The Halal Trade Mark is a seal used by the applicant to certify, for reward, those businesses that used halal practices in the preparation of goods and services in accordance with the Islamic faith.
The Halal Trade Mark is registered in respect of Class 35: Personal and social services, and Class 42: scientific and technical services: issuing halal certifications to business and individuals for goods and services if religious and technical requirements are met. The applicant alleged that the three respondents had been using the Halal Trade Mark without its permission to indicate that kebab meat products used were halal.
Perram J found that there was evidence of infringement since the kebabs, when sold under the halal certificate, were closely related services of providing halal certification for the purposes of Section 120(2) of the Trade Marks Act 1995 (TMA), namely they were closely related to the services in respect of which the Halal Trade Mark is registered.
In considering appropriate damages, Perram J made clear distinctions between the infringements of each respondent.
In respect of the retailers, the first and second respondents, the Court noted that the kebab shops were not interested in seeking halal-certification for their premises, but were only interested in seeking halal-certification from Quality Kebabs for the kebab meat supplied. This was a significant distinction given that the applicant was relying on the licence-fee approach for assessing damages as in the copyright case of Autodesk Australia Pty Ltd v Cheung Pty Ltd (Autodesk) where it was important that the infringer would have paid for a licence if faced with a choice between payment and not using the copyright work at all.
Thus, the damages were likely to be more in the nature of diminution in the reputation of and goodwill in the Halal Trade Mark. However, this would also require proof that the food served was not halal and that the public became aware of this. No evidence was led by the applicant to this effect and as such His Honour rejected diminution damages based on reputational harm to the Halal Trade Mark. His Honour therefore concluded that only nominal damages were payable by the first and second respondents. The sum of nominal damages awarded was $10.
There was however a further claim by the applicant for "additional damages" under Section 126(2) of the Trade Marks Act which provides that additional damages can be awarded for "flagrancy of the infringement" or to "deter" similar infringement by others.
Section 126(2) is fairly recent, being incorporated into the Trade Marks Act by the 2012 "Raising the Bar" amendments. Perram J held that "additional damages," whilst broader than exemplary damages were not compensatory in nature. Referring to the Parliament's Second Reading Speech His Honour concluded that the damages were intended to deter from infringement. Taking into account the "arrogant attitude" of Quality Kebabs in its defence, as for example Quality Kebab's attempt to blame a former employee, His Honour found that an award of "additional damages" was appropriate here. The quantum of damages could not equal the value of the certificate as this would equate to a "use now, pay if you get caught approach". Thus, a 50% increase on the certification fee was imposed yielding a total of $91, 015.00 for two years of infringement.
The applicant also managed to secure an injunction restraining Quality Kebabs from using the Halal Trade Mark as well as an order for corrective advertising in leading Islamic newspapers to inform the public of the misuse.
The decision thus serves as an important reminder to trade mark holders seeking to litigate that, unlike injunctive relief for the protection of trade mark interests, compensation does not flow freely without particular proof of loss.
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