Origin Net Pty Ltd v Origin Energy Limited [2026] FCA 391

1. Insofar as prayers 1 to 3 of the Appellant's Notice of Appeal filed on 23 September 2024 in the Appeal Proceeding concern Australian trade mark application no. 1869156 ORIGIN HOME HQ, those prayers be dismissed to that extent.
2. Insofar as prayers 5 to 9 of the Cross-claimants' Second Further Amended Notice of Cross-claim filed on 23 June 2025 in proceeding no. NSD 1448 of 2023 (the Main Proceeding) concern Australian trade mark application no. 1869156 ORIGIN HOME HQ (being a 'Future Registered Mark' as defined in prayer 5(b) of that document), those prayers be dismissed to that extent.
3. The Respondent in the Appeal Proceeding and Cross-claimants in the Main Proceeding pay the Appellant/Cross-respondent's costs, if any, solely attributable to the claims the subject of the dismissals in orders 1 and 2 above.
4. The Respondent in the Appeal Proceeding pay the Appellant's costs of the opposition to Australian trade mark application no. 1869156 ORIGIN HOME HQ, before the Registrar of Trade Marks.
5. The Appellant in the Appeal Proceeding serve a copy of these orders on the Registrar of Trade Marks within 5 business days.
6. Insofar as order 1 of the orders made by National Judicial Registrar O'Connor on 16 February 2026 concerns category 8 listed in Annexure A to those orders, that order apply as if that category were varied as follows:

(a) the Respondents' use of ORIGIN HOME HQ in relation to goods and services other than the goods referred to in paragraph 56 of the Permezel Affidavit**, up to and including October 2018.**;

(b) the Respondents' use of ORIGIN HOME HQ after October 2018;

(c) sales of the ORIGIN HOME HQ product after October 2018; and

(d) either Respondent's consideration or decision to shut down their website in or after 2021."

Extension of time to provide discovery; consequential orders

1. The date for compliance with order 1 of the orders made by National Judicial Registrar O'Connor on 16 February 2026 (deadline for the Respondents to give discovery) be extended nunc pro tunc to 14 April 2026.
2. The date for compliance with order 2 of the orders made by National Judicial Registrar O'Connor on 16 February 2026 (deadline for the Applicant to give discovery) be extended nunc pro tunc to 14 April 2026.
3. The date for compliance with order 13 of the orders made on 24 November 2025 (deadline for the Applicant to provide the parties' ORIGIN Marks Chronology to the Associate to Justice Burley) be extended nunc pro tunc to 17 April 2026.
4. The date for compliance with order 16 of the orders made on 24 November 2025 (deadline for the Respondents to provide the parties' Energy/Telecommunications Chronology to the Associate to Justice Burley) be extended nunc pro tunc to 17 April 2026.
5. The date for compliance with order 20(b) of the orders made on 24 November 2025 (deadline for the parties to serve any tender material) be extended nunc pro tunc to 1 May 2026.
6. The date for compliance with order 25 of the orders made on 24 November 2025 (parties' opening submissions in chief) be extended to 4 May 2026.

1. The Applicant's interlocutory application dated 9 March 2026 (Review Application) be dismissed.
2. The Applicant pay the Respondents' costs of the Review Application forthwith.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

(Delivered ex tempore, revised from transcript)

1. In this short-form judgment, I address an appeal brought by way of hearing de novo from a decision of a Judicial Registrar of the Court who adjudicated a discovery dispute between the applicant, Origin Net Pty Ltd (ON) and the respondents, Origin Energy Ltd and Origin Energy Retail Ltd (collectively OE).
2. The proceedings are complex and concern allegations by ON of trade mark infringement by OE of a registered trade mark No 1928722 for the word ORIGINNET (in stylised form) and misleading or deceptive conduct. OE has filed a cross claim asserting the invalidity of the ON trade mark on numerous grounds. One issue in dispute concerns, broadly speaking, the honesty of the use by OE and the knowledge that OE had of the ON mark and use of its mark. This was the subject of the pleadings and of the affidavit evidence of Duncan Permezel, a General Manager of OE, dated 12 December 2024 and 10 October 2025.
3. After the pleadings had closed, on 5 June 2025, I made timetabling orders which included orders for categories for discovery to be exchanged, the parties to confer and, if unable to agree, produce Redfern Schedules setting out their respective positions. The dates for compliance with those orders were extended until 17 November 2025, by orders made on 21 October 2025. Sixteen categories were in dispute and they were referred to Judicial Registrar O'Connor, who heard submissions on 5 February 2026 about amended categories of documents. On 16 February 2026 Judicial Registrar O'Connor gave her decision. Relevantly, her orders and reasons refused categories 1 and 2 as sought by ON, but allowed categories 3 and 4 as well as eight other categories. The final form of categories granted in her reasons are attached to this judgment in Annexure 1. On 9 March 2026 ON filed the present interlocutory application seeking review of the decision. It seeks two substantive orders. First, a review of the decision pursuant to s 35A(5) of the Federal Court of Australia Act 1976 (Cth) (FCA Act) and an order insofar as it concerned the refusal of categories 1 and 2 to be set aside. Secondly, orders pursuant to the Federal Court Rules 2011 (Cth) (FCR) rr 20.13 and 20.15 that OE give discovery in the form of different categories, which are annexed to an affidavit of the solicitor for ON, Robert Gorczyca. The proceedings are listed for hearing commencing on 18 May 2026.
4. The first order is procedurally misconceived. ON makes plain in its oral and written submissions that it does not seek review of the decision of the Judicial Registrar but rather a separate adjudication on the fresh categories of documents. The principles underlying the power of a Judge of the Court to review a decision of a Registrar exercised under delegated authority are well established and were considered in Bechara v Bates [2021] FCAFC 34; 286 FCR 166 (Allsop CJ, Markovic, Colvin JJ) at [1]-[7], [17]-[31]. Such an application requires a consideration de novo of the decision upon the evidence that is put before the Court on review. Section 35A(6) provides that the Court may, on application under s 35A(5) or on its own motion, review an exercise of power by a Registrar pursuant to this section and may make such order or orders as it thinks fit with respect to the matter with respect to which the power was exercised. The first order sought by ON does not concern the subject matter of the dispute before the Judicial Registrar.
5. The second order sought (that is, the third order in the interlocutory application) is, in effect, a fresh application for discovery on the basis of new categories of documents. This may be seen from a mark-up of the categories now sought (attached below in Annexure 2), noting the deletion in the chapeaux to category 1 of the words "recording or evidencing either Respondent's consideration of, planning for, decision to launch, and any post-launch assessment of an ORIGIN or ORIGIN BROADBAND-branded internet service offering..." (emphasis added) and the deletion in category 2 of the words "recording or evidencing either Respondent's consideration of re-branding, decision to re-brand, planning for re-branding and any post re-branding assessment of, its internet service offerings as ORIGIN INTERNET..." (emphasis added). It is, in effect, a broad and new category of documents sought.
6. I decline to make that order for the following reasons.
7. First, the chronology above reveals that ON has had since at least July 2025 to frame the categories of documents in respect of which it seeks discovery. It has had the first affidavit of Mr Permezel since December 2024. Legal representatives have conferred and ought to have done their best to narrow the issues before the Judicial Registrar. The Judicial Registrar issued her ruling. Now ON returns to the Court with a variation on the categories of documents that it seeks. It could have sought the different category earlier and has not done so or adequately explained its failure to do so. The conduct of a hearing before the Judicial Registrar is not to be regarded as an opening gambit or negotiating position. The Court and the respondents are entitled to consider that the position adjudicated by the Judicial Registrar was the most appropriate that ON could muster. An application for a de novo review of the decision of the Judicial Registrar does not entitle ON to approach the court processes in any different way. ON provides no explanation as to why the currently proposed categories could not have been put forward earlier and in accordance with the timetable set by the Court. I regard the present application as approaching, if not arriving at, an abuse of process in which ON has treated the hearing before the Judicial Registrar as a step along the way and, having failed, now seeks an order for discovery under FCR rr 20.13 or 20.15.
8. Secondly, OE has given or is in the process of giving discovery in respect of some 10 categories of documents adjudicated upon in favour of ON in the Judicial Registrar's decision. Bridie Egan, Special Counsel at Mallesons, solicitors representing OE, has deposed in an affidavit to the considerable efforts required to search for, locate, scrutinise and then produce these documents. Were production of further documents in accordance with the further categories to be allowed, she gives evidence, which I accept, of considerable steps and cost required to produce the documents and that it would take at least 8 weeks to give production. As a result of the approach taken by ON, I have no doubt that much of this would be duplicated effort.
9. I accept that, in the circumstances that I have described above, to order production at this stage of the proceedings would be oppressive.
10. ON seeks to argue that the categories now propounded are relevant to the issues in dispute. OE disputes this and submits that any relevance is marginal and in any event covered by categories 1 and 2 as granted by the Judicial Registrar. However, assuming relevance, I do note that the categories to some extent overlap with other categories of documents going to the issues of bona fide use in respect of which discovery has been granted.
11. Weighing the justice of the position with case management principles applicable under the FCA Act, I do not accept that it is appropriate for discovery to be granted in respect of the additional categories sought.
12. I dismiss the interlocutory application. The applicant must pay the respondents' costs of the interlocutory application forthwith.

I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Burley.

1. Documents recording or evidencing searches and search results conducted by or on behalf of either Respondent, to determine the availability to use or register as a trade mark any of the following in relation to internet, telephone or telecommunications services,

(a) ORIGIN (insofar as documents were created between January 2017 and December 2018); or

(b) (insofar as documents were created between January 2017 and December 2018); or

(c) ORIGIN ENERGY (insofar as documents were created between January 2017 and December 2018); or

(d) ORIGIN BROADBAND (insofar as documents were created between January 2017 and December 2018); or

(e) ORIGIN INTERNET (insofar as documents were created between January 2017 and July 2021); or

(f) ORIGIN HOME HQ (insofar as documents were created between January 2017 and August 2017); or

(g) ORIGIN LOOP (insofar as documents were created between January 2017 and October 2021),

(h) any trade mark availability or clearance searches and results thereof; and

(ii) the ACMA's Register of Nominated Carrier Declarations; or

1. Documents recording or evidencing knowledge by either Respondent of any of the following, between 2017 and April 2019:

(b) the ORIGIN NET word mark (presented as either ORIGINNET or ORIGIN NET);

1. Documents recording or evidencing either Respondent's knowledge of, or intention that, the Applicant would continue to:

(a) use the ORIGIN NET mark or mark; or

(b) develop, maintain or expand its telecommunications business under either of those marks,

dated or created from 7 April 2020 (commencement date of the First Respondent's opposition to Australian trade mark application no. 1928722) to 24 November 2020 (withdrawal date of that opposition) inclusive.

1. One or more documents recording or evidencing the time when the Respondents first provided ORIGIN-branded internet or telephone service offerings to business customers.
2. Documents recording or evidencing any instance of confusion or any inquiry as to whether there is any connection or affiliation between:

(a) the Applicant or its telecommunications services; and

1. Documents recording or evidencing any instance of confusion or any inquiry as to whether there is any connection or affiliation between:

(a) the Applicant or its telecommunications services; and

(b) draft or concluded agreements (howsoever described),

between the First Respondent (or on its behalf) and Electronic Arts Inc (or on its behalf), in relation to consent by Electronic Arts Inc to a trade mark application filed by the First Respondent.

(a) the Respondents' use of ORIGIN HOME HQ in relation to goods and services other than the goods referred to in paragraph 56 of the Permezel Affidavit;

(b) the Respondents' use of ORIGIN HOME HQ after October 2018;

(c) sales of the ORIGIN HOME HQ product after October 2018; and

(d) either Respondent's consideration or decision to shut down their website in or after 2021.

1. Documents recording or evidencing the Respondents' use of ORIGIN LOOP in relation to goods and services other than virtual power plant (VPP)-related goods and services.

(a) correspondence (and attachments thereto) provided to or from Atomic 212 in relation to broadband or internet service offerings which refers to one of more of the search terms - "origin net", "origin internet" and "origin broadband".

1. Documents created or dated between 11 November 2011 and 2013 (inclusive) which refer to Origin.

(a) instance of confusion between the Applicant or its business and Origin; and/or

(b) inquiry as to whether the Applicant or its business is connected or affiliated with Origin,

in the period between 11 November 2011 and March 2018 (inclusive), including the Applicant's response to any such confusion.

1. Documents dated or created from 2014 onwards recording the Applicant's consideration as to:

(a) the likelihood of any confusion between the Applicant or its business (including under and by reference to the mark Origin Net) and Origin; and/or

(i) any confusion between the Applicant or its business (including under and by reference to the mark Origin Net) and Origin; and/or

(ii) any inquiry as to whether the Applicant or its business is connected or affiliated with Origin,

excluding documents dated or created after 15 April 2022 that were either prepared by the Applicant's legal representatives or prepared by the Applicant for the dominant purpose of obtaining legal advice from the Applicant's legal representatives

1. Documents dated or created from 2016 onwards recording, evidencing or referring to consideration of the extent of any reputation in and/or consumer awareness of Origin Net or its business.
2. A Document recording or evidencing the earliest dated invoice issued by the Applicant in relation to:

(a) supply of telecommunications services to a residential customer; and

(b) supply of internet services to a residential customer (if the earliest dated invoice responsive to subparagraph (a) above is not in respect of internet services).

1. Documents created or sent between 1 January 2017 and 31 May 2018 which record or refer to:

(a) the Applicant's election of keywords for the purpose of Google sponsored ads, including in relation to the campaign referenced in paragraph 147 of the affidavit of Alec Zeglis sworn on 23 December 2024;

(b) search engine optimization (SEO) techniques in relation to its website at www.originnet.com.au; and/or

1. Documents created or sent between 1 February 2015 and 30 June 2016 which record or refer to communications between Origin Net and Mediata (the entity referred to in paragraph 111 of the Affidavit of Alec Zeglis sworn on 23 December 2024) that contain a reference to Origin.

(a) created or dated from 11 November 2011 to 29 May 2018 (inclusive) referring to the entity "Electronic Arts" and/or the Electronic Arts trade mark registration no. 1436264 for the word mark 'Origin'; or

(b) recording correspondence between the Applicant and the entity Electronic Arts.

(c) any of the Respondents' business activities (including under or by reference to "Origin", "Origin Energy", "Origin Internet" and/or "Origin Broadband")

The following Documents created between January 2017 and June 2019, recording or evidencing either Respondent's consideration of, planning for, decision to launch, and any post-launch assessment of an ORIGIN or ORIGIN BROADBAND-branded internet service offering, whether as a trial or pilot (in about March or April 2018); as an offer to employees (in about September 2018); or to the general public (in about October 2018), being documents including:

(a) internal presentations, marketing plans, go-to-market plans, business case documents, budget documents, and briefing papers (howsoever described) created between May 2017 and December 2018 (inclusive) and referring to an ORIGIN or ORIGIN BROADBAND-branded internet service offering;

(b) correspondence and other documents provided to or from:

(i) Nature (the consulting firm referred to paragraph 111 of the Permezel Affidavit), created between September 2017 and November 2017 (inclusive); or

(ii) any external marketing agency, including Atomic 212;

(c) documents created, presented or sent by, sent to, or copied to any of the following staff: (i) Ben Miles; (ii) Orson Gilmore; (iii) Cameron Geason; (iv) Minh Nguyen; (v) Grant McKenzie (also known as David McKenzie); (vi) Cassandra Keep; (vii) Karen Frend; (viii) Michael Danswan; (ix) Andre Ferdinands; (x) Amy Walder; (xi) Jack Martin; (xii) Andrew Powell; (xiii) Eve Cheetham (also known as Eve Murfet); (xiv) Matthew Hunt; and (xv) Christina Pouzoulis, being documents created between May 2017 and December 2018 (inclusive) and referring to an ORIGIN or ORIGIN BROADBAND-branded internet service offering;

(d) documents:

(i) created, presented or sent by, sent to, or copied to; or

(ii) recording or evidencing consideration or approval by,

any member of the Retail Leadership Team (RLT) (of which Jonathan (Jon) Briskin and/or Duncan Permezel were members) created between May 2017 and December 2018 (inclusive) and referring to an ORIGIN or ORIGIN BROADBAND-branded internet service offering;

(e) documents:

(i) created for the purpose of recommending or seeking the approval by; or

(ii) which record or evidence consideration or approval by, the managing director/CEO, Frank Calabria; and

created between May 2017 and December 2018 (inclusive) and referring to an ORIGIN or ORIGIN BROADBAND-branded internet service offering; and

(f) documents recording or evidencing consideration or approval by the Board of either Respondent, including limited to board papers, any record of board presentations, minutes and resolutions created between May 2017 and December 2018 (inclusive) and referring to an ORIGIN or ORIGIN BROADBAND-branded internet service offering.

The following Documents created in 2021, recording or evidencing either Respondent's

consideration of re-branding, decision to re-brand, planning for re-branding, and any

post-re-branding assessment of, its internet service offerings as ORIGIN INTERNET,

(a) internal presentations, marketing plans, go-to-market plans, business case documents, budget documents, and briefing papers (howsoever described), referring to an ORIGIN INTERNET-branded internet service offering; and

(b) correspondence and other documents provided to or from any external marketing agency, including Atomic 212;

(c) documents created, presented or sent by, sent to, or copied to any member of the marketing or branding teams, including (i) Eve Cheetham (also known as Eve Murfet); (ii) Matthew Hunt; and (iii) Christina Pouzoulis, referring to an ORIGIN INTERNET-branded internet service offering;

(d) documents:

(i) created, presented or sent by, sent to, or copied to; or

(ii) recording or evidencing consideration or approval by,

any member of the Retail Leadership Team (RLT) (of which Jonathan (Jon) Briskin and/or Duncan Permezel were members), referring to an ORIGIN INTERNET-branded internet service offering;

(e) documents:

(i) created for the purpose of recommending or seeking the approval by; or

(ii) which record or evidence consideration or approval by, the managing director/CEO, Frank Calabria; and

referring to an ORIGIN INTERNET-branded internet service offering; and

(f) documents recording or evidencing consideration or approval by the Board of either Respondent, including limited to board papers, any record of board presentations, minutes and resolutions, referring to an ORIGIN INTERNET- branded internet service offering.

(g)