Strategy and lessons from recent interlocutory injunctions in trade mark and passing off disputes

In December 2025 the Australian Federal Court considered two applications for interlocutory (or preliminary) injunctions in branding disputes: Prezzee Pty Ltd v Epay Australia Pty Ltd [2025] FCA 1662 and Lindrum v T&P Lindrum Pty Ltd [2025] FCA 1644.

Why was the Prezzee injunction granted, when the Lindrum injunction was not? We break down the factors that contributed to these very different legal results and consider: what lessons can be learned?

Key lessons for brand owners in a TM dispute

• There are significant practical advantage of owning a registered trade mark when seeking urgent relief;
• Before stopping a product launch or requiring a rebrand midstream, the Court will expect to see cogent evidence of the perceived damage, and
• Delay in bringing an application may be fatal.

Facts of each case

Prezzee v Epay

• Digital gift-card company Prezzee owns registered trade marks in Australia for a number of PREZZEE trade marks.
• Epay has registered and uses the trade mark PREZZY in New Zealand. In August 2025 it launched "Giftzzy" cards in Australia that prominently featured the phrase "Powered by Prezzy Card".
• Prezzee alleged trade mark infringement, passing off and contravention of the Australian Consumer Law, and sought various injunctions to restrain Epay from using the word PREZZY, and requiring it to take all reasonable steps to remove from circulation and destroy products or marketing materials bearing Prezzy marks.
• This included retrieving cards from retail outlets, and/or writing to retailers directing them not to sell the cards.
• At the time of the hearing, approximately 47,000 Giftzzy cards bearing the impugned phrase remained in circulation across 1,800 retail outlets.

Lindrum v T&P Lindrum

Dr Janne Lindrum, the grand-niece of the renowned billiards player Walter Lindrum, sought to restrain T&P Lindrum from using the name "LINDRUM" in connection with a commercial office development on a property formerly known as Hotel Lindrum, claiming that such conduct amounted to passing off and misleading or deceptive conduct, as it conveyed an false association with, or authority from, the Lindrum family or Dr Lindrum herself.

Dr Lindrum asserted that the "LINDRUM" name had a strong reputation in various fields including property development, and that T&P Lindrum's use of the name would mislead the public and damage her business and goodwill.

Notably both parties owned registered trade marks which were the subject of challenge by the other party.

Dr Lindrum did not assert trade mark infringement in this proceeding. Evidence suggested that T&P Lindrum had been using marketing materials in relation to the property development for some time.

Legal principles

In Australia, the legal principles applicable to interlocutory injunctions are well-established. Both judges applied the relevant two-limb test: (1) whether there is a serious question to be tried (or a prima facie case), and (2) whether the balance of convenience favours the grant of the injunction.

Serious question to be tried (prima facie case)

The requirement of "a serious question to be tried":

• does not require the applicant to show that it is more probable than not that it will succeed at the trial, but
• it must show a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial: Australian Broadcasting Corporation v O'Neill (2006) 227 CLR 57 at [65].

Prezzee was able to relatively easily meet that threshold, even though there was an argument with "apparent merit" about the scope of its trade mark registration – meaning that the question of confusion could come into play.

In contrast, in Lindrum, because there was no trade mark infringement claim, Dr Lindrum was required to show reputation in the LINDRUM name, a necessary component of showing that a misrepresentation has been made.

The Court considered that although Dr Lindrum had invested time, energy and money in promoting the LINDRUM name, she had not adduced any detailed evidence that it was widely known, particularly in the field of property development.

Balance of convenience

In Prezzee, the Court placed significant weight on the nature of the right to be protected, which included the right to exclusive use of the PREZZEE trade mark.

This was particularly important in light of evidence the EPay had approached Prezzee previously seeking a commercial partnership and that Prezzee had refused, indicating that it was not prepared to give away that exclusive right to EPay.

While the Court accepted that an injunction may be damaging to EPay's reputation, it noted that there was no evidence that Giftzzy could not distribute replacement cards at short notice. EPay argued that the consequences for it would be more significant given the close proximity to the Christmas period, however it had not disclosed whether it distributed cards after it was notified of Prezzee's case, and after the proceedings were commenced.

As such, the Court was satisfied that Epay's inconvenience in retrieving unsold cards and the cost and disruption to its business did not outweigh the harm to Prezzee's rights.

In Lindrum, the Court considered that the balance of convenience was against granting an interlocutory injunction.

The Court found that damages would be an adequate remedy if Dr Lindrum succeeded at trial, as she herself had indicated that any losses could be addressed by and calculated on the basis of a reasonable licence fee.

In addition, an interlocutory injunction would require costly and disruptive changes to T&P Lindrum's marketing materials (estimated at $400,000 and three months' work).

The Court also emphasised that Dr Lindrum had delayed in bringing the interlocutory application despite being aware of T&P Lindrum's use of the name since 2023, and this delay was not adequately explained.

How we can help

Recent interlocutory injunction decisions reinforce that trade mark disputes are won or lost early – often before a matter reaches trial.

Brand owners need to be alert to the practical realities of enforcement, including the impact of delay, the quality of evidence required, and the commercial consequences of seeking urgent relief.

The team at Spruson & Ferguson Lawyers regularly advise brand owners on trade mark enforcement and dispute strategy, including when and how interlocutory injunctions may be available.

We work closely with clients to assess risk, prepare evidence, and develop practical litigation strategies that reflect both legal and commercial priorities.

Collaborating closely with our trade marks attorneys, we ensure that client's registration strategy, enforcement options and court proceedings are aligned – placing brand owners in the strongest possible position if court intervention becomes necessary.

If you would like to discuss your options around infringement issues, a brand launch, or enforcement action, early advice can be critical.

To discuss your options, reach out to the authors here or your Spruson & Ferguson contact.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.