The Aristocrat case is a good reminder of the difficulties in proving a case of trade mark infringement where the evidence of the infringement is entirely circumstantial.
The long-running dispute between the Aristocrat Technologies group of companies and Global Gaming Supplies, Impact Gaming and Tonita Enterprise has finally come to an end with the decision in the remitted proceedings Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd  FCA 986.
Given that the case has been running for years, and traversed quite complex issues in copyright and trade mark law, necessitating trips to the Full Federal Court and an application to the High Court for special leave to appeal, the end result might seem somewhat of an anti-climax.
The copyright battle
Aristocrat Technologies alleged that Global Gaming Supplies Pty Ltd, Mr Anthony Andrews, Impact Gaming Pty Ltd and Mr Francis George Bernard (Global/Impact Respondents), contracted with Mr Riad Allam of Tonita Enterprise Pty Ltd to refurbish electronic gaming machines to sell in foreign markets, specifically in South America.
The software programs installed by Mr Allam were pirated copies of other computer programs. These computer programs contained art work and compliance plates that were the intellectual property of Aristocrat Technologies Pty Ltd and its associated companies. Consequently, they brought a claim for copyright infringement under sections 36 and 38 of the Copyright Act 1968 (Cth).
In Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd  FCA 1495, Justice Jacobson found that all of the respondents had infringed the copyright of Aristocrat and made the following findings:
- Mr Allam had copied Aristocrat Technologies' game software onto blank EPROMs (removable memory chips) in contravention of section 36 of the Copyright Act;
- Mr Allam manufactured counterfeit compliance plates (which are a regulatory requirement for gaming machines and bear a unique serial number), also in contravention of section 36 of the Copyright Act;
- the Global/Impact Respondents were aware that he was copying Aristocrat Technologies' software onto blank EPROMs, contravening section 38 of the Copyright Act;
- they were also aware that he was manufacturing counterfeit compliance plates for export to foreign markets, contravening section 38 of the Copyright Act; and
- the Global/Impact Respondents had sent, or were aware that Mr Allam had sent original and digital artwork to South America for the purpose of having it copied.
The last three findings were predominately based on email correspondence between the Respondents and potential customers.
The Respondents successfully appealed the decision. The Full Federal Court, in Allam v Aristocrat Technologies Australia Pty Ltd; Global Gaming Supplies Pty Ltd v Aristocrat Technologies Australia Pty Ltd (2012) 95 IPR 242, found that while the evidence contained within the emails was essential to the findings against the Global/Impact Respondents, they did not relate to the alleged infringing transactions. Consequently, the emails could only be admissible as tendency evidence. However, the emails did not reach the threshold required for tendency evidence set out in section 97 of the Evidence Act 1995 (Cth).
Aristocrat Technologies sought special leave to appeal to the High Court, which was refused in May 2013 on the basis there was no question of law or an issue of public importance, and the opinion the Full Federal Court took of the evidence was reasonably open to it.
Back to the Federal Court: copyright and trade mark infringement
The Full Court of the Federal Court remitted the matter to Justice Jacobson to determine two questions:
- Did the Respondents' use of Aristocrat Technologies' trade marks constitute trade mark infringement?
- What relief, if any, should be granted in relation to copyright infringement arising under the Copyright Act?
Did the Respondents' use of Aristocrat Technologies' trade marks constitute trade mark infringement?
Aristocrat Technologies are the registered owners of a number of registered trade marks including three word marks comprising the word ARISTOCRAT and a number of word marks for the names of Aristocrat games that are played on gaming machines. One of these marks was registered for goods in classes 9, 37 and 41.
Aristocrat Technologies alleged that the Respondents used one or more of the registered marks as trade marks and thus infringed those marks.
The acts relied upon as constituting the use of the marks by the Respondents were that in the course of carrying on their businesses, the Respondents manufactured, applied, supplied, offered to sell, sold or distributed gaming-related products, in particular:
- imitation Aristocrat EPROM labels which incorporated Aristocrat Technologies' registered marks; and
- imitation Aristocrat compliance plates which incorporated Aristocrat Technologies' registered marks.
The Global/Impact Respondents admitted that they used the trade marks but denied that this constituted infringement. Mr Allam and Tonita Enterprise denied all allegations.
Justice Jacobson thus had to consider what is use "as a trade mark". The Global/Impact Respondents contended (relying on a previous Full Federal Court decision) that a person who affixes a mark to goods so as to indicate a connection between the goods and the owner of the registered mark does not infringe the trade mark.
However, Justice Jacobson held that "the sale of goods bearing a mark applied without the consent of the owner infringes the mark because the mark is used to indicate, contrary to the fact, a connection between the goods and the registered owner". That is to say, the mark is used in a manner in which it is not in truth a badge of origin of the registered owner’s goods.
Justice Jacobson held that there was a short answer to the claim. He noted that the test as to whether a mark is "substantially identical" involves a side by side comparison. Deceptive similarity is a different question, and the marks are not to be looked at side by side. Instead, the test is a comparison between the impression based on a recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have, and the impressions that such persons would have of the impugned mark.
Unfortunately, Aristocrat Technologies had failed to produce a single machine containing a counterfeit compliance plate or a counterfeit game, making it impossible to conduct the tests stated by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407. This meant the case against the Respondents was entirely circumstantial, and consequently, a finding of trade mark infringement was rendered impossible.
What relief, if any, should be granted in relation to copyright infringement arising under the Copyright Act?
It followed from the orders of the Full Court that the claims against the Global/Impact Respondents failed in their entirety, so the proceedings against those respondents were dismissed with costs.
However, Justice Jacobson found that while it while it had been appropriate to refuse declaratory relief against Mr Allam in the initial decision, circumstances had changed. Declaratory relief had been refused because substantial damages had been awarded at the first instance. Given that award of damages in the first instance had been set aside, he found that there was now utility in granting declaratory relief so as to mark the Court's disapproval of the contravening conduct.
Those who have been following this case with its twists, turns, and trips to appellate courts will no doubt feel slightly cheated by this dénouement. Nonetheless, it's a good reminder of the difficulties in proving a case of trade mark infringement where the evidence of the infringement is entirely circumstantial. Without the infringing goods, the test outlined in Shell is impossible to perform and there can be no finding of trade mark infringement.
The decision also clarifies that use "as a trade mark" does not require use which indicates a connection between the registered mark and the alleged infringer, that is, as the origin of the goods or services. Rather, it is sufficient if the mark is used to indicate, contrary to the fact, a connection between the goods or services and the registered owner.