various uses of the mark was not in good faith.

Her Honour ultimately concluded that 7 out of 10 uses of the trade mark by ISG constituted use as trade mark, including the use of the mark in various headings, taglines, domain (www.rotainers.com.au) and logo(s). To note, the use of the mark as a Google metatag or keyword was found to not constitute use as a trade mark because metatags are not visible to ordinary internet users.

In addition to trade mark infringement, Her Honour was also satisfied that ISG’s conduct on its website and generic statements constituted:

1. misleading or deceptive conduct under s 18 of the ACL;
2. a contravention of s 29(1)(a), (g) and (h) of the ACL; and
3. passing off for making false or misleading representations that CRS and ISG were associated.

Her Honour found that, in the circumstances, the Court’s power to include an additional amount in the assessment of damages for trade mark infringement was enlivened.

The parties’ positions as to relief for the trade mark infringement are to be heard separately – now that the decision on the primary question of breach, has been published.

Lavan comment

These cases demonstrate that trade marks remain an effective mechanism for businesses to protect their brands and that trade mark infringement can have significant legal and commercial consequences.

They also serve as a timely reminder for businesses to review their existing trade marks and consider whether additional registrations are required to safeguard their brand. Businesses should likewise be wary of adopting or investing in marks that are confusingly similar to registered trade marks held by competitors operating within the same industry.

If you require assistance with registering trade marks, or would like advice on how best to protect your brand and intellectual property, please do not hesitate to contact Iain Freeman and Valentine Pons.

Disclaimer

The information contained in this publication does not constitute legal advice and should not be relied upon as such. You should seek legal advice in relation to any particular matter you may have before relying or acting on this information. The Lavan team are here to assist.