Every plaintiff in trade mark infringement litigation wants to force the enemy to re-brand. Earlier this week, the Federal Court of Australia provided a terrifying reminder that the opposite can happen: this plaintiff not only lost on its infringement allegation – it lost its right to use its own principal brand identity.

This case doesn’t only show how difficult it can be to enforce a registered trade mark. It calls into question the freedom-to-operate security provided to the owners of trade mark registrations, even after eight years on the register. Most trade mark owners could be forgiven for thinking that their registrations are more reliable than this.

What happened?

This was a fight between electricity retailers about the word FLOW. The combatants were Progressive Green Pty Ltd (trading as Flow Power) and Flo Energy Australia Pty Ltd (and its similarly-named Singaporean parent).

Progressive Green, an established energy retailer, claimed that Flo Energy’s use of the “FLO ENERGY” marks infringed its registered “FLOW POWER” marks. Flo Energy not only denied infringement but it cross-claimed, seeking cancellation of the “FLOW POWER” marks on grounds including that it lacked distinctiveness and that it was deceptively similarity to an earlier “FlowSmart” mark, which it had acquired from a third party during the proceedings as part of its chips-in defensive strategy.

Who won and why?

The Court found in favour of Flo Energy – the defendant. This list of bullet points demonstrates the significant consequences for both parties, but especially Progressive Green:

• Infringement by Flo Energy: The Court held that the “FLO ENERGY” marks were deceptively similar to the registered “FLOW POWER” marks and that their use by Flo Energy constituted infringement up to the date of judgment. However, this finding was overtaken by the Court’s subsequent decision to cancel the “FLOW POWER” registrations.
• Cancellation of FLOW POWER Marks: The Court determined that the “FLOW POWER” marks were only “faintly” adapted to distinguish electricity-related goods and services. Progressive Green also didn’t establish a substantial reputation in its marks across the relevant market, despite substantial revenue and lots of newspaper ads. This undermined its bid to boost faint inherent distinctiveness to acquired factual distinctiveness. The marks were also found to be deceptively similar to the earlier “FlowSmart” mark, which had a 2013 priority date. The Court declined to exercise its discretion to preserve the “FLOW POWER” registrations, ordering their cancellation for the overlapping classes.
• Validity and Use of “FlowSmart” Mark: Progressive Green’s attempt to remove the acquired “FlowSmart” mark for non-use or to cancel it for likely deception/confusion failed. The Court found that the “FlowSmart” mark had been used in good faith, under proper control, and that Progressive Green’s reputation in “FLOW POWER” was insufficient to justify cancellation of “FlowSmart”.
• Infringement by Progressive Green: The Court accepted that Progressive Green’s use of “FLOW” (alone) infringed the “FlowSmart” mark. However, for the period prior to cancellation, Progressive Green was protected by the statutory defence available to registered proprietors. Following cancellation, this defence would no longer apply.
• Remedies: The Court ordered cancellation of Progressive Green’s FLOW POWER marks in the relevant classes, an injunction restraining Progressive Green from using the cancelled marks in relation to specified energy services, and dismissed Progressive Green’s claims for damages and for removal of the “FlowSmart” mark.

Take-home points

• Descriptive Marks: The decision will be troubling to any registered owner of a descriptive mark. Registration of these marks is not only difficult to get – it’s difficult to maintain and very difficult to enforce.
• Earlier Marks and Deceptive Similarity: Even where a mark has been in used for several years, an earlier-registered mark (such as “FlowSmart”) can form the basis for cancellation if that first mark is found to be deceptively similar and not sufficiently distinctive.
• Strategic Acquisitions of Trade Marks: The strategy of buying an earlier registration to defend this allegation was a potent wildcard in this case. The acquiring party must still demonstrate genuine use and proper control. I’d love to know what they paid for it. The judgment only records that it was “purchased for good consideration in an arm’s length transaction”.
• Reputation and Use Must Be Substantial: Evidence of use and reputation must be robust and market-wide to support the continued registration of a mark vulnerable to attack. Good revenue and high profile advertising usually feels like enough, but is it really?
• Good Faith use to defeat a non-use claim: Genuine, commercially meaningful use – however brief – will defeat a non-use action and litigation‑driven timing does not necessarily negate good faith if the use is real.
• Control in Authorised Use: Robust licence quality‑control terms, enforced or enforceable in practice, will generally suffice. Intra‑group “unity of purpose” can also establish control where corporate governance and brand stewardship align.

This case is like turning up to a fancy dress party and complaining to the host that someone is impersonating your costume. The host checks, decides there’s no real impersonation and that in fact, the other person arrived first anyway by way of paid time-machine travel. The host then decides that your outfit is the problem. You don’t just lose the complaint: the host takes your name badge off, bins your costume pass and tells you that you can’t wear your outfit to the party anymore.

This shapes as a really impactful decision for trade mark practitioners in Australia. There’s some bravery involved in recommending trade mark infringement in our country.

For those interested in this new case, the case citation is Progressive Green Pty Ltd v Flo Energy Pty Ltd [2025] FCA 1315

Date of judgment: 29 October 2025