Perth dentist bites off more than he can chew in trade mark infringement claim
Peter Heerey AM, QC, Tom Cordiner & Alan Nash
Correspondents for South Australia, Victoria and Western Australia
Note: Where any of the barristers were involved in a case reported below and the matter is still running, or potentially so, the other correspondents have taken the role of reporting that case.
Agapitos v Habibi  WASC 47 (25 February 2014)
A Western Australian dentist who had managed to register DENTAL EXCELLENCE as a trade mark (and also traded under that name) bit off more than he could chew when he sued a South Perth dentist trading under the name “South Perth Dental Excellence” for trade mark infringement, passing off and misleading and deceptive conduct. The Court was not convinced that members of the public identified the words “Dental Excellence” with the plaintiff’s business (thereby defeating the passing off claim), and was not persuaded that the phrase had acquired distinctiveness or a secondary meaning in the minds of the public (thereby defeating the misleading and deceptive claim in respect of what was plainly an “eloquently descriptive trade name”). Further, the Court held that the defendant’s counterclaim for rectification was made out as the plaintiff’s mark was not inherently distinctive, and ordered that it be cancelled.