The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd

This dispute was between two professional services businesses operating in closely related fields. The applicant, The Practice Pty Ltd, had been trading under THE PRACTICE since 1999 and had built a substantial national business in accounting, taxation, financial planning, wealth management and lending advisory services. The Court recorded that it had a large client base across Australia, annual revenue above $10 million and a long history of advertising and public exposure.

The applicant also owned a registered Australian trade mark for THE PRACTICE from 9 March 2016. That registration was broad. It covered many Class 35 and Class 36 services, including tax advice and preparation, accountancy, auditing, business advice, business planning, business consultation, some franchising-related business consultation, financial advice, financial planning and financial risk management services.

The respondent later operated under the name The Practice Business Advisers & Tax Practitioners Pty Ltd and used a related logo while providing business advisory and accountancy services. The applicant said that this was not just a similar business name. It was use of THE PRACTICE and a logo incorporating that sign as trade marks for services already covered by the applicant's registration.

The Court described the matter in emphatic terms, saying it was "as clear a case of trade mark infringement as one is ever likely to see". That language matters because it shows the Court did not see this as a close or technical branding dispute. It saw the overlap as obvious and commercially real.

The core claim was infringement under s 120(1) of the Trade Marks Act 1995 (Cth). The applicant alleged that the respondent's promotion and provision of business and tax advisory and accounting services under and by reference to THE PRACTICE and the logo infringed the registered mark.

The issues identified by the Court included whether the respondent used the plain words THE PRACTICE as a trade mark, whether the logo was substantially identical with the applicant's mark, whether the plain words and the logo were deceptively similar to the applicant's mark, whether the respondent's signs were used for services covered by the registration, and whether any of the respondent's statutory defences under s 122 were available.

The respondent denied infringement. It argued, among other things, that the wording within its logo was not being used as a trade mark, or alternatively that the logo was not substantially identical with or deceptively similar to the applicant's mark. It also pressed defences that its logo was used in good faith to indicate the kind, quality or intended purpose of its services, and that it would be entitled to registration of the logo if it applied for it.

A practical feature of the case was the evidence about what the respondent had done before adopting and continuing to use the name and logo. The respondent director said he had conducted searches in 2001, 2013 and 2017, and he also gave evidence about domain name activity and logo development around 2014. He said he searched business name and other databases and believed the name was available.

But the Court recorded an important concession in cross-examination. He did not dispute that he had never conducted any search for the words "The Practice" by themselves. Instead, he searched only the exact longer phrases he wanted to use, such as "The Practice (IT and Accountancy)" and "The Practice Business Advisers and Tax Practitioners". He also accepted that he did not search the Trade Marks Register.

That mattered because the respondent relied on defences that turned on good faith, honesty and claimed entitlement to registration. The catchwords state that the respondent's use of its logo was not in good faith or honest due to inadequate searches, and that the defences were not made out. For business owners, this is one of the most useful parts of the case. A narrow exact-match search may tell you only that your full preferred phrase is not already registered in that exact form. It may tell you nothing useful about whether the dominant brand element is already protected.

The Court also recorded examples from the respondent's website showing use of THE PRACTICE in a branding sense. Although the published text available here cuts off during that discussion, the reasons clearly state that the judge considered it obvious that the respondent used THE PRACTICE as a trade mark, meaning as a sign consumers would perceive as a brand.

The applicant succeeded on the trade mark claim. The Court declared that, by using the marks THE PRACTICE and the logo as trade marks in relation to the promotion and provision of business and tax advisory and accounting services, the respondent infringed Australian Trade Mark Registered Number 1757523 under s 120(1) of the Trade Marks Act 1995 (Cth).

The Court ordered an injunction restraining the respondent from using the applicant's mark, or any other mark that is substantially identical with or deceptively similar to it. It also ordered the respondent to pay damages of $200,000. The catchwords make clear that this amount included $100,000 in additional damages.

The respondent's statutory defences were not made out. The catchwords specifically record that the respondent's use of its logo was not in good faith or honest due to inadequate searches. The Court also noted that the applicant had brought ACL and passing off claims, but the applicant accepted that if it succeeded on the trade mark claim it was unnecessary for the Court to deal with those additional causes of action. That is what happened.

Because the published text available here ends part-way through the detailed reasoning, this page does not overstate the Court's step-by-step analysis on substantial identity, deceptive similarity or the calculation of damages. But the result itself is clear from the orders and catchwords.

The first practical point is that trade mark clearance is broader than checking whether a company name, business name or domain is available. A business can still infringe a registered trade mark even if it has adopted a longer phrase and even if the extra words are descriptive. If the dominant sign customers notice is the same as, or too close to, an earlier registered mark for the same services, the risk remains.

The second point is that service overlap matters. Here, the applicant's registration covered a wide range of Class 35 and Class 36 services, including tax, accountancy, business advisory and financial services. If your business is entering one of those fields, you need to compare your planned services against the registered specification, not just compare names in the abstract.

The third point is that your conduct before launch can matter later. If you are challenged and want to argue good faith or honest use, poor search practices may undermine that position. The Court record here shows the problem with searching only the exact long-form phrase you hope to use while never searching the dominant words on their own and never checking the Trade Marks Register.

This is especially important for advisory firms, franchise systems and multi-office service businesses. Once a risky sign is embedded in websites, proposals, signage, social media, onboarding documents and local marketing, the cost of changing course rises quickly. An injunction can force a rebrand at the worst possible time, and damages may follow.

These steps are not just for large businesses. The Court's reasoning on searches and good faith is a reminder that basic clearance discipline matters. If your preferred brand contains a short memorable phrase, that phrase is often the most important legal search term. Exact-match searching of a long descriptive name can create false comfort.

It is also worth checking logos separately. Even where a business thinks its logo is distinctive overall, the words inside the logo may still do the legal work of identifying origin. That was part of the dispute here. The respondent admitted it used the logo as a trade mark, and the Court's orders covered both THE PRACTICE and the logo.

The judgment was delivered on 12 November 2024 by O'Callaghan J in the Federal Court of Australia, General Division, Victoria Registry. The hearing took place on 15 and 16 October 2024. The applicant's proceeding was filed in 2023. The orders granted declaratory relief, injunctive relief and damages, with costs submissions to follow under the timetable set by the Court.

The published reasons clearly establish the result and several important factual findings. However, because the text available here ends during the Court's detailed analysis, any close reliance on the full reasoning about substantial identity, deceptive similarity, defences or damages should be checked against the complete judgment.