Container Rotation Systems Pty Ltd v Intermodal Solutions

(1) that the person has used as a trade mark a sign in relation to goods or services; and

(2) that the trade mark was substantially identical or deceptively similar to a trade mark registered in relation to those goods or services.

1. The principles in relation to (1) and (2) were not in dispute. I recently summarised those principles in Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2023] FCA 1587; (2023) 182 IPR 393 at [347]-[373]. The controversy as to infringement lies in the application of the principles in relation to (1), being whether ISG has used the Registered Mark as a trade mark.

1. The principles governing use as a trade mark are well established. As the High Court in Self Care explained at [24], by reference to E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [33] (French CJ, Gummow, Crennan and Bell JJ) which cited Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 and Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330. Whether a sign has been used as a trade mark is to be assessed objectively without reference to the subjective trading intentions of the user. The objective purpose and nature of use are assessed by reference to the context. The High Court in Self Care also observed at [24] that context includes "the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote".
2. In Shell Co, Kitto J set out the relevant question of what constitutes "use as a trade mark" at 425:

[...] the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion [sic] in the course of trade between the petrol and the appellant [...]

1. Justice Allsop (as his Honour then was) in an oft-cited passage from Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390; (2002) 56 IPR 182 at [185]-[186] said:

The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others.

The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use.

(Citations omitted.)

1. The display of a sign or mark in relation to goods may, of course, have more than one role. As Allsop J explained in Anheuser-Busch at [189]:

The usage of a word may fulfil more than one purpose on a label. For example a word may have a descriptive element, but also an element of trade mark or branding or distinguishing role. Equally, a word may have a role in identifying a geographical location, but also a trade mark or branding or distinguishing role. It depends on context.

(Citations omitted.)

1. Critically, and relevant to the current proceedings, the mere existence of a descriptive element or purpose in the use of a mark does not preclude the possibility of the sign being used as a trade mark. The Court in Self Care observed at [25]:

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.

(Emphasis added.) (Citations omitted.)

1. Finally, it is well established that use of a mark that is a component of a larger composite mark, or a mark used in conjunction with other marks, can still constitute use of a trade mark: see Chocolaterie Guylian at [97] (Sundberg J); Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 at [133] (Kenny J); Phone Directories Co Australia Pty Ltd v Telstra Corp Ltd [2014] FCA 373; (2014) 106 IPR 281 at [245] (Murphy J).

1. The CBH market is described in detail above. It is a specialised market dealing with very expensive equipment, the supply of which is a protracted process that may take many months. It is not a fast-moving consumer item market.
2. ISG contends that the use of systems with rotating containers and tipplers - which Mr Pinder terms "rotainer systems" - has only become well known and widely used in Australia since about 2011. Before then, such systems existed, but they were not well known or widely used in Australia. According to ISG, the level of understanding of container rotator based bulk handling systems has increased over time, as their use has increased. ISG submits that this provides important context for the consideration of whether its use of "rotainer" and "rotainers" constitutes trade mark infringement.
3. ISG did not use "Rotainer" prior to approximately June 2016. Even after June 2016, flyers, brochures, conference banners, other printed materials and videos published and disseminated by ISG in connection with its container products all used the descriptor "container".

1. At trial, CRS contended that the following conduct involving use of "rotainer" or "rotainers" by ISG constitutes trade mark infringement:

(a) the Pit to Ship Website (and the Generic Tippler Statement and the Generic Container Statement therein);

(b) the Rotainers Website;

(c) Search results displaying "Rotainer";

(d) ISG video published on LinkedIn and YouTube; and

(e) Customer communications and business documents, including:

(i) Quotation;

(ii) Specification sheet;

(iii) Tax invoice; and

(iv) LinkedIn.

1. CRS contends that a significant part of the infringing conduct involves the use of "Rotainers" on the ISG Websites. CRS handed up 14 examples of the ISG Websites during oral closing submissions.
2. ISG categorises the conduct as follows.

(a) In website names and content:

(i) the URLs www.rotainers.com and www.pittoship.com/rotainer, and content on the Websites (Type 1 (Websites));

(ii) the historical version of the Rotainers website (Type 2 (Historical Websites));

(iii) on the websites in a manner causing search results to refer to one or both websites (Type 8 (Search Results)), or for the word "rotainer" to appear in search results.

(b) In posts on LinkedIn, including:

(i) a video including in its title, text, and the LinkedIn post referring to the video (Type 3 (Video)); and

(ii) posts, including by the phrase "ISG Rotainers System" in Mr Pinder's profile, and the hashtags "ISGRotainersSystem" (Type 9 (LinkedIn));

(c) In customer communications:

(i) in an agreement dated 14 June 2020 between ISG and Poti Sea Port Corporation and APM Terminals Poti (APMT Poti) (Type 4 (Agreement));

(ii) customer communications and business document - in the subject line of emails with ISG's clients or potential clients, in responding using the subject line created by the client or potential client (Type 5 (Emails - Subject) or in the body of emails sent by ISG to clients or potential clients (Type 11 (Emails - Body));

(iii) in an ISG quote dated 13 October 2021 (Type 6 (Quote));

(iv) in an ISG invoice dated 29 November 2022, containing the phrase "ISG A TYPE Rotainer" (Type 7 (Invoice)); and

(v) in a product specification dated 21 February 2022, titled "ISG Mineral Concentrate Rotainers", including in its title and describing the product as "A Type Rotainer" (Type 10 (Product Specification)); and

(d) In search result advertising.

1. ISG's non-infringement argument is, in part, tied to the success of its contention that "rotainer" is a descriptive term, and that it has used the word in that sense. ISG justifies its use of "rotainer" and "rotainers" as being the use of a descriptive word in an effort to attract business and submits that use does not involve any illegitimate intention. To the contrary, the use of the word is an entirely legitimate and necessary aspect of ISG's "business of supplying rotainers".
2. For the reasons set out above, I have rejected ISG's cross-claim seeking cancellation of the registration of the Registered Mark due to lack of distinctiveness arising from the alleged descriptiveness. The Registered Mark is a validly registered trade mark.
3. I found that at the Priority Date, the Registered Mark had no ordinary signification and was therefore not inherently descriptive.

1. A significant part of the conduct alleged to constitute trade mark infringement in this proceeding involves use of the sign "Rotainers" on the ISG Websites, either as part of the domain name or as text displayed on the website, including as part of an ISG Logo included at the top left-hand side of the Rotainers Website.
2. ISG conceded that a key motivation for the use of "rotainers" on the ISG Websites was to attract Google search traffic. Relying on the Full Court decision in Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75; (2014) 106 IPR 419, ISG rejects the proposition that such use constitutes use of "rotainers" as a trade mark.
3. The test of whether a sign has been used as a trade mark within the meaning of s 120 of the TMA is an objective one. Trade mark infringement is to be determined objectively, not on the basis of ISG's subjective intention in using the mark.
4. In Lift Shop, a case involving competitors in the supply of customised lifts, the respondent added phrases such as "looking for a lift shop?" to its website homepage specifically to optimise its appearance in google searches for "lift" and "lifts". As the Full Court comprising Besanko, Yates and Mortimer JJ noted at [6], the appellant's case on trade mark infringement only concerned the use by the respondent of "Lift Shop" in the title of its web page as shown by search results. Similar to this case, the use on the webpages had various iterations, one of which was as follows:

Easy Living Lifts | Home Elevators | Lift Shop - Home Elevators ...

1. The case did not concern the respondent's use of Lift Shop on its website otherwise. There was no dispute that the respondent had used "Lift Shop" in respect of services that were closely related to registered goods. The question was whether those words had been used as a trade mark.
2. The appellant and the respondent were not the only businesses that appeared when an internet search for "lift shop" was carried out. This was held to be an important part of the context in which the respondent had used the sign. At [46], their Honours held that there was no infringement by the use of "Lift Shop" in the search entries:

Those searching the internet using the search term "lift shop" would have understood, on seeing the displayed results, and in particular the words "Lift Shop" in the title of the respondent's web page, that the respondent was using those words to convey that its business was one of supplying "lifts" and "home elevators". Although the use of the words "Lift shop" was given some prominence because of their use in the title of the respondent's web page, neither that fact, nor the positioning of those words within the title, imbued them with the character of a trade mark. The use of the words "Lift Shop" as shown in the entries quoted in paragraphs [9]-[11], makes clear that their only functional significance was to describe the character of that business. Their use by the respondent was not to distinguish its business from others. To the contrary, in the larger setting provided by the results pages, the use of those words was to designate, and would have been understood as designating, that the respondent's business was of the same character as, or at least of a similar character to, other businesses grouped and operating as "lift shops". Such use is the antithesis of trade mark use.

(Emphasis added.)

1. Lift Shop provides no guidance on whether ISG's use of "rotainers" on the ISG Websites constitutes trade mark infringement. The sole issue to which it is relevant is whether "rotainers" appearing in Google search results constitute trade mark infringement. However, there are some important factual differences which distinguish the present case from that in Lift Shop. First, the mark in suit was a composite mark with the words "LIFT SHOP" in grey and white on a green background, next to an up button, of the kind used to summon a lift. The registrability of the words "lift shop" as a composite mark, rather than as a word mark, is apparent given that "lift shop" comprises ordinary English words which other traders may wish to use to describe their businesses without any improper motive.
2. Second, there are no other traders using "rotainer", the search results in this case only yielded websites from CRS and ISG. Thus, as opposed to Lift Shop, those searching the internet using the search term "rotainers" would not have understood that ISG was using those words to convey that its business was one of supplying "rotainers". Rather, as Mr Solly recalled, the appearance of "rotainer" in the search results and in the ISG Websites caused him to think that "Mr Bridle had sold to, merged with, or had some association with the owner of that website".

1. The ISG Websites comprise both ".com" and Australian ".com.au" websites, which are alleged to divert consumers away from CRS via the infringing uses of the Registered Mark.
2. It was not in dispute that each of the websites are directed (at least in part) to, and are intended to be, and are accessible by consumers in Australia: Redbubble Ltd v Hells Angels Motorcycle Corporations (Australia) Pty Ltd (2024) 177 IPR 20 at [45] (Perram and Downes JJ).
3. Each of those websites references a business operating under a New South Wales Business name (Intermodal Solutions Group (ISG) and Pit to Ship). The ISG Websites also include Australian registered trade marks and refer to addresses of the business based in Australia.
4. I therefore consider that the uses forming part of ISG's impugned conduct are uses in Australia. The volumes of sales and revenue attributable to Australian consumers is not a matter for this part of the proceeding.

1. The Pit to Ship Website was registered on 7 June 2013. Since then, it has undergone three iterations, each of which contained presentations that CRS contends have infringed on its Registered Mark.
2. CRS alleges that ISG has used the sign "Rotainer" as a trade mark in Australia in relation to the Pit to Ship Website in: the tagline at the top of the webpages beside the ISG Logo, the headings and sub-headings on various pages of the website, the drop-down menus used to navigate the website, in reference to or descriptions of ISG's products, the long-form statements on the website, and in the URLs on the website (including "pittoship.com/rotainers/").
3. Further, in about August 2016, ISG posted the Generic Tippler Statement on the Pit to Ship Website. Mr Pinder agreed that the name "Pit to Ship" was intended to convey the idea that ISG can provide all the relevant parts of a CBH system. The Generic Tippler Statement is discussed separately below. Prior to the posting of the Generic Tippler Statement in August 2016, ISG did not use the word "Rotainers" in any of its material.

1. In early to mid-2020, ISG released a version of the Pit to Ship Website which, according to CRS, expanded their use of the Registered Mark "rotainer" (the First Presentation). The Pit to Ship Website now contained the word "rotainer" in its content, e.g., "We supply Container Rotation Systems (Rotainers) for mining, grain & ship loading industries", a sub-heading "Patented Bulk Rotainer Containers for Loading Tipplers". Part of the home page of the Pit to Ship Website at the time is reproduced below.

1. The First Presentation in early to mid-2020 involved expanded use of the sign "Rotainer", which included:

(a) the change to the header of the website that stated "We supply Container Rotation Systems (Rotainers) for mining, grain & ship loading industries";

(b) a sub-heading "Patented Bulk Rotainer Containers For Loading Tipplers" appearing on the home page;

(c) product descriptions on the home page referring to "Our rotainer container designs", "ISG designed the first ever bulk rotainer container" and "Our rotainer designs"; and

(d) a sub-page at URL "https://pittoship.com/rotainer/", accessible as a drop-down from the tab "Containerised bulk handling", which included the tagline "We supply Container Rotation Systems (Rotainers) for mining, grain & ship loading industries", the word "Rotainer" as the heading of the page and the phrase "Pit to Ship Rotainers" as a sub-heading above an image of a tippler carrying a rotatable container.

1. Below the second sub-heading "How Do Rotainers Work" was a use of "rotainer" to apparently refer to tipplers rather than rotatable containers. This is informed by the answer to the question: "The device tips the container in a 360 deg rotation emptying the product from the container". However, subsequent to that statement were mixed uses of "rotainer" and "rotainer container", both seemingly to refer to containers. A copy of the sub-page of the First Presentation of the Pit to Ship Website as at August 2020 is reproduced below:

1. At the top left of the homepage is the ISG Logo with the words Intermodal Solutions Group stacked next to the ISG Logo. Next to the ISG Logo and Intermodal Solutions Group is a tagline in the heading of the page, which states: "We supply Container Rotation Systems (Rotainers) for mining, grain & ship loading industries". Underneath is a large picture of a Revolver tippler.
2. The webpages include references to "Patented Bulk Rotainer Containers For Loading Tipplers", "Our rotainer container designs", "ISG designed the first ever bulk rotainer container" and "Our rotainer designs".
3. The second page, as displayed above, is headed "Rotainer" on a green background. Underneath is a menu, which includes "Container Types". To the right of that is a subheading "Pit To Ship Rotainers". Underneath the subheading is a picture of a Revolver tippler, and below that image is text which confusingly notes that "[t]he first tippler/Rotainer build was in South Africa over 40 years ago". The text then mentions "[o]ur rotainers", even though ISG does not supply tipplers.
4. I consider that "Rotainer" (particularly when the letter "R" or the whole word is capitalised) is being used as a sub-brand or trade mark of the products offered by ISG. The pronoun "our" and the claims implying that ISG is the designer of the "Patented" Bulk Rotainer demonstrate an ownership or a trade source. Additionally, if, as asserted by ISG, rotainer is descriptive of a type of container, the use of "container" across the First Presentation is rendered redundant, unless "rotainer" serves to indicate trade origin.

1. In late 2020 and early 2021, ISG further updated the Pit to Ship Website. Screenshots of the historical version of the Pit to Ship Website between March and May 2021 show the following new uses of the sign "Rotainer" on the Pit to Ship Website:

(a) a division of the "Containers" page into two sub-categories ("Browse Rotainers Category" and "Browse Non-Rotainers Category") and new names for various types of containers, which I describe further below

(b) on product-specific pages, such as the page for "Mineral Concentrate Rotainers", the inclusion of the text "ISG is the Global market leader in Open Top Containers (Rotainers) for Mineral Concentrates" with accompanying description "shipping container has been designed, manufactured and tested for operation with Rotating Spreaders (Tipplers)"

1. The Second Presentation of the Pit to Ship Website continued to include the statement: "We supply Container Rotation Systems (Rotainers) for mining, grain & ship loading industries". Part of the "Containers" page of the Pit to Ship Website at that time is reproduced below:

1. Under the "Browse Rotainers Category" on the sub-page for shipping containers, the Second Presentation included new names for various types of containers listed such as "Ore Rotainers", "Rear Tipping Rotainers", "Mineral Concentrate Rotainers", "Ore Rotainers", "Rear Tipping Rotainers", "Multipurpose - High Cycle Rotainers" and "Heavy Duty - High Cycle Rotainers":
2. Contrary to the Respondents' submissions, I find that the foregoing uses of "Rotainer" amount to use as trade mark as I consider they indicate a trade source. "Rotainer" is used categorically and as part of the product nomenclature, functioning as a badge of origin rather than as a mere descriptor. In contrast, the accompanying paragraphs describing each type of "Rotainer" consistently uses "container" as the generic noun or descriptor describing the product. This suggests that "Rotainer" is not being used descriptively as the Respondents contend. Instead, its role is to distinguish "Rotainers" from ordinary containers, including other rotatable containers or containers suitable for use in container rotation systems such as the "Half Height Container", which is categorised under "Browse Non-Rotainers Category":

1. The categorisation of "Half Height Container" under "Browse Non-Rotainers Category" undermines the Respondents' claim that "Rotainer" is used descriptively for rotatable containers. Evidence from Mr Fedden and Mr Pinder confirms that half-height containers are suitable for container rotation systems and therefore rotatable. If "Rotainer(s)" means "rotatable container(s)", then "Non-Rotainer(s)" must mean "non-rotatable container(s)", making this categorisation plainly incorrect. This hypothetical misclassification is indicative that "Rotainer" is not a generic descriptor for rotatable containers, but a distinctive term identifying products from a particular source, further supporting my view that it is used as a trade mark.
2. Product-specific pages for "Mineral Concentrate Rotainers" also included the text "ISG is the Global market leader in Open Top Containers (Rotainers)", which indicates the sub-brand name given by ISG to the type of Open Top Containers. Again, if "Rotainers" is descriptive of a type of container, the use of "Containers" is rendered redundant, unless "Rotainers" serves to indicate trade origin.

1. Accordingly, I find that the uses of "Rotainer(s)" in the Second Presentation amount to use as trade mark.

1. In around late 2021 to mid-2022, ISG made further changes to its Pit to Ship Website. Evidence shows that these changes include:

(a) amending the tagline in the header of all pages to "We supply rotainers for mining, grain & ship loading industries" around 25 May 2022;

(b) removing the word "Rotainer" from the statement "Patented Bulk Rotainer Containers For Unloading Tipplers" which appeared on the homepage around 26 July 2022;

(c) amending the statement at the bottom of the homepage which across the previous two presentations had read "We supply Container Rotation Systems (CRS) for mining, grain & ship loading industries" to "We supply Container Systems for mining, grain & ship loading industries" around 26 July 2022; and

(d) replacing the capital "R" with a lower case form in most, but not all, instances of use of the word "Rotainer" across the website.

1. An example of the home page of the website as at 26 July 2022 is below:

1. For the Third Presentation, ISG also retained the "Rotainers" tab in the Pit to Ship Website's upper menu and the accompanying content to the page. In written submissions, both parties referred to a screenshot of the "Rotainers" tab in mid-2021 of "Mineral Concentrate Rotainers", which is reproduced below:

1. I note that mid-2021 is not within the prescribed period of the Third Presentation, which is defined as being between late 2021 to mid-2022. Nonetheless, given the parties' written submissions and the fact that the "Rotainers" tab remain on the Pit to Ship Website at present, I consider that the "Rotainers" tab likely persisted during the Third Presentation.
2. To summarise, the evolution of the tagline in the header of the Pit to Ship Website is as follows. In around 31 December 2014, the Pit to Ship Website contained the statement on the top header: "We supply container rotation systems for the mining grain and ship loading industries". The header underwent a first change in late July 2016, evolving into "we supply container rotation systems (CRS) for [...]". The header was further amended in June 2020, from "we supply Container Rotation Systems (Rotainers) for [...]" to "we supply rotainers for mining [...]" by May 2022.
3. The first of these changes was prompted in May 2016, when Mr Pinder asked Ms Boden to instruct Click Click Media to update the Pit to Ship Website to add "(CRS)" at the end of "container rotation systems" in the header at the top of the Pit to Ship Website, adjacent to the ISG Logo.
4. In cross-examination, and in response to the suggestion that ISG was including on its Pit to Ship Website three terms that it knew that the CRS was using - container rotation systems, CRS and rotainer - Mr Pinder replied that "there's only four buzzwords in this industry, and that's three of them". Mr Pinder rejected the suggestion that in using those terms, he was seeking to draw a connection to CRS or, alternatively, to draw a connection between "rotainer" and ISG. I consider this evidence unconvincing.
5. Notwithstanding that some of these changes, including the removal of the word "Rotainer" from the statement "Patented Bulk Rotainer Containers For Unloading Tipplers", the Pit to Ship Website continued to use the word "rotainer" in various instances.
6. Further, whilst in the Third Presentation ISG has sought to remove the capitalisation of the letter "r" in "Rotainer", capitalised uses of the sign persist, including in the product names and descriptions of its "Rotainers" offerings, for example, "Mineral Concentrate Rotainers".
7. I do not accept that the selective removal of the word "Rotainer" in certain statements, or the selective change in the capitalisation of the letter "r", are sufficient to negate that the various uses of "Rotainer(s)" continued to constitute use as a badge of origin.

1. The Rotainers Website domain was purchased in around January 2021, with Mr Pinder's approval, and launched in about November 2021. CRS submitted that Mr Pinder also registered a second domain, the Rotainers AU Website on behalf of ISG in January 2021, which on the evidence appeared to redirect to the Rotainers Website. My references to and analyses of the Rotainers Website are therefore also applicable to the Rotainers AU Website.
2. Mr Pinder deposed that the motivation to create the Rotainers Website was that it would be commercially beneficial to have a dedicated website for what was becoming a significant category of containers supplied by ISG. The aim was to ensure that at least one of ISG's Websites appeared high up in internet searches for "rotainer".
3. The content of the Rotainers Website was largely based on that developed for the "rotainers category" on the Pit to Ship Website. Mr Pinder's evidence was that the Rotainers Website was launched as part of an ISG strategy to have dedicated websites for different aspects of its business. Other aspects included general freight, cargo and the shipping container markets. Part of the home page of the Rotainers Website is reproduced below.

1. The home page of the Rotainers Website featured the word "Rotainer(s)" multiple times, including in the ISG Rotainers Logo, as a heading in large text, in the sub-headings "Patented Bulk Rotainer Containers for Loading Tipplers" and "Rotainer Containers" in various product descriptions. A printout of the front page of the Rotainers Website as at 13 March 2022 is below:

1. According to ISG, some changes were made to the Rotainers Website in October 2022, during the course of this proceeding. CRS resists that assertion, contending that there is no supporting evidence or any explanation as to why changes were made to the Rotainers Website at that time. Based on the evidence, I consider that the changes to the Rotainers Website around or after October 2022 include: making the heading "Rotainers" all capital letters, replacing instances of "Rotainer Container" with "Rotainer", and replacing the ISG Rotainers Logo at the top left and bottom of the page with the a new logo that spelt out "Intermodal Solutions Group" rather than "Rotainers" (the ISG Composite Logo). Some of these changes are reflected in the current website which appears the same as the below image screenshot as at 16 February 2023:

1. For the same reasons as discussed in relation to the three iterations of the Pit to Ship Website, I consider that the use of the words "Rotainer" and "Rotainers" on the Rotainers Websites is use as a trade mark.

1. Until at least October 2022, the Rotainers Website included the ISG Rotainers Logo on the top left corner of the homepage.
2. The ISG Rotainers Logo, which originally appeared on the Rotainers Website, was featured both at the top left of the page, and at the bottom of the page. Whilst it was written in sentence case as at March 2022 (the First ISG Rotainers Logo), as at 24 May 2022 it was written in uppercase letters only and in slightly reduced proportions (the Second ISG Rotainers Logo). Each version of the ISG Rotainers Logo is reproduced below:

(a) First ISG Rotainers Logo

(b) Second ISG Rotainers Logo

1. The word "Rotainers" is depicted in stylised form adjacent to the original ISG Logo. As I have described above, the ISG Logo contains a visual depiction of a tippler tipping a rotatable container and the words "ISG Pit to Ship Solutions" beneath it, with "Pit to Ship Solutions" being in tiny and barely readable font. Such depiction of the ISG Logo remains the same as used in the Rotainers Website.
2. The intention behind these design choices is reflected in an email sent from Mr Buckley of Click Click Media to Mr Pinder and Ms Boden on 28 October 2021 (shortly before the Rotainers Website went live in November), which stated:

Just a recap on the strategy. This micro website will be entirely focused around ranking for the 'rotainer' keywords. We will still keep it ISG branded, but that will be secondary to the word 'rotainer'.

[...]

We are very confident that this will outperform CRS.

(Emphasis added.)

1. Mr Pinder accepted in cross-examination that the above correspondence reflected the instructions he had given to Mr Buckley to keep the branding of the ISG Logo secondary to the word "rotainer".
2. According to CRS, evidence shows that the Rotainers Website continued to display the ISG Rotainers Logo on the home page as on 24 May 2022, and on ISG's evidence until October 2022. While ISG alleges that the ISG Rotainers Logo has not been used on the Rotainers Website since 11 October 2022, there was no evidence supporting that assertion. The evidence shows that the ISG Rotainers Logo still appeared on parts of the "Case Studies" and "Container Categories" pages of the Rotainers Website until at least as late as 26 April 2023, as depicted below. This was notwithstanding that Mr Pinder disputed in cross-examination that the use was not use as a trade mark or badge of origin:

1. CRS submitted that ISG's use of the ISG Rotainers Logo is plainly trade mark use which is deceptively similar to the Registered Mark.
2. In my view, the addition of the ISG Logo to the ISG Rotainers Logo at the top left of the page, and at the bottom of the page, and later in parts of the "Case Studies" and "Container Categories" pages, does not overcome the distinguishing badge of origin ISG has made of the word "Rotainers" to indicate that it is the origin of Rotainers, including goods such as the Rear Tipping Rotainers and the Ore Rotainers.
3. The word "Rotainers" is prominently depicted in stylised capitalised and underlined form adjacent to the ISG Logo. The ISG Logo contains a depiction of a tippler and the words "ISG" and "Pit to Ship Solutions". The latter words are in tiny, essentially illegible font, especially in comparison with the large size of the word "Rotainers". The ISG Logo is "dwarfed" by the large and/or capitalised "Rotainers" next to it.
4. It is further notable that the word "Rotainers" there takes the same position as the words "Intermodal Solutions Group" in the ISG Composite Logo on the Pit to Ship Website.
5. The word "Rotainers" is also depicted as a heading in white capital letters, above the words "Mining, grain, and ship loading industries".
6. Any references to Pit to Ship Solutions or to ISG or Intermodal Solutions Group on this homepage are in very small font, so small as to be rendered insignificant relative to the prominent capitalised "Rotainers".
7. The Rotainers Website also included various other uses of the sign "Rotainer" or "Rotainers" on the homepage, including in the phrase "Patented Bulk Rotainer Containers for Loading Tipplers", in the sub-heading "Rotainer Containers", and in the phrase "ISG Rotainers".
8. ISG invites consumers to visit its Rotainers Website and its Rotainers AU Website. At those websites, containers are available for purchase under the word "rotainers" as part of the domain name, as well as being prominently displayed in page headings and in references to products. I consider that these uses constitute use of the "Rotainers" as a trade mark.
9. Contrary to ISG's submission, I do not consider the Rotainers Websites make it clear that the mark under which the "rotainer goods" are offered is ISG. I reiterate that the ISG Logo is dwarfed by the prominent, capitalised and stylised "ROTAINERS" next to it, to the point where the ISG Logo on the printout above, is barely legible to the viewer. Any other references to ISG, Intermodal Solutions Group or Pit to Ship Solutions are so small that they do not strike the eye of someone viewing the website. The viewer needs to be actively searching for those brand names in order to find them. The prominent "ROTAINERS" coupled with the domain name of the same word would appear as branding or badge of origin to a consumer viewing the website.
10. CRS submits that the consumer would consider each of the ISG Logo and the capitalised, stylised "Rotainers" to be separate trade marks, rather than a single composite mark. CRS further submits that this is consistent with what is recorded in the communications leading up to the development of the Rotainers Websites:

Just a recap on the strategy. This micro website will be entirely focused around ranking the "rotainer" keywords. We will still keep it ISG branded, but that will be secondary to the word "rotainer'.

1. ISG contends that if it is found that its use of "rotainers" on the Rotainers Websites is use as a trade mark, that use is as part of the composite mark with the ISG Logo. The word "rotainers" is the same colour as the ISG in the ISG Logo and the line underneath the word "rotainers" is rendered in the same manner as the curved line adjacent to the word ISG in the ISG Logo - the stylised depiction of the contents falling out of an upended container. I disagree.
2. The word "rotainers" is capitalised, stylised and prominently displayed in white capitals below. It is also the name of the website. The eye of the consumer viewing the website would be drawn to the capitalised, stylised "rotainers". This focus would be reinforced by that word also being the domain name and depicted in white capitals below.
3. The words of Williams J in the Tub Happy Case at 205, quoting Sir Greene MR in Saville Perfumery Ltd v June Perfect Ltd (1939) 58 RPC 147 at 161 are apt:

[...] In an infringement action, once it is found that the defendant's mark is used as a trade mark, the fact that he makes it clear that the commercial origin of the goods indicated by the trade mark is some business other than that of the plaintiff avails him nothing, since infringement consists in using the mark as a trade mark, that is, as indicating origin.

(Emphasis added.)

1. Justice Williams added that "[n]eedless to say, if the defendant uses the words of the plaintiff's trade mark as indicating origin it is still an infringement notwithstanding that the defendant always adds his own name".
2. Ultimately, I do not consider that a different result is reached if the ISG Rotainers Logo is considered as a composite mark comprising the ISG Logo and the capitalised stylised "Rotainers".
3. The word "rotainers" in its capitalised, stylised form dominates. The ISG Logo is small, the letters "ISG" are not clear. To the viewer the ISG Logo looks like a green diamond with a yellow wedge at the top. The ISG Logo is so small that it is not apparent that it includes a stylised tippler rotated container emptying. I consider that even if the mark were to be considered a composite mark it would be deceptively similar to the Registered Mark for reasons I discuss below.

7.2.8.2 The domain names of the Rotainers Websites

1. A domain name may constitute use of a trade mark: Sports Warehouse at [153] (Kenny J). However, the mere registration of the domain name is not sufficient to establish infringement. Where a person uses a domain name to attract consumers to a website which promises connections with goods or services relating to the registered mark, infringement may be established even if the owner of the domain name does not sell the goods or services and instead merely benefits from a flow of traffic over the website: Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 92 IPR 165 at [50] (Perram J).
2. In Fanatics, LLC v FanFirm Pty Ltd [2025] FCAFC 87; (2025) 185 IPR 383 at [102], the Full Court comprising Burley, Jackson and Downes JJ clarified that in circumstances where the domain name uses a registered mark as a badge of origin, it is necessary to differentiate the types of use in contemplation. This is because the use of a registered mark in the domain name, on the heading of the webpages and otherwise on the website to promote the retail sale of items on the website may not amount to trade mark use in respect of the registered classes of goods or services.
3. Thus, the Full Court determined in Fanatics at [109]-[112] that whilst evidence suggested that via the Fanatics website, Fanatics invited consumers to visit and acquire goods for purchase, the Fanatics website aggregated and sold an extensive range of third party branded products such that that invitation to acquire comprised an invitation to acquire a large range of apparel, much of which had no Fanatics branding on it. Further, for those products that were plainly branded with other prominent brands, the Full Court found that the consumer would not be likely to perceive that the use of Fanatics branding on the website extends beyond branding to the online retail sale of clothing in relation to those products. Therefore, unless the consumer's attention is specifically drawn to the particular products that are branded with the relevant registered mark, the consumer is not likely to perceive that the general use of the registered mark on the website extends beyond branding relevant to, i.e., the online retail sale of the relevant goods rather than the use of the mark in respect of the goods themselves.
4. Importantly, where a domain name is used to conduct a website from which goods or services are sold, the same kinds of questions which arise in ordinary trade mark litigation will arise. In such cases, Perram J drew the analogy between the sign on the front of a shop and the goods sold within will be established: Solahart at [50].
5. The facts of this case regarding the use of the Registered Mark in the domain names of the Rotainers Websites are distinguishable from the facts in Fanatics. Unlike Fanatics, the goods marketed bear no branding other than the word "Rotainer" (i.e., Rear Tipping Rotainers and Ore Rotainers), wherein "Rear Tipping" and "Ore" are read as merely descriptive.
6. Indeed, the surrounding circumstances are more analogous to the facts in Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291; (2010) 86 IPR 19. In that case, Reeves J considered that the domain names using the registered mark constituted use of the mark as trade mark in light of the content of the impugned websites, including the fact that the Registered Mark was used in the banner heading, and used frequently and gratuitously throughout those websites. Further, similar to that case, the public visiting the Rotainers Websites are not invited to compare the "Rotainer" goods (i.e., containers) of ISG with the spreader or tippler of CRS but are being invited to purchase the goods. This is evident in the following statement on the Rotainers Website's homepage:

Patented Bulk Rotainer Containers For Loading Tipplers

• SUITABLE FOR TRAINS, TRUCKS & SHIPS
• MINIMISES DUST, SPILALGE & PRODUCT LOSS
• PERFECT FOR RANGE OF COMMODITIES
• AVAILABLE IN VARIOUS LENGTHS, HEIGHTS AND WIDTHSs.

1. I refer to my analyses on the content of the Rotainers Websites above, and to my analysis of the goods advertised in the Rotainers Websites being the same goods as those under which the Registered Mark is registered and conclude that ISG's use of the word "rotainers" in the domain name of the Rotainers Websites constitute use as a trade mark, rather than being descriptive or nominative uses.

1. ISG posted the Generic Tippler Statement (which Mr Pinder termed a "blog") on the Pit to Ship Website from around August 2016 until its removal on or around 11 October 2022, together with a photo of a tippler, used at SCT in Wales, which has "Rotainer" at the top right of the spreader bar. Mr Pinder accepted that at the time ISG posted the Generic Tippler Statement, he was aware that CRS had a registered trade mark for the word "rotainer" "for a machine".

Basically, it was a blog. The whole blog was all about the rotainer system, and at that time, I thought that basically, a lot of people were calling the tippler a rotainer, as well as the containers in the system, but I've since come to work out that basically, they don't call them that. They call them tipplers, which is common knowledge.

1. Mr Pinder's evidence was that ISG's intention was to make "rotainer" a keyword on the Pit to Ship Website to generate internet traffic to the site, and to educate customers. Mr Pinder denied the suggestion that he was soliciting orders for tipplers via the blog.
2. Mr Pinder's evidence was that as at August 2016:

I knew that they were calling the containers "rotainers" and the system rotainer. I thought that they were calling some of the tipplers rotainers, especially after you see the Swansea container rotainer, the first one, which was built 20 years before, that the tipplers were starting to be called that. But I've since worked out that they're not. They're actually calling the containers rotainers and the system, but not the tipplers. The tipplers are called tipplers.

1. Mr Pinder's evidence was that when he published the blog, he believed that "rotainer" meant rotating container, not a tippler. He accepted that the use of "rotainer" in the Generic Tippler Statement was completely inconsistent with his asserted meaning for "rotainer" as a rotating or rotatable container. Mr Pinder accepted that "rotainer" was not a generic word for tippler and never had been.
2. At the time that the Generic Tippler Statement was published in August 2016, Mr Pinder's evidence was that he believed "rotainer" to mean "rotating container, or the container rotation system as a whole", but that he also thought at the time that "rotainer" was used to refer to tipplers. It is difficult to reconcile this with what Mr Pinder wrote in the Generic Tippler Statement, wherein tippler and rotainer were used interchangeably. Mr Pinder accepted that he did not, in that statement, say that "rotainer" could mean rotating or rotatable container. His evidence was that he had subsequently come to believe that "rotainer" is not a generic word for "tippler", and it never has been.
3. Mr Pinder also denied that the Generic Tippler Statement was written in a context in which he knew that CRS was the owner of a registered trademark for the word "rotainer". CRS submitted that Mr Pinder's evidence was unreliable and should be given little weight. In this respect, CRS highlighted that Mr Pinder accepted himself that he was aware that AMMESA had supplied a machine called a "rotainer" in 2011 and that by 2012 - and as of August 2016 - he was aware that Mr Bridle's companies had a registered trademark over the word "rotainer", in Mr Pinder's words, "for the tippler", or "machine".
4. I accept CRS's submissions that Mr Pinder's evidence regarding the Generic Tippler Statement is contradictory. To the extent that he sought to characterise his use of "rotainer" as a matter of opinion, namely that "rotainer" is descriptive, the incohesive evidence as to what Mr Pinder believed the term to mean tends to suggest that those opinions were neither honestly nor reasonably held. My view is reinforced by the contemporaneous Generic Tippler Statement, which suggests that "rotainer" was used, in a descriptive sense, only as a synonym to "tippler" (i.e., "Rotainer or Tippler" and "tippler/Rotainer") rather than to denote a "rotating container" or the totality of the container rotation system.
5. However, I do not consider that the use of "rotainer" in the Generic Tippler Statement constitutes use as a trade mark. It is not used in this context to indicate a connection between ISG and particular goods or services.

1. The Generic Container Statement was published on the Pit to Ship Website as early as 3 March 2021 on the "Rotainers" sub-page, and remained there until at least February 2023. It appeared in the following form under the header "ISG Rotainers" and below the subheading "Changing trends" which followed a shortened version of the Generic Tippler Statement that remained on the website at that time:

So what name is correct, rotainer or tippler? Both names are correct as they rotate and or tip the minerals from the container, so if you require a container rotation system for your loading facility call ISG and we can provide you with a rotainer.

Changing trends

The industry has now come to use the generic word rotainers to describe the rotatable containers that are used with the tipplers to unload their bulk cargo. Whereas the word "container" continues to be used for the non-rotatable containers.

(Emphasis added.)

1. In cross-examination, Mr Pinder was questioned about his understanding of the meaning of "rotainer" at the time he posted the Generic Container Statement, and how that differed from what he said had been his earlier understanding. Mr Pinder accepted that he continued to publish the Generic Tippler Statement - which asserted that "rotainer" is interchangeable with "tippler" - at least until 2022 but conceded that it "should have been pulled down before".
2. It was put to Mr Pinder that the words "[t]he industry has now come to use [...]" suggests a very recent evolution (i.e., around March 2021) in the use of the word "rotainer" to refer to rotatable containers. But Mr Pinder denied this and insisted that the evolution began in 2011 when he "first started to hear" people call rotatable containers "rotainers". Mr Pinder further stated that the reference to "changing trends" was him giving a historical perspective harkening back to 2011, 10 years prior. That is, on Mr Pinder's account and on ISG's submissions, the word "rotainer" was used to refer to rotatable containers as early as 2011.
3. Notwithstanding that evidence, Mr Pinder published the Generic Tippler Statement in August 2016 asserting that "rotainer" means "tippler", with no mention of it being referable to rotatable containers.
4. I do not consider that "rotainer" is used as a trade mark in the Generic Container Statement, for the same reasons set out in my analysis of the Generic Tippler Statement.

1. CRS alleged that a video titled "ISG Case Studies Series 25: The Safety and Environment on TPC - ISG Rotainers System" (ISG Video), used the word "Rotainer(s)" including in the title of the video, text displayed therein, and in a LinkedIn post referring to the video - including by use of the phrase "ISG Rotainers System" and the hashtag "#ISGRotainersSystem". According to CRS, such uses also infringed the Registered Mark. The ISG Video was posted on the LinkedIn page, the Pit to Ship Website and YouTube in late 2021.
2. Mr Pinder deposed that the video was produced by one of ISG's overseas customers, Terminal Puerto Coquimbo (TPC) in Chile, and that statements in it referring to an "ISG Rotainer System", which were in Spanish with English subtitles, were statements of TPC. This was notwithstanding that ISG had asked TPC if it could use the video, to insert the ISG Logo into it, and to publish it with the title and hashtag referring to the same terminology.
3. According to Mr Pinder, the ISG Video was uploaded to the Pit to Ship Website, ISG's YouTube channel and its LinkedIn page in about late 2021.
4. I consider that the use of "rotainers" in the ISG Video constitutes use as a trade mark, for the same reasons I set out in my analyses of the use of "rotainers" on the ISG Websites, excluding my reasons regarding the Generic Tippler Statement and the Generic Container Statement.

1. In May 2017, ISG commenced using "rotainer", among other keywords, as a keyword in its Google keyword advertising. The detail of ISG's keyword strategy is outlined above.
2. It was common ground, consistent with authority, that the use of "rotainer" as a Google metatag or keyword did not itself constitute use as a trade mark: Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 at [57], [62] (Kenny J); Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd (2016) 118 IPR 291 at [136]-[137] (Katzmann J). This because metatags are invisible to the ordinary internet user. While their use in this case directs the user to the ISG Websites containing the word "rotainer", they do not themselves indicate the origin of the advertised goods.
3. CRS relies on "the population of [ISG's] website" with "rotainer" then causing the rotainers search results to appear in a particular way". I have addressed the use of "rotainer" on the ISG Websites above, which I found to be use of "rotainer" as a trade mark. I do not consider that consideration of the use of "rotainer" on the website in order to optimise search result rankings adds anything to that consideration.

1. In August 2011, OZ Minerals invited suppliers to tender to design, fabricate and supply containers for its Prominent Hill mining operation. ISG tendered to supply OZ Minerals with rotating containers. In the tender document OZ Minerals specified that: "[t]he emptying of containers to ship hold shall be by a rotating tippler; the type of tippler to be used will be a "Rotainer", and; "A description of the Rotainer is attached in Appendix 1".
2. Mr Pinder contended that "Rotainer" was used in the tender document to identify AMMESA; he gave evidence that when he read "Rotainer", he read it as a reference to AMMESA, and that the rotatable containers supplied would need to be compatible with AMMESA's tippler. Mr Pinder acknowledged that the ISG rotatable containers are called "containers" in the ISG tender document.
3. In cross-examination, Mr Pinder explained the statement in his affidavit** - **"in May 2011, OZ Minerals released a public tender for the supply of 100 rotainers...", as follows:

[...] I'm saying in this that they eventually evolved to be called rotainers, and we sell a lot of that design, and that design is probably our largest selling design. And they are rotainers, and the first one was built for the OZ Minerals tender.

[...]

I think by the time this was written that they were called rotainers, so, no, I disagree.

Sorry, Mr Pinder, what did you say? By the time this was written? By the time this affidavit was written; is that right? No. No. No. No. No. No, by the time that we were doing our marketing in our brochures, it had - [...] the word "rotainer" had [...] evolved.

It had evolved? Yes.

[H]ad it, Mr Pinder? So you say that in May 2011, the word "rotainer" was used synonymously - in other words, people in the industry saw "rotainer" and "rotating container" as being the same thing. Is that your evidence? In May 2011? Yes. Around 2011 people were calling them "rotainers", yes.

Yes. And how do you explain that being consistent with the tender document that I have just taken you to? Yes. No. They're completely different. I agree.

It's completely inconsistent, isn't it? That's correct.

(Emphasis added.)

1. I consider that ISG's use of "Rotainer" in its tender documents for OZ Mineral purported to draw a connection between ISG's products and "Rotainer" as a badge of origin. For that reason, I conclude that the use of the Registered Mark in this instance also constituted use as a trade mark.

1. For the reasons above, I conclude the following regarding the uses by ISG of the Registered Mark across the ISG Websites:

Use as trade mark of the Registered Mark by the following uses:

(a) Tagline: "We supply Container Rotation Systems (Rotainers) for mining, grain & ship loading industries;

(b) Heading: "Patented Bulk Rotainer Containers For Loading Tipplers";

(c) Phrases: "Our rotainer container design", "ISG designed the first ever bulk rotainer container" and "Our rotainer designs";

(d) Heading: "Rotainer";

(e) Subheading: "Pit to Ship Rotainers"; and

(f) "How do Rotainers Work" subheading.

Use as trade mark of the Registered Mark by the following uses:

(a) Tagline: "We supply Container Rotation Systems (Rotainers) for mining, grain & ship loading industries"

(b) Title: "Browse Rotainers Category";

(c) "Browse Non-Rortainers Category";

(d) Use of "rotainers" in reference to categorical nomenclature of container products, i.e., "Mineral Concentrate Rotainers"; and

(e) Phrases in product specific pages: "ISG is the Global market leader in Open Top Containers (Rotainers)".

Use as trade mark of the Registered Mark by the following uses:

(a) Tagline: "We supply rotainers for the mining, grain & ship loading industries";

(b) "Rotainers" tab in the upper menu; and

(c) Use of "rotainers" in reference to categorical nomenclature of container products, i.e., "Mineral Concentrate Rotainers" and analogous added content within the "Rotainers" tab.

The Rotainers Website & The Rotainers AU Website

Use as trade mark of the Registered Mark by the following uses:

(a) The ISG Rotainers Logos, being the First ISG Rotainers Logo and the Second ISG Rotainers Logo;

(b) Domain name: "www.rotainers.com";

(c) Heading: "Rotainers";

(d) Use of "rotainers" in reference to categorical nomenclature of container products, i.e., "Rear Tipping Rotainers" and "Ore Rotainers"; and

(e) Statements such as "If you need a solution to loading or unloading materials from trains, trucks and ships. Our rotainers are the answer in conjunction with the RAM Revolver".

Use as trade mark of the Registered Mark by the following uses:

(a) Domain name "www.rotainers.com.au"; and

(b) All uses on the Rotainers Website as above, by virtue of redirection.

ISG Video titled "ISG Case Studies Series 25: The Safety and Environment on TPC - ISG Rotainers System"

Use as trade mark of the Registered Mark by the following uses:

(a) The title of the ISG Video: "ISG Case Studies Series 25: The Safety and Environment on TPC - ISG Rotainers System";

(b) The text displayed in the ISG Video; and

(c) LinkedIn post referring to the ISG Video, including by use of the phrase "ISG Rotainers System" and the hashtag "#ISGRotainersSystem".

Use of "rotainer(s)" as keyword in its Google keyword advertising

Use as trade mark of the Registered Mark by the following use:

(a) The tender document specifying that "[t]he emptying of containers to ship hold shall be by a rotating tippler. The type of tippler to be used will be a 'Rotainer'.

1. CRS contends that ISG's intention to draw a connection to CRS, and to genericise the Registered Mark, is relevant to the assessment of ISG's alleged good faith use under s 122(1)(b), and flagrancy under s 126 of the TMA: Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

1. On 13 February 2021, in an email to Richard Buckley of Click Click Media, Mr Pinder enumerated specific amendments to be made to the ISG Websites. This included a strategy to genericise the word "Rotainer" by inter alia, changing upper case "R" to lower case "r" and introducing an information section that used "Rotainer" in a descriptive manner:

[...]

1/ Can we place the below first red section at the bottom so the first thing customers see is Browse Rotainers Category:

Also, the word Rotainer in the red section, can you please change the capitol [sic] R to lower case so the word rotainers looks generic not a brand name?

[...]

2/ Under the below tab, please add the closing statement after the below wording, we are trying to make the word Rotainers generic and this information provides proof:

Find out more on what rotainers are here.

Many people call the rotainers: tipplers as the meaning is basically the same the container is rotated or tipped using this machine.

So what name is correct, rotainer or tippler? Both names are correct as they rotate and or tip the minerals from the container, so if you require a container rotation system for your loading facility call ISG and we can provide you with a rotainer.

[...]

(Emphasis in original omitted.) (Emphasis added.)

1. When Mr Pinder was cross-examined on the above correspondence, he did not accept that the plain language of the instructions to Click Click Media were to render the word "Rotainers" generic. Instead, Mr Pinder said that he was merely ensuring that he was documenting to Click Click Media "exactly how the content should look" so that it is said "the right way".
2. I do not accept Mr Pinder's evidence as it is in direct contradiction with the contemporaneous evidence, being the wording of the correspondence. The words "we are trying to make the word Rotainers generic" is open to only one interpretation, which is that at that time, Mr Pinder did not consider that the word "Rotainers" was generic and intended to genericise the Registered Mark. Whilst the words "this information provides proof" when read in isolation may evince, as Mr Pinder contends, an intention to ensure that "rotainers" is not inadvertently used as a trade mark or badge of origin, the surrounding circumstances are indicative that those words are more accurately construed as the prospective creation of "proof" in an attempt to genericise the Registered Mark.

7.3.2 Mr Pinder's inconsistent evidence on the purported descriptive meaning of "Rotainer"

1. In cross-examination, Mr Pinder gave evidence that "Rotainer" meant rotatable or rotaining containers since 2011. Mr Pinder then changed his position, relying on an evolution theory, which propounded that the meaning of the word "Rotainer" evolved from 2011 to also mean the rotatable container system, which includes both the rotatable container and the tippler. Mr Pinder's evidence on the Generic Tippler Statement that "Rotainer" never meant tippler was also in direct contradiction with the statement itself, which used "rotainer" and "tippler" interchangeably.
2. CRS submits, and I accept, that Mr Pinder's evidence was confused and inconsistent. Mr Pinder sought to explain documentation that contradicted his position by then using the evolution theory that he hadn't previously advanced. First, it is not established that Rotainer was a term describing a rotating container. Secondly, the Generic Tippler Statement itself contradicts that assertion. Thirdly, the descriptive reason was not revealed in the emails with the website developer, Click Click Media. In relation to that chain of correspondence, neither Mr Chalmers nor Ms Bowden were called to give evidence.

7.3.3 Use of ISG Logo in the Rotainers Websites

1. Mr Pinder gave further evidence in cross-examination that the ISG Logo is always prominent. When that assertion was contested by reference to the First and Second ISG Rotainers Logo, Mr Pinder contended that the First and Second ISG Rotainers Logo are to be read as the ISG Logo, along with the words of their product, being "Rotainers".
2. For the reasons I set out above in the Rotainers Websites section, I reject Mr Pinder's reading. I do not consider the Rotainers Websites make it clear that the mark under which the "rotainer goods" are offered is ISG. I further consider that the design of the First and Second ISG Rotainers Logo, as read against ISG's instructions to render the ISG Logo subsidiary to the prominent stylised words "Rotainer" in its correspondence to Click Click Media dated 28 October 2021, evince a use that falls short of the requisite good faith.
3. My finding is consistent with FH Faulding, where McTiernan J held that the good faith defence will likely fail if particular prominence is given to the word in question. In that case, the registered trade mark was "Barrier Cream" and the defendant had used the word "barrier" to describe its own creams. Whilst the defendant succeeded in expunging the mark as descriptive, it was unsuccessful in establishing a good faith defence under the equivalent s 64(1)(b) of the Trade Marks Act 1955 (Cth). Though his Honour accepted that the word "barrier" was an apt description of the defendant's creams, he was not satisfied that the defendant had used the word for a purely descriptive purpose. This was because "Barrier" appeared on the packaging in larger print than surrounding words, was set against a contrasting background and was repeated on three sides of the defendant's carton. In that light, his Honour concluded that there was "[...] strong ground for finding objectively that the "get-up" was designed to promote the sale of the defendant's creams by exploiting the possibility of confusion [...]": FH Faulding at 545.

1. For the reasons above, I consider that ISG and Mr Pinder's intentions in their various uses of the word "Rotainer" were not in good faith. I discuss this further in section 8.2 below.

7.4 Same goods or goods of the same description

1. For the purposes of s 120(1), CRS contends that ISG has used the Registered Mark in respect of the same goods for which the mark is registered, relevantly:

Apparatus for lifting and transportation; machines, apparatus and installations for conveying goods; [...] apparatus and equipment for use in mining; haulage equipment and apparatus (mining)

1. ISG accepts that if it is found to have used the mark "Rotainers" in relation to tipplers, that use is in respect of the same goods as the goods for which the Registered Mark is registered. However, ISG contends that use in relation to rotating containers of the Registered Mark is not use in relation to the same goods for which the Registered Mark is registered, as containers are not specifically included in the list of goods for which the mark is registered. Further, ISG submits that containers fall in class 6 which, contrary to class 7, is directed to static metal objects and containers for storage or transport.
2. The Full Court in Killer Queen, LLC v Taylor (2024) 186 IPR 103 at [57] (Yates, Burley, and Rofe JJ) recently set out the appropriate approach to the task of construing the goods and/or services in respect of which a trade mark is registered. In particular, the classification of goods and services according to classes is primarily a matter of convenience in administration - for example, to facilitate searches. The nomination of a class for particular goods is not decisive as to the scope of a given registration.
3. The Register should be understood through the eyes of persons interested in knowing the scope of the monopoly. This is likely to include other traders who may be interested in using or licensing the trade mark: Woolworths Limited v BP plc (No 2) [2006] FCAFC 132; (2006) 70 IPR 25 at [58] ( Heerey, Allsop and Young JJ) and also persons interested in dealing with the trade mark, for instance by seeking a licence or taking an assignment of it. Generally, such persons can be expected to be familiar with the language and expressions used in the trade concerned: Killer Queen at [57].

1. In this section, I refer to the Rotainers Website as the Rotainers Websites. I refer to the Rotainers Websites specifically because they contain the bulk of ISG goods which ISG has associated with (by reference to) the Registered Mark, including because the Rotainers Websites replicate the Rotainer sub-pages found in the various iterations of the Pit to Ship Website. I have found the use of "Rotainers" on the Rotainers Websites to be use of the Registered Mark as trade mark.
2. The Registered Goods include "equipment" for various uses, including for "lifting", "transportation", "use in mining" and "haulage". The word "equipment" is an ordinary English word. There is no evidence to suggest it has a special or technical meaning. The Macquarie Dictionary defines "equipment" as "anything used in or provided for equipping" or "a collection of necessary implements (such as tools)". Thus, "equipment" for lifting or transportation or for use in mining or for haulage means anything used in, or provided for equipping, or a collection of necessary implements for transportation or use in mining or haulage.
3. The Registered Goods also include "apparatus" for various uses, including for "lifting", "transportation", "conveying goods", "use in mining" and "haulage". The word "apparatus", like "equipment", is an ordinary English word. The Macquarie Dictionary defines "apparatus" to mean "an assemblage of instruments, machinery, appliances, materials, etc., for a particular use" or "any complex appliance for a particular purpose". An "apparatus" for lifting or transportation or conveying goods or use in mining or haulage means, inter alia, a complex appliance for those particular purposes. The evidence shows that containers used in container rotators are specifically adapted for their intended purpose, and that those containers are supplied assembled with other parts or accessories, including removable lids.
4. "Rotainer" is used as an indication of origin for goods offered for sale or supply on the Rotainers Websites. The Rotainers Websites:

(a) discuss products in terms of solutions for the transporting of materials such as grain and mined ores and commodities;

(b) speak of products being suitable for minimising dust and spillage and product loss during transportation on trains, trucks and ships; and

(c) describe how the products are changing the logistic, storage and ship loading process.

1. The Rotainers Websites emphasise the use of the "rotainers" for the transport or haulage of mined commodities. Three case studies are presented under the heading "Latest News & Articles". Two uses relate to a use for mining and hauling and transporting the mined product from the mine; the other use conveys a product (urea) away from where it is produced. The Rotainers Websites also feature pictures of tipplers unloading containers. Under the heading "Tailored Solutions", ISG makes the following offer: "[i]f you need a solution to loading and unloading materials from trains, trucks and ships. Our rotainers are the answer in conjunction with the RAM Revolver".
2. Accordingly, I consider that the person interested in dealing with the trade mark, for instance by seeking a licence or taking an assignment of it, would understand the "rotainer" products featured on the Rotainers Websites to fall within the description "apparatus and equipment for us in mining; haulage equipment and apparatus (mining)", as well as "apparatus and installations for conveying goods" of the Registered Goods.
3. I consider that the use of "Rotainers" on the Rotainers Websites to be use in respect of the same goods as the goods for which the Registered Mark is registered.

1. In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; (2020) 158 IPR 9 at [277]-[286], Burley J considered the authorities regarding whether certain goods are "goods of the same description as those appearing in the Register" for the purposes of ss 44, 101 and 120 of the TMA. At [280], Burley J set out the three principal factors used to assess whether goods are of the same description, none of which are decisive:

(1) the nature of the goods, including their origin and characteristics;

(2) the uses made of them, including their purpose; and

(3) the trade channels through which the goods are bought and sold.

1. As to the third factor, Kenny J in McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102 observed at [18] that:

[...] it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade.

(Citations omitted.)

1. First, as to the nature of the goods, rotatable or rotating containers are specially designed to be used together with container rotators and accessories such as tipplers, and they form part of a container rotation system. The OZ Minerals project exemplifies this, where CRS's tippler or spreader was explored for compatibility with ISG's rotatable containers.
2. As discussed above, the Rotainers Websites emphasise that the "rotainers" offered are specifically designed to be used as equipment for the haulage of bulk commodities. Alternatively, the Pit to Ship Website emphasises that the "rotainers" are designed to be used as equipment for the transport and haulage of bulk commodities from "pit" to "ship".
3. As to the trade channels, the goods under consideration are all sold though the same trade channels in these sense that the container rotator and containers** - together, parts of a container rotation system - are offered through the same source, being the CBH field. An example of a third party which supplies both container rotators and containers, and therefore the container rotation system in its entirety, is Qube. The evidence shows that CRS also offers the entire system - including both container rotators and containers - **and that it competes directly with ISG.
4. Third, the evidence shows that customers who purchase tipplers and containers often seek to do so from a single source.
5. I therefore consider that the containers offered for sale and supply by ISG on the ISG Websites are goods of the same description as the goods for which the Registered Mark is registered.

7.5 Substantially identical or deceptively similar

1. ISG accepts that "rotainer(s)" is substantially identical to the Registered Mark.
2. However, ISG observes that various allegedly infringing uses are use as part of a composite phrase, and not use of "rotainer(s)" or of the Registered Mark alone. This includes:

(a) ISG's use of the ISG Rotainers Logo, being a stylised and capitalised "Rotainers" with the ISG Logo on the Rotainers Websites prior to October 2022;

(b) ISG's use of "Rotainer" in its invoice, "ISG A TYPE Rotainer"; and

(c) ISG's use of "Rotainers" on LinkedIn, "ISG Rotainers System".

1. ISG submits that all uses from (a) to (c) are composite phrases or images that are neither substantially identical nor deceptively similar to the Registered Mark.
2. Critically, regarding (a), I note that ISG's submission that the First and Second ISG Rotainers Logo involve use of "Rotainers" as part of one composite trade mark containing the word "ISG" sits at odds with Mr Pinder's evidence, which was that there was no composite mark, just the ISG Logo and the word "Rotainers".
3. The relevant test of deceptive similarity to be applied is the "imperfect recollection" comparison described by Windeyer J in Shell Co at 415:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole [...]

1. The High Court confirmed in Self Care at [3], [36] and [50] that the reputation of the registered trade mark plays no role in the analysis of deceptive similarity under s 120(1) of the TMA. The test of deceptive similarity "must be applied whether the mark of which infringement is alleged is newly registered and almost unknown or has been prominently displayed on well-known merchandise for many years": Self Care at [21] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ), quoting CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42 at [43] (Ryan, Branson and Lehane JJ). See also Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157; (2022) 168 IPR 42 at [68] (Yates, Abraham and Rofe JJ).
2. As discussed above, I consider that the ISG Logo and the two versions of the "Rotainers" mark are separate marks when used on the Rotainers Websites.
3. If, the marks were instead to be considered as a composite mark, I consider that the composite mark would be deceptively similar to the Registered Mark. As I noted above, The ISG Logo portion of any composite mark on the Rotainers Websites is very small. It is barely possible to discern the letters "ISG" if looking hard. The stylised tippler appears more as a green diamond with a yellow wedge. The whole of the Registered Mark is contained within the purported composite mark. The only difference being the tiny ISG Logo on the left side of the stylised word "Rotainers". The word "Rotainers" is the visually dominant part of the purported composite logo.
4. Regarding uses in (b) and (c), I consider that the use of "Rotainer(s)" is substantially identical or deceptively similar to the Registered Mark. This is for reasons including that ISG and "Rotainer(s)" would be read separately as two distinct marks.

1. If, contrary to my conclusion, infringement is not established under s 120(1), and s 120(2) comes into play, ISG relies on the proviso to s 120(2), which states:

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

1. ISG bears the onus of establishing that the proviso applies.
2. Both referred to the principles to be applied as set out in Goodman at [361]-[368].
3. CRS relied as a starting point upon the statement referred to in Goodman at [363] that, if an allegedly infringing mark has been found to be deceptively similar to a registered mark, "[...] then it would, in many instances, render it more likely (though not inevitable) that the actual use of the allegedly infringing mark was likely to deceive or cause confusion [...]": E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386 at [76] (Moore, Edmonds and Gilmour JJ).
4. ISG contends that by reason of:

(a) all of ISG's uses of "rotainer" being in conjunction with or alongside an ISG mark or the ISG Logo;

(b) the word "rotainer" being a term commonly used in the CBH field with an "understood generic connotation";

(c) there being a specialised technical consumer base and where the goods cost large amounts of money;

(d) "Rotainers", purportedly meaning rotatable containers or the container rotation system, are rarely bought individually - thereby increasing the cost;

(e) the purchasing process is frequently protracted; and

(f) there being inadequate evidence of actual confusion

no consumer is likely to be deceived by ISG's use of the Registered Mark.

1. As to the first point, CRS submitted that the fact that the Registered Mark has been used in conjunction with, or in close proximity to, the ISG name or the ISG Logo, even if accepted - noting that the proximity in question varies across ISG's numerous uses - would not dispel the likelihood of consumer deception or confusion. That is so because use in proximity does not answer the question of association. It is sufficient if the notional consumer would be caused to wonder whether there was some kind of commercial association: Self Care at [70]-[71].
2. CRS submitted that, in assessing the likelihood of deception or confusion resulting from ISG's conduct, the Court should have regard to evidence that ISG has - and has actively promoted - an association with a third-party tippler manufacturer, RAM. CRS submits that, as a result, consumers familiar with ISG's methods and reliance on other tippler manufacturers would not be surprised - and would therefore readily be deceived into thinking - that ISG would be promoting its goods in conjunction with another third-party manufacturer, being the owner of the trademark, CRS.
3. By using CRS's marks including "Rotainer" and "Container Rotation Systems" on the ISG Websites and in other marketing materials without authorisation, ISG is therefore likely to confuse consumers into associating ISG with the reputational benefits of CRS. In counter to this submission, if sophisticated consumers are aware of the association ISG has with RAM, specifically - rather than RAM, as a third-party manufacturer in general - then the consumers may well be surprised to find that ISG had changed its primary tippler supplier and appeared to be associated with CRS instead. Viewed this way, confusion may not be likely for a consumer informed of ISG's existing associations who sees its use of the Registered Mark.
4. The second point about genericism that ISG asserted in support of the s 120(2) proviso was not made out on the evidence. CRS also argued that the second point is a moot point; if a genericism argument were supported and consequently the Registered Mark was liable to be cancelled, the s 120(2) defence would not be enlivened.
5. As to the third point, ISG suggests that it is plain, in light of the technical consumer base who would be inquiring about ISG's products, and the drawn-out purchasing process, that purchasers understand who they are purchasing their products from and are therefore not likely to be confused. ISG relies on Dunlop Aircraft Tyres Ltd v Goodyear Tire and Rubber Company [2018] FCA 1014; (2018) 134 IPR 220 at [307] (Nicholas J). In rebuttal, CRS suggests that the evidence establishes varying levels of customers' familiarity with CBH equipment, distinguishing the findings in Dunlop. In any case, CRS contends that the protracted nature of the purchasing process and the fact that, at the end of the process, consumers know where their products come from, is no answer to the likelihood that consumers would be confused at the stage of making an initial inquiry with ISG, thereby being induced into the "marketing web". CRS submits that the relevant time for assessing the likelihood of deception or confusion is at the time of the trade mark use.
6. As to ISG's last point about actual confusion on the evidence, there were two such examples in the evidence of Mr Perkins and Mr Solly, with a further two email exchanges that CRS referred to. For example, in Mr Solly's evidence, when an internet search looking for "rotainers" led him to the impugned Rotainers Websites, he was confused and thought that its owner, ISG, had an association with Mr Bridle's Rotainer business. At the time of making the internet search, Mr Solly was not well acquainted with ISG, although he had an email inquiry with ISG some seven years prior, which he had forgotten at the time of the search. While ISG sought to undermine the reliability of Mr Solly's evidence based on inconsistencies in his accounts as to the confines of his search and his knowledge of ISG, CRS submitted that in any case, an inquiry into these examples of actual confusion is illusory, because actual confusion is not the test; the onus is on ISG to show that the conduct is not likely to deceive or cause confusion, and ISG has failed to discharge that onus.
7. For the reasons above, I consider that even if contrary to my findings, infringement is not established under s 120(1), infringement will be established under s 120(2) because ISG did not discharge its onus to prove that its various uses of the Registered Mark were not likely to deceive or cause confusion.

8.2 Good faith adoption of "rotainer" to describe the characteristic of the goods

1. ISG also relies on the defence in s 122(1)(b)(i) that it has used the word "rotainer(s)" in good faith to identify the kind of their goods.
2. Section 122(1)(b) of the TMA provides:

122 When is a trade mark not infringed?

(1) In spite of section 120, a person does not infringe a registered trade mark when:

[...]

(b) the person uses a sign in good faith to indicate:

(i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

[...]

(Emphasis in original.)

1. In Bohemia Crystal Pty Ltd v Host Corp Pty Ltd [2018] FCA 235; (2018) 129 IPR 482, Burley J explained at [296] the operation of this defence:

[...] Section 122(1)(b)(i) calls for consideration not of whether there is trade mark use, but rather whether there is use in good faith. The prefatory words in s 122(1) "in spite of s 120" make plain that an otherwise infringing use may be excused if the conditions of s 122(1) are satisfied, but the scope of this aspect of the subsection does not appear to have been expanded.

(Emphasis in original.)

1. The purpose of s 122(1) is to protect the fundamental right of a trader to honestly describe its product. Section 122(1) functions as a "second-line' mechanism that preserves that right, with the "first line" mechanism being that a use of a registered mark will only infringe if it is used as a trade mark: Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82; (2020) 150 IPR 11 at [213] (O'Bryan J).
2. ISG relies on the following to establish their use in good faith:

(1) ISG has used "rotainer" in good faith to identify the kind of ISG's goods, i.e., rotainers, purportedly meaning rotatable containers;

(2) while ISG was aware of the Registered Mark, it had an honest belief that no confusion would arise and no intention of wrongfully diverting business from CRS: see Urban Alley at [214], [222]; and

(3) ISG's conduct following the commencement of proceedings, i.e., pausing its plans to use the word rotainer on material other than the ISG Websites and the Additional ISG Websites such as brochures, invoices, contracts and other business documentation until the final determination of the matter, is a sign of good faith.

1. "Good faith" as used in the context of s 122 is taken to mean "honest" use: Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; (2010) 89 IPR 457 at [161] (Yates J). This requires an honest belief, at least at the time of adopting the mark, that no confusion would arise by reference to the earlier trade mark's reputation and a lack of intention to divert business or "sharp conduct with an eye on wrongly diverting business": Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153; (2013) 105 IPR 1 at [73]-[74] (North, Middleton and Barker JJ).
2. The onus is on ISG to establish that it acted honestly and without any ulterior motive: Nature's Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117; (2010) 87 IPR 464 at [51], [54] (Stone, Gordon and McKerracher JJ).
3. Something less than a fraudulent intention in the common law sense will suffice to preclude use from being use in good faith: Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 21 IPR 1 at 32-33 (Gummow J). This can involve use of the mark for an ulterior motive or for the purpose of causing the detriment of the original mark or its owner. In Johnson & Johnson, an international strategy to make the word "Caplets" into a generic word, as a way to avoid infringement, was held to not be use in good faith: Johnson & Johnson at 33-34 (Gummow J).
4. For the reasons I have discussed above, I do not consider that the word "rotainer" was descriptive at the date of filing. I also reject Mr Pinder's contention that "rotainer" evolved to become descriptive due to the inconsistencies in that argument, and the lack of any supporting evidence substantiating such an evolution theory.
5. Despite Mr Pinder's stated belief that no one would be confused, his subjective opinion is at odds with the circumstances surrounding ISG's use of the Registered Mark and Mr Pinder's and ISG's conduct from 2016 onwards.
6. Further, the chronology of ISG's adoption of "Rotainer(s)" establishes an absence of good faith in ISG's adoption and use of the "rotainer" mark. In summary:

(a) Mr Pinder had knowledge of the Registered Mark since 2012, around four years before ISG's first use of "rotainer(s)";

(b) An initial use by ISG of "Rotainer(s)" was in the Generic Tippler Statement on the Pit to Ship Website in August 2016, immediately after ISG's failed preliminary discovery application, in circumstances where Mr Pinder was "annoyed" with CRS;

(c) Mr Pinder's strategy was to "genericise" the Registered Mark. In his own words as recorded in contemporaneous evidence, he stated "we are trying to make the word Rotainers generic";

(d) Mr Pinder's intention in using "rotainer(s)" was to divert business from CRS by attracting customers from CRS. To that end Mr Pinder instructed Click Click Media to include the term "rotainer(s)" in the Google key words for advertising;

(e) ISG's acquisition of five domain names with the word "rotainer", including "rotainer.org", "rotainer.net", and "rotainers.com", each of which redirected to ISG's Pit to Ship Website; and

(f) Saturation references to "rotainer(s)" on the ISG Websites, including replacing references to containers with "rotainer(s)".

1. None of the conduct outlined above is consistent with a good faith use of "rotainer(s)" by ISG. Rather, ISG's conduct is more in the nature of the "assiduous efforts of an infringer" described by Windeyer J in Re Bali Brassiere Co Inc's Trade Mark and Berlei Ltd's Application [1968] HCA 72; (1968) 118 CLR 128 at 133.
2. Finally, I accept CRS's submission that the fact that ISG did not make proper inquiries or seek to obtain legal advice notwithstanding its knowledge of the CRS's Registered Mark goes against a finding of good faith. In this regard, the relevant facts of this case are analogous to that in Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239 at [107], [150], [154] (Beach J), wherein the lack of evidence that ISG had sought or received any legal advice as to the use of the mark "rotainer" is indicative that good faith is not established. This is especially so when the impugned conduct continued after ISG received a letter of demand on 16 May 2022 (the Letter of Demand), in which CRS asserted its rights over the Registered Mark. I reject ISG's submission that its conduct following receipt of the Letter of Demand is not determinative and that its conduct following the commencement of proceedings ought to be considered as indicative of good faith. The test of good faith is concerned with whether a defendant honestly believed, at the time of the impugned conduct, that no confusion would result and had no intention of wrongfully appropriating the plaintiff's goodwill: Optical 88 at [37]-[49], [163] (Yates J). On the contrary, that ISG had the ulterior motive to seek to benefit from the word "Rotainer" is conclusive evidence of bad faith.
3. Accordingly, I consider that ISG has failed to lead sufficient evidence of its purported good faith and therefore cannot rely upon s 122(1)(b)(i) of the TMA as a defence to any infringement.

1. CRS seeks orders for additional damages from ISG in the event that it succeeds on its infringement case. Given that the proceeding was bifurcated in liability and quantum, the only question to be determined at the liability stage is whether the conduct of ISG has enlivened an entitlement to CRS of an order for additional damages.
2. Section 126(2) sets out five relevant matters to which the Court must have regard in determining whether to award additional damages. Those matters, to which the Court must have regard, are not in the nature of preconditions which must be satisfied in order to make the award: Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd (No 2) [2008] FCA 746; (2008) 76 IPR 763 at [17] (Besanko J). The statutory factors set out in the section do not exhaust all relevant matters for consideration, but they do indicate the considerations to which Parliament turned its attention. The five factors are:

(a) the flagrancy of the infringement; and

(b) the need to deter similar infringements of registered trade marks; and

(c) the conduct of the party that infringed the registered trade mark that occurred:

(i) after the act constituting the infringement; or

(ii) after that party was informed that it had allegedly infringed the registered trade mark; and

(d) any benefit shown to have accrued to that party because of the infringement; and

1. CRS submits that the following matters support its claim for additional damages:

(a) Mr Pinder's decision to use "rotainer(s)" on the ISG Websites was deliberate and made with knowledge of the Registered Mark;

(b) ISG's use of "rotainer(s)" was done with the intention of diverting consumers to the ISG Websites;

(c) ISG would have derived a benefit from its use of "rotainer(s)" on the ISG Websites;

(d) ISG continued its conduct after receipt of the Letter of Demand which put them on notice of CRS's position and gave notice of possible infringing conduct; and

(e) the need to deter such conduct generally.

1. ISG contends that none of the matters on which CRS relies on in its pleading justify the award of additional damages or finding of flagrancy. ISG submits that the fact that it is and has been since at least 2010 a direct competitor with CRS and its knowledge of CRS's business and the Registered Mark goes nowhere. The fact that an infringing entity is a competitor of the rightsholder does not justify an award of additional damages. For example, in Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd (2013) 103 IPR 511 at [48], Buchanan J said that he would not have awarded additional damages if infringement had been shown, including because "[...] the respondent set out to position itself to compete with the applicant in its own right by drawing the attention of potential customers to its own capacity to satisfy their requirements. It was not seeking to profit from the applicant's reputation. It was seeking to be chosen in its own right".
2. ISG also contends that its defence - that "rotainer" was descriptive was a reasonable one - is an indicium against the award of additional damages. ISG relies on authorities in the patent context to submit that "the existence of a defence at trial may be [...] [a] relevant factor" in assessing flagrancy, and more generally against the award of additional damages: Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd (2021) 159 IPR 1 at [405] (Beach, Moshinsky and Thawley JJ); Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd [2019] FCAFC 240; (2019) 154 IPR 215 at [69] (McKerracher, Burley and O'Bryan JJ). The same logically applies in the context of s 126 of the TMA.
3. In light of the chronology of ISG's adoption and use of "rotainer" set out above, I consider that conduct takes this case beyond that of a competitor using a too similar mark. There was a conscious adoption of the same mark, an intention to "genericise" the competitor's mark, and an aim to divert trade from the competitor trade mark owner to ISG by use of the Registered Mark. In addition, there was the acquisition of the domain names featuring the competitor's mark and the saturation use of "rotainer(s)" on the ISG Websites.
4. Against the background of the evidence regarding the lack of use of "rotainer" before the Priority Date, and ISG's conduct with respect to the use of the mark "rotainer" as exhaustively discussed above, it is difficult to see how the view that the word "rotainer" was descriptive was a genuinely held belief by ISG.
5. I consider that in the circumstances of this case, the Court's power to include an additional amount in the assessment of damages for trade mark infringement is enlivened.

1. All parties sought to be heard separately on the question of relief if trade mark infringement was established.

1. CRS alleges that misleading or deceptive conduct and other contraventions of the ACL (ss 18, 29(1)(a), 29(1)(g) and 29(1)(h) of the ACL). The conduct said to contravene the ACL comprised the following:

(a) the Generic Tippler Statement published on the Pit to Ship Website from August 2016, and the Generic Container Statement published in as early as March 2021 (the Generic Statements); and

(b) ISG's use of "Rotainer(s)" on the ISG Websites:

(i) to promote its products from February 2020, and in the presentation of internet search results; and

(ii) to represent that the products offered by ISG are those of, or are the same as, those supplied by CRS, which first appeared in early 2021

1. CRS accepts that to succeed in relation to the Website Conduct, it must establish that CRS has the requisite reputation in the word "Rotainer" at the relevant dates.
2. ISG denies the making of the representations. A significant part of the defence to the ACL case is based on ISG's contention that "rotainer" is descriptive. I rejected that contention in the trade mark cancellation case under s 41 of the TMA and will not revisit it in the ACL context.
3. ISG also contends that the representations do not constitute conduct in Australia.

1. The High Court in Self Care at [80] summarised the well-established principles:

[...] Determining whether a person has breached s 18 of the ACL involves four steps: first, identifying with precision the "conduct" said to contravene s 18; second, considering whether the identified conduct was conduct "in trade or commerce"; third, considering what meaning that conduct conveyed; and fourth, determining whether that conduct in light of that meaning was "misleading or deceptive or ... likely to mislead or deceive".

(Emphasis in original.) (Citations omitted.)

1. It is always necessary to commence by asking: "what is the alleged conduct?". If that conduct constitutes conduct in trade and commerce, the High Court in Self Care at [82] identified that the third and fourth steps then require the court to characterise, as an objective matter, the conduct viewed as a whole and its notional effects on the state of mind of the relevant class of persons, judged by reference to its context. Their Honours noted that the context includes both:
   • the immediate context - all the words in the document, or other communication and the manner in which those words are conveyed, not just a word or phrase in isolation; and
   • the broader context - the relevant surrounding facts and circumstances.
2. Conduct which engenders temporary or commercially irrelevant error, although persuasive, is not sufficient to enliven s 18 of the ACL or constitute passing off_: SAP Australia Pty_ Ltd v Sapient Australia Pty Ltd [1999] FCA 1821; (1999) 48 IPR 593 at [51] (French, Heerey and Lindgren JJ); Knight v Beyond Properties Pty Ltd [2007] FCAFC 170; (2007) 74 IPR 232 at [58] (French, Tamberlin and Rares JJ). Further, there is a difference between a customer who is "momentarily confused" and a customer who is "misled or deceived in a material sense_": Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd_ (2023) 170 IPR 195 at [112] (Stewart J).
3. Finally, an intention to deceive is highly relevant to the assessment of whether a conduct is likely to deceive potential consumers. As Dixon and McTiernan JJ said in an already quoted and frequently cited passage in Australian Woollen Mills at 657: "[...] when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive [...]". However, an intention to deceive is not determinative and must be weighed against other evidence; after all, an intention to deceive may nevertheless fail in its purpose: Telstra Corp at [553]-[555] (Murphy J).
4. More recently, in Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50 (BBnT HCA) at [48]-[57], the High Court comprising Gageler CJ, Gordon, Edelman, Jagot and Beech-Jones JJ fleshed out the manner in which state of mind evidence are to be dealt with under ACL claims. While a person's dishonest intention is not an element of the statutory proscription under s 18(1) of the ACL, the person's state of mind may nonetheless be relevant in the ways described by Australian Woolen Mills. Because s 18(1) of the ACL does not depend on a defendant's dishonest intention, the defendant's state of mind, directly or by analogy, may engage the approach to evidence explained. Thus, at [56], the High Court clarified that the evidentiary approach in Australian Woollen Mills is "not confined to cases of a subjective intention to mislead. Nor are they engaged in a "border line case". And nor is such resulting evidence to be classified as "some evidence" only [...]".
5. When a trader adopts a mark or get-up to appropriate the rival's reputation, the trader's belief about market benefit can serve as a reliable expert opinion on likely deception, even without a dishonest intent to mislead. Wilful blindness, as opposed to proven dishonesty, can constitute relevant and cogent evidence toward the objective inquiry on the likelihood of deception.
6. Accordingly, I adopt my findings on ISG's intention in using "rotainer(s)" and lack of good faith in its adoption of "rotainer(s)" in my analyses of CRS's claims under s 18(1) of the ACL.
7. Finally, I note that the relevant date for assessing whether ISG's conduct contravened the statutory proscriptions of the ACL is the date of commencement of the impugned conduct.

1. Container rotation systems are not marketed to, or purchased by, the general public. Customers or potential customers for CBH equipment can come from different segments of the industry including manufacturers, processors, port operators, and shipping, transport and logistics companies. ISG submits that the customer base in the CBH industry is sophisticated, with technical know-how and high levels of understanding in relation to CBH equipment, as the equipment is often purchased by procurement personnel from mining, port, or logistics companies. But CRS submits that this is not always the case and customer sophistication can vary based on factors like the location of the customer, the resources available to them, and the methods they have traditionally used for handling bulk materials, if any. CRS also submits that the knowledge of consumers tends to be lower at the inquiry stage, and grows throughout the purchasing process, which was consistent with the evidence of Mr Gallie and Mr Bridle.
2. On the evidence, the reasonable consumer in this case is someone with experience in, and familiarity with, the CBH industry. They are most likely to be primarily a port operator, or from a mining, shipping, transport or logistics company. The class would include consumers who have been involved in a previous purchase of a container rotation system or who have encountered such a system in their work. The class would also include first time consumers who have not been involved in a previous purchase, who may not be familiar with rotating containers or tipplers or the companies that supply or sell them.

1. ISG is incorporated in Australia. The content for each of the ISG Websites was uploaded in Australia. Each of the ISG Websites was accessible in Australia and addressed to all consumers, including those located in Australia.
2. ISG's use of the mark "rotainer" on the ISG Websites and the posting of the Generic Statements was done in the course of ISG operating its business, and was done in the course of trade and commerce in Australia.

1. CRS relies on two species of conduct: the Generic Statements, and the Website Conduct, each of which are discussed below.

1. I have set out the facts surrounding the Generic Tippler Statement above.
2. CRS submits that via the Generic Tippler Statement ISG represented that:

(a) "Rotainer" is a generic word for, or is descriptive of, a container rotator or tippler;

(b) "Rotainer" is not a trade mark or brand name; and

(c) the words "Rotainer" and "tippler" are interchangeable or equivalent terms.

1. ISG accepted that it represented on the Generic Tippler Statement that the words "rotainer" and "tippler" were interchangeable, albeit in contradiction to Mr Pinder's subjective understanding of the word "rotainer" as being descriptive of a rotatable container or the container rotation system only. ISG also accepts that the use of "rotainer" solely to refer to a container rotator has not become widespread. However, ISG contends that the representation that "rotainer" was interchangeable with "tippler" was correct at the time it was made. ISG denies that the Generic Tippler Statement represented that rotainer is a generic word for tippler.

1. The facts surrounding the Generic Container Statement are set out in section 7.2.10 above.
2. CRS submits that the Generic Container Statement represents that:

(a) the word "Rotainer" is a generic word for, or is descriptive of, a type of container (i.e., rotatable container); and

(b) the word "Rotainer" is not a brand name.

1. ISG accepts that via the Generic Container Statement it represented that "rotainer" is and was generic or descriptive of "containers" for use with an apparatus for tipping bulk goods. However, ISG denies that the website extract represents that "rotainer" is a generic or descriptive word for "tippler". ISG contends that in the context of the website extract, the use of the word "generic" would be understood by those in the CBH field in its ordinary English usage (i.e., characteristic of a class) rather than in any trade mark sense (i.e., s 24).
2. ISG also accepts that by the website extract it represented that "rotainer" is and was descriptive of containers used in an apparatus for tipping bulk goods.
3. The Macquarie Dictionary relevantly defines "generic" as "relating to a genus", "applicable or referring to all the members of a genus or class", "an expression referring to all the members of a class, such as the French, the poor, etc" and "identified by the name of the product itself, not by a particular brand name".

1. The parties bundled the two sets of Generic Statements up together in their submissions. I will therefore discuss them together.
2. In addition to the contention that "rotainer" is descriptive, ISG contends that the generic statements are not misleading or deceptive as they are both statements of opinion, and that the sophisticated reader would not perceive ISG to be making a statement of fact. Further, ISG contends that the generic statements were genuinely held opinions of Mr Pinder.
3. CRS takes the point that ISG did not plead that the statements were statements of opinion. Consequently, CRS was denied the opportunity to seek discovery as to whether Mr Pinder's belief was honestly held, and ISG should not be able to rely on this assertion in closing submissions.
4. In any event, I do not agree that the Generic Statements were statements of opinion, or that the consumer reading them would consider them to be statements of opinion rather than fact. The reader would perceive the Generic Tippler Statement, as Mr Pinder intended, to be an educative statement as to terminology and industry expressions used in the CBH industry. There is nothing to convey that the statements are not statements of fact but the opinion of ISG or Mr Pinder. In an email to Click Click Media in February 2021 in relation to the addition of the Generic Container Statement to the Pit to Ship Website, Mr Pinder stated "[...] please add the closing statement after the below wording, we are trying to make the word Rotainers generic and this information provides proof".
5. Mr Pinder's evidence at the hearing was that "rotainer" had "evolved" by 2021 to become descriptive of rotatable containers and transportation systems using rotatable containers. Consistent with an aim to encourage the word "rotainer" to be generic, Mr Pinder's written evidence was that "since I wrote the blog the use of the term "rotainer" to refer solely to the tippler has not become widespread".
6. As at August 2016, it was not true that "rotainer" and "tippler" were synonymous or interchangeable. Nor was it true that "rotainer" was a generic - in any sense - word for, or descriptive of, a rotatable container. For a period of some five years, the Pit to Ship Website displayed both of the Generic Statements, despite their contradictory nature.
7. I do not consider that Mr Pinder held the honest belief as at August 2016, that "rotainer" meant "tippler" and that they were interchangeable, or that "rotainer" was descriptive. At that date, Mr Pinder was aware of CRS's Registered Mark. Further, it was the aim of Mr Pinder to harness the word "rotainer" to generate internet traffic to the ISG Websites and to render the Registered Mark generic by encouraging the descriptive use of the term "rotainer" via the factual Generic Statements. Neither of these aims align with the Respondents' proposition that Mr Pinder held the honest belief as at August 2016 that "rotainer" was interchangeable with "tippler" or that "rotainer" was descriptive of rotatable containers.
8. I consider that by making the Generic Statements, ISG has contravened s 18 of the ACL.
9. Implicit in the statements about "rotainer" being descriptive and interchangeable with tippler is the representation that "rotainer" is not a brand - as it could not be a brand if it were another word for a tippler or a rotatable container. However, I consider that that representation which might be understood by trade mark lawyers, is too subtle for the consumers from the CBH field reading the ISG Websites. Accordingly, I do not find that the Generic Statements represent that "rotainer" is not a brand.

1. The conduct of which CRS complains is ISG's use of the mark "Rotainer", including on the ISG Websites, in a manner which causes ISG's Websites to appear in internet search results (both paid and organic). By that conduct, CRS contends that ISG has engaged in misleading or deceptive conduct, or made false representations including by representing that the goods it supplies are those of CRS, or that they are the same as or of the same quality as the goods supplied by CRS, or that there is an association between ISG and CRS (the Website Conduct Representations). This is the conduct which also forms the basis of CRS's passing off claim.
2. Considering the examples of ISG's use of "rotainer(s)" on the ISG Websites in the Background section above, examples of the use on which CRS focussed for the purpose of its ACL claim include:

(a) "ISG [...] can provide you with a rotainer";

(b) "We supply Container Rotation Systems (Rotainers) for mining, grain & ship loading industries";

(c) "Our rotainer container designs" and "Our rotainer designs";

(d) using the word "Rotainer" as a title or sub-title of products, including on product-specific pages on the Pit to Ship Website;

(e) video using "Rotainers" entitled "ISG Case Studies 25: ... ISG Rotainers System" on the Pit to Ship Website and a LinkedIn post in late 2021; and

(f) the domain names in the Rotainers Websites.

1. CRS submits that it had a significant and unique reputation in the sign "Rotainer" by August 2016 - when the Generic Tippler Statement was first made - and that that reputation had increased by early-2020 when ISG expanded its use of "rotainer(s)" on the Pit to Ship Website.
2. CRS contends that consumers searching on the internet for CRS and its products using the term "rotainer" were "enticed" onto the ISG Websites by ISG's use of "rotainer(s)" as a search term in searches, which caused the ISG Websites to be retrieved in search results and to be optimised in those search results. As consequence, consumer traffic that would otherwise have been directed to the CRS Website and the Rotainer Websites was diverted to the ISG Websites instead.

1. The evidence as discussed in the Background section above demonstrates the considerable use that has been made of the Registered Mark by CRS (and prior to it, by AMMESA) over more than a decade since 2011.
2. The number of sales of "Rotainer" branded tipplers by AMMESA and CRS, for installation in Australia, has not been extensive. However, the level of reputation required depends on the nature of the plaintiff's business. The test is one of commercial relevance: ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 at 272 (French J, as his Honour then was). Where the price of the relevant goods is high, fewer people need to have knowledge of the plaintiff's indicium than if the goods are low-cost consumer items. Tipplers are very large and very expensive items of equipment. Further, the supply and installation of the first AMMESA "Rotainer" branded tippler at Flinders Ports in 2011, was a newsworthy event which generated many articles in the trade press.
3. In addition to published articles and advertisements in industry and trade press featuring the "rotainer" mark, promotional activities were also carried out by AMMESA and subsequently by CRS on their respective websites and in advertisements, brochures and newsletters; on physical signage on its goods, vehicles and premises; at trade shows; on YouTube videos, and; on other merchandise and promotional materials.
4. That CRS had acquired a reputation in "Rotainer" was further established by the evidence of:

(1) Mr Perkins, who gave evidence on the extensive marketing of CRS using the words "Rotainer" and his knowledge that "[...] Rotainer is the brand name for Murray Bridle's equipment".

(2) Mr Fedden, who gave evidence that the three prominent brands of container rotators included "Rotainer", with the other two being "Revolver" and "Rotabox". Mr Fedden also deposed that the names were widely used in industry publications and reports, in marketing and promotion of the systems and equipment sold or provided under those names by manufacturers and suppliers of that equipment. Mr Fedden further deposed that when he heard the word "Rotainer", he understood it to mean container rotation equipment or systems of CRS.

(3) Mr Fitzgerald, who deposed that the word "Rotainer" is the name of the system he knew to be manufactured by AMMESA, associated with Mr Bridle's company, and

(4) Mr Solly, who in cross-examination gave evidence that any mistaken use of "Rotainer" was a biproduct of the reputation and widespread knowledge of the AMMESA/CRS product. Mr Solly described the brand "Rotainer" as "possibly all we were aware of back then", observing that he didn't know if "Rotabox" existed around 2013-2014, and that "people were [...] at the time, mainly aware of the word rotainer or the brand Rotainer".

1. As a result of the continued use of "rotainer" since 2011 in relation to its tipplers and business, whilst considering that the relevant good is a high-cost specialised consumer item, I find that CRS had acquired a reputation in "rotainer" before 2016.
2. In so far as the Respondents contend that CRS has failed to establish a "secondary reputation", that contention wrongly presumes that the word "rotainer" is descriptive such that CRS is required to show sufficient use to displace an inherently descriptive meaning.

1. The question to determine is what meaning does ISG's use of the word "rotainer" on the ISG Websites as at 2016, 2020 and 2021, assessed in all the context - both broad and immediate, convey to the reasonable consumer.
2. The relevant broader context in which the conduct is to be judged is the CBH industry as I have described above, including that CRS and ISG are competitors in that industry, and that CRS had acquired a reputation in Australia amongst CBH consumers in the word "rotainer" before 2016. The CBH industry is a specialised market with a limited number of suppliers and brands. Also relevant is the evidence that companies selling and supplying CBH equipment such as containers may join forces with other companies that sell and supply other CBH equipment such as tipplers to sell the full suite of products - the container rotator system. As I have discussed in section 3.2.1 above, there was evidence of ISG representing that it was an agent for RAM SPREADERS.
3. The relevant immediate context includes the prevalent use of "rotainer" on the ISG Websites after 2020. The ISG Websites were replete with the word "rotainer" which seemed to have been inserted at every opportunity, in the body of the text, in category headings, and including as from 2021, in the domain names of the Rotainers Websites. The ISG Websites also displayed the ISG Logo.
4. It is highly relevant that ISG's conduct began in 2016, with knowledge of CRS's Registered Mark. Following the posting of the Generic Tippler Statement in 2016, the conduct increased from 2020, when - consistent with ISG's twin aims to generate internet traffic while optimising its position in internet search results and to genericise the Registered Mark - ISG began to use the word "rotainer" throughout the remaining webpages of its ISG Websites.
5. For the purposes of ACL, ISG also contends that "rotainer" is descriptive and relies on the comments of Stephen J in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11; (1978) 140 CLR 216 at 229-30 to submit that a court will not grant a de facto monopoly in descriptive words. Should that be accepted, ISG submits that its use of a descriptive word in an attempt to attract business does not involve any illegitimate intention. ISG contends that the use of the word "rotainer" is an "entirely legitimate and necessary aspect of ISG's business of supplying rotainers". As I have found above, I do not consider that "rotainer" was descriptive or had "evolved" to become descriptive as at 2020 to 2021. I do not consider that it was a necessary aspect of ISG's business at any time that it used the word "rotainer(s)".
6. Mr Pinder's evidence was that 30% of ISG's business was generated from internet enquiries.
7. Consistent with the aim to attract internet traffic, ISG was aware of CRS's prior and existing use of the word "rotainer" as a mark when it adopted the word for use on the ISG Websites. The internet traffic ISG sought to engender was the diversion of consumers from its competitor CRS as otherwise there would be no reason to the use of "rotainer", especially where other terms such as rotatable container or tipplers or spreaders were available for anyone who wished to describe the article. As the term "rotainer" was not a descriptive term used by those in the CBH field, those consumers typing "rotainer" into an internet search must be assumed, as at 2016 and 2020-21, to have been looking for CRS and/or its products. ISG's acquisition of the domain names of the Rotainers Websites immediately after CRS's launch of its Rotainer Website further supports the conclusion that ISG was intentionally targeting consumers who were looking for CRS and/or its products.
8. CRS contends that once customers were "enticed" onto the ISG Websites by ISG's use of "rotainer(s)", ISG then had the opportunity to convert the customer enquiries into valuable contracts for the supply of CBH equipment. CRS described this as ISG using the Registered Mark to capture potential customers in its "marketing web" by an erroneous belief engendered by ISG. CRS submits that that is enough to constitute misleading or deceptive conduct, notwithstanding that the consumer could be expected to understand the correct position by the time they actually became a customer. The question of characterisation as to whether a conduct is misleading is "logically anterior to the question whether a person has suffered loss or damage thereby": Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2013] HCA 54; (2013) 250 CLR 640 at [50] (French CJ, Crennan, Bell and Keane JJ).
9. ISG responded that conduct which induces temporary or commercially irrelevant error, although persuasive, is not sufficient to enliven s 18 of the ACL or constitute passing off: SAP Australia at [51] (French, Heerey and Lindgren JJ); Knight at [58] (French, Tamberlin and Rares JJ). Further, ISG observed that there is a difference between a customer who is "momentarily confused" and a customer who is "misled or deceived in a material sense": Brick Lane at [112] (Stewart J). ISG contends that by reason of the presence of the ISG Logo on the ISG Websites, consumers would at most be momentarily confused. Further, by the time any purchase contract was signed, the consumer would be aware that they are dealing with ISG and not CRS. By reason of the protracted purchase process involved in the acquisition of expensive CBH equipment, by the time the purchaser signed the purchase contract there would be no confusion as to who the consumer was dealing with.
10. In Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; (2002) 55 IPR 354, Weinberg and Dowsett JJ (with Branson J agreeing) observed at [117] that:

[...] where a trader, having knowledge of a particular market, borrows aspects of a competitor's get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference from those propositions that the trader, with knowledge of the market, considered that such borrowing was "fitted for the purpose and therefore likely to deceive or confuse". Of course, the trader may explain his or her conduct in such a way as to undermine the availability of that inference [...]

1. I consider that such an inference of the kind described in Sydneywide at [117] is available to be drawn on the basis of the evidence in this case. ISG has tried unsuccessfully to explain its conduct to undermine that inference by contending that "rotainer" is or has evolved to become descriptive.
2. Whilst the effect of the conduct may dissipate as, in the course of lengthy discussions and negotiations for the purchase of CBH equipment, the consumer is likely to learn that they are not dealing with CRS, or that there is no association between ISG and CRS, there are likely to be some consumers that would be enticed to the ISG Websites in the belief that either they are visiting one of CRS's websites or that there is some association between the two companies, such as ISG acting as an agent for CRS or ISG offering CRS tipplers for sale. But for being enticed to the ISG Websites in the first place, those customers who were looking for CRS products may not otherwise have come upon ISG in their purchase process.
3. The presence of the ISG Logo might help reduce the confusion that the consumer has reached a CRS website. However, that the ISG Logo is displayed in the ISG Websites will not reduce the likelihood that a consumer would be caused to wonder whether there is some association between the two companies, such as ISG acting as an agent for CRS or offering CRS tipplers for sale.
4. I am fortified in my conclusion that the reasonable consumer may be "caused to wonder" (see Self Care at [70]-[71]) whether there is an association between CRS and ISG by the existence of the evidence that consumers did in fact question whether there was such an association. That evidence included the following examples:

(a) Mr Perkins who was heavily involved in the CBH industry, and with knowledge of the main players in that industry, gave evidence of his confusion upon seeing ISG's use of "rotainer" and his assumption that ISG and CRS had entered into an arrangement regarding equipment used in rotating container tipper systems. This is particularly because CRS manufactures tipplers but not rotatable containers or "boxes", such that an alliance to become a one-stop shop would be a reasonable inference. During cross-examination, Mr Perkins gave the following evidence:

Well, I'm aware that Murray actually manufactures - or CRS manufactured their own rotating frames, but they don't manufacture the boxes. I'm aware that ISG does manufacture boxes in China. So I assume that they had formed an alliance to sell the products that they manufactured.

(Emphasis added.)

(b) Mr Solly, who recalled that upon searching "rotainer", he clicked the first search result and viewed a website that caused him to think that Mr Bridle had sold to, merged with, or had some association with the owner of that website. The relevant ISG website did not look like the CRS Website that Mr Solly had visited previously and contained repeated references to "rotainer".

1. I give the alleged confusion of Mr Solly's evidence little weight on its own, as Mr Solly could not recall with certainty the specific website he was taken to. However, the examples of confusion strengthen the inference I have independently reached that ISG's conduct was misleading or deceptive: see State Government Insurance Corporation v Government Insurance Office of New South Wales [1991] FCA 198; (1991) 28 FCR 511 at 529 (French J, as his Honour then was). See also Homart Pharmaceuticals Pty Lt v Careline Australia Pty Ltd [2018] FCAFC 105; (2018) 264 FCR 422 at [56]-[57], [59] (Murphy, Gleeson and Markovic JJ).
2. I consider that when the conduct is viewed as a whole, in the immediate and broader contexts identified above, the reasonable consumer coming across "rotainer(s)" on the ISG Websites for the first time would question whether there was some kind of association between the ISG and CRS, or that perhaps ISG was acting as an agent for CRS and its tipplers.
3. I am satisfied that the Website Conduct constitutes misleading or deceptive conduct under s 18 of the ACL. Regarding CRS's allegation that ISG also contravened ss 29(1)(a), (g) and (h), I refer to the High Court's observation in Self Care at [84] that there is no relevant meaningful difference between the words "misleading or deceptive" in s 18 and "false or misleading" in s 29 of the ACL. Under s 29, and for present purposes, it is necessary to identify a representation made in connection with the supply or possible supply of goods, or in connection with the promotion of the supply or use of goods that is false or misleading and meets the descriptions in the foregoing subsections. For the reasons I set out above, I consider that the Website Conduct Representations also contravene ss 29(1)(a), (g) and (h) of the ACL for making false or misleading representations that the ISG goods are of a standard similar to that of CRS's "rotainer" brand, and that the ISG and its goods have a sponsorship and affiliation with or approval of CRS.

1. The elements for the tort of passing off are well established. The tort of passing off involves "three core concepts: reputation, misrepresentation and damage": Stone and Wood Group Pty Ltd v Intellectual Property Development Corp Pty Ltd [2018] FCAFC 29; (2018) 129 IPR 238 at [82] (Allsop CJ, Nicholas and Katzmann JJ). At the same paragraph, the Full Court said that the tort "protects the right of property in business, goodwill or reputation": see also Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70; (2007) 72 IPR 261 at [98] (Black CJ, Emmett and Middleton JJ).
2. It is well established that, although both claims generally run together, an ACL claim has broader application and is generally easier to establish than a passing off claim. The key distinction being that, unlike in passing off, reputation is not an element of the statutory cause of action under the ACL, even though it may be relevant: see In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193; (2020) 150 IPR 73 at [182] (Katzmann J); Cadbury at [99].
3. For the same reasons that I consider that the Website Conduct constitutes misleading or deceptive conduct, I am satisfied that the Website Conduct also constitutes passing off given that CRS and AMMESA had the requisite reputation in "rotainer(s)".

1. CRS alleges that Mr Pinder was either directly involved in the trade mark infringement and contravention of the ACL referred to above or that he was knowingly concerned in, authorised or engaged with ISG in that conduct as a joint tortfeasor. CRS accepts that Mr Pinder's position as a director of ISG cannot of itself make him accessorily liable; more is required. CRS contends that Mr Pinder was more than just the managing director of ISG and, having regard to the nature and extent of his conduct, Mr Pinder was acting beyond his role as a director, in that he had a close personal involvement in the contravening acts and made ISG's torts his own.
2. The relevant joint tortfeasor principles were usefully extracted by Moshinsky J in Playgro Pty Ltd v Playgo Art & Craft Manufactory Ltd [2016] FCA 280; (2016) 117 IPR 489 at [150]-[153].
3. CRS contends that Mr Pinder was an intentional participant in the alleged infringing conducts and that he had knowledge of the essential facts constituting the contraventions. CRS relies upon the following conducts of Mr Pinder to show that his involvement went beyond merely of his capacity as ISG's director:

(a) his preparation of the Generic Tippler Statement;

(b) his directions to include "rotainer" on the ISG websites;

(c) his control over the ISG Websites' content, including keyword choice and the decision to retain the Generic Tippler Statement on the Pit to Ship Website until 2022; and

(d) his knowledge of the activities of CRS and its Registered Mark.

1. Mr Pinder is one of three directors of ISG and a minority shareholder of ISG. Mr Pinder gave extensive evidence via three affidavits, whilst the other two ISG directors did not provide any evidence. Other than being introduced as directors, they did not feature in any of the evidence of Mr Pinder.
2. Mr Pinder's state of mind was relied upon for the purposes of showing good faith under s 122(1)(b) of the TMA. I consider on the evidence outlined above, including Mr Pinder's direct involvement in the conduct relied upon by CRS, that Mr Pinder had a close personal involvement in the contravening acts, which travelled beyond his role as a director of ISG. I therefore conclude that Mr Pinder did have a "common design" with ISG in engaging in the contravening acts, and therefore Mr Pinder was a join tortfeasor of ISG in those contravening acts.

1. At the end of the hearing, ISG sought to tender an Amended Chronology of some 171 entries purporting to be evidence of third-party uses of "Rotainer" in a descriptive manner. I provisionally admitted the Amended Chronology on the basis that I would rule on its admissibility in my reasons. ISG's reliance on the Amended Chronology resulted in the closing submissions being delayed to provide CRS an opportunity to consider and respond to it.
2. Aside from those documents that were separately tendered after they were put to witnesses in cross-examination, or those documents annexed to the evidence of witnesses other than Mr Gomez, I reject the remainder of the documents in the Amended Chronology on the basis of relevance.
3. Aside from the first entry (being evidence concerning use of "rotainer" at SCT in Wales), all the other entries in the Amended Chronology were after the filing date of the Registered Mark. Most of the entries were documents or screenshots of websites. These were interspersed with references to witness evidence. Reference to documents other than in English in the original Chronology (which had 256 entries) had been removed from the Amended Chronology. Only 42 of the entries in the Amended Chronology are dated before August 2016, when the Generic Tippler Statement was posted on the ISG's Pit to Ship Website.
4. Some of the documents evidencing the "uses" of "rotainer" were collected from the evidence of the witnesses or documents put to witnesses during cross-examination, including Mr Pinder, Mr Bridle, Mr Towers and Mr Bannatyne. However, the bulk of the documents in the Amended Chronology were obtained by searches of the internet or from other sources and "exhibited" to three affidavits of Mr Gomez, a solicitor from Harris Gomez Group Lawyers, being the firm on record for the Respondents.
5. In his first affidavit, Mr Gomez explained how he carried out searches using Google and other online search tools for the term "rotainer" being used by persons other than ISG or CRS. He then exhibited a "bundle of documents found as a result of those searches" to his first affidavit as Exhibit HG-1. Given the "volume of the materials found" Mr Gomez then created a summary table extracting screenshots of the use of "rotainer". The instances of use included uses outside Australia and uses up to May 2023.
6. Mr Gomez then carried out searches for "rotainer" using "Trove" and exhibited screenshots of the results of those searches. The total pages exhibited to Mr Gomez' first affidavit, without the bundle of documents in exhibit HG-1, was in the order of around 200 pages.
7. In his second affidavit Mr Gomez exhibited a 50-page bundle of Latin American industry publications referring to the word "rotainer", all of which post-dated the Priority Date, some LinkedIn posts from Latin America, and a "summary of excerpts of email correspondence and their English translations".
8. In his third affidavit, Mr Gomez annexed an eclectic group of documents including an ASX announcement, a Bloomberg article, the Southern Ports Information Guide for the port of Esperance dated July 2022, all up totalling another 200 odd pages. There was no explanation as to how Mr Gomez came across the documents he annexed to his third affidavit.
9. ISG submitted that the documents purportedly evidencing the descriptive "uses" of "rotainer" in the Amended Chronology - other than those tendered during cross-examination - were admissible on three bases: to establish a non-hearsay purpose (the fact and nature of the use of "rotainer") relying on Yarra Valley at [179]-[195]; as business records under s 190 of the Evidence Act 1995 (Cth) as it would be too expensive to call all the authors; and under s 219 of the TMA as being "usage of the trade concerned" and as evidence of use of the trade mark legitimately by other persons, citing Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138; (2024) 181 IPR 78 at [296], [302] and [314] (Charlesworth J).
10. CRS contended that the documents in the Amended Chronology, other than those tendered during cross-examination, should be given no weight because:

(a) in most cases the person using the word "rotainer" in the documents is not a trader using the word "rotainer" as a badge of origin in relation to their equipment, or in the course of trade. Further, many of the authors would not fall within the expanded view of consumers;

(b) the onus is on ISG to establish that each document supports a descriptive meaning. It is not for CRS to rebut a presumption that the use is descriptive. No inference should be drawn in favour of ISG;

(c) the documents are not dictionaries or commonly used and accepted textbooks (cf Yarra Valley);

(d) the context of each document cannot be ascertained. The Court has no information as to the authors, the information to which the authors were privy, what caused the authors to use the word "rotainer", and whether the authors had any connection with ISG or CRS. The relevant traders and consumers are specialised classes; they are not ordinary traders or consumers of fast-moving consumer goods; and

(e) in the case of the documents post-August 2016, and especially post-2020, ISG has made no effort to show that the use is unconnected with ISG's use, in particular on the ISG Websites. For example, the documents include enquiry emails from potential ISG customers.

1. In addition to its general objections, CRS also responded to each individual entry in the Amended Chronology. CRS objects to the majority of entries in the Amended Chronology. For most of the entries, CRS disputed ISG's assertion that the entry showed a descriptive use of "rotainer", including because:

(a) the author was not a trader or a consumer;

(b) the author was not a fluent English speaker;

(c) the entry related to matters outside Australia;

(d) the extract was taken out of context from the full article, which was often lengthy, for example a 246 page report from Northparkes Mines, which contains one "rotainer" reference, or a 120 page Mining proposal that has two references to "rotainer", both on the same page: the first being "specialised lidded containers (Rotainer/Rotabox)", and the second being a photo labelled "Rotainer/Rotabox";

(e) there was or may be a connection with AMMESA or CRS;

(f) the document was a customer enquiry from a potential customer (often outside Australia) of ISG who had seen ISG's use of "rotainer" on the ISG Websites;

(g) the term "rotainer" was used to identify AMMESA's equipment; and

(h) the term "rotainer" was an erroneous reference, for example, a mislabelling of a Qube Rotabox as a Rotainer box or a Qube Rotainer.

1. The following general observations can be made as to the Amended Chronology:

(a) there is no evidence of use of "rotainer" in Australia before the Priority Date.

(b) the post-Priority Date examples of use begin in 2011, coinciding with the installation of the AMMESA tippler in Flinders Ports and the associated publicity and media reporting as discussed above.

(c) according to the CRS responsive table, many of the entries in the Amended Chronology have a link to AMMESA/CRS, either the document discusses equipment supplied by AMMESA, or a facility where AMMESA equipment was installed.

(d) the word "rotainer" - whether as "Rotainer", "rotainer", "Rotainer®" or "#Rotainer" is used or applied inconsistently, sometimes in relation to tipplers, other times containers, sometimes to systems involving tipplers and containers, sometimes to "technology" and sometimes it is not possible to tell how it is being employed; and

(e) the extracts are from a wide variety of sources including emails, LinkedIn and Instagram posts (including videos), websites, meeting minutes, ASX announcements, to company annual reports.

1. I am then left with an Amended Chronology of which the majority of entries are the subject of dispute. I lack the time, evidentiary material and inclination to resolve the plethora of individual objections. Any, at its highest, minimal benefit would be swamped by the time required to resolve the disputed entries. Even then, the entries would be inconsistent in the use of "rotainer". On no basis could the collection of "references" be considered a statistically valid survey of the use of "rotainer" in the CBH industry in Australia. There was evidence during the hearing from witnesses who were cross-examined as to the use of "rotainer" in Australia. The Amended Chronology adds nothing to that evidence.
2. The admission of a confined number of extracts from accepted reference and textbooks published well before the Priority Date and available in Australian libraries in Yarra Valley should not be seen as an invitation to those challenging the registration of a mark to scour the length and breadth of the internet, both current and historical, for any reference to the mark. The out-of-context results of such searches annexed to a solicitor's affidavit and presented as examples of use of the mark are unlikely to be of any meaningful assistance to the Court. Further, the other party will be required to review and respond. This practice is antithetical to the well-known principles which underpin the purpose of s 37M of the Federal Court Act and should stop.

1. All parties sought to be heard on costs following the publication of my reasons. Accordingly, I will make orders for the provision of a further hearing on relief if the parties cannot agree on orders to reflect these reasons. The issue of costs of the proceeding will also be dealt with at that stage if no agreement can be reached.

1. For the above reasons, the application filed by CRS on 29 June 2022 should be allowed. I will make orders for the parties to provide proposed minutes of orders to give effect to these reasons.

I certify that the preceding five hundred and seventy-four (574) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe.