Gift-Wrapped in Litigation: Federal Court pulls Epay's Giftzzy card from the shelves

Overview

The Federal Court of Australia has restrained Epay Australia Pty Ltd (Epay) from supplying gift cards under or by reference to the marks "PREZZY", "PREZZY Card" or "Powered by Prezzy Card", and has ordered the removal of approximately 47,000 physical gift cards bearing those marks from the Australian market. 

The interlocutory injunction was granted in Prezzee Pty Ltd v Epay Australia Pty Ltd [2025] FCA 1662 by Charlesworth J on 10 December 2025 in favour of Prezzee Pty Ltd (Prezzee), an Australian ecommerce business and supplier of digital gift cards.

Background

Prezzee and Epay are competitors in the gift cards and ecommerce space. Epay has supplied goods and services in New Zealand under the trade mark "PREZZY" since 2006.

In 2020, Epay approached Prezzee with a proposal for global co-existence of their respective trade marks, PREZZEE and PREZZY. Prezzee rejected this offer in unequivocal terms, stating that it would not tolerate any third-party operations under "Prezzy" in Australia and would vigorously oppose any attempt to launch "Prezzy" in Australia.

Despite this, in 2025 Epay launched a physical gift card in Australia under the trade mark "GIFTZZY". The card featured the phrase "Powered by Prezzy Card", which also appeared on Epay's advertising and promotional materials.

Prezzee responded by filing an application for an interlocutory injunction on two grounds:

• Trade mark infringement under ss 120(1) and 120(2) of the Trade Marks Act 1995 (Cth); and
• Misleading and deceptive conduct in contravention of the Australian Consumer Law.

Legal Framework: Criteria for an Interlocutory Injunction

To obtain interlocutory injunctive relief, an applicant must establish:

1. There is a serious question to be tried with respect to entitlement to final relief; and
2. The balance of convenience favours the grant of the injunction.

Charlesworth J referred to Australian Broadcasting Corporation v O'Neill (2006) 227 CLR 57 and her Honour's own observations in Educational Broadcasters Adelaide Inc v Australian Broadcasting Corporation (2017) 123 IPR 216, where it was held that the applicant must also demonstrate a sufficient likelihood of success to justify the preservation of the status quo pending trial.

Serious Question to be Tried

Prezzee satisfied this criterion.

The materials before the Court — including testimony supplied by Epay itself — demonstrated that the phrase "Powered by Prezzy Card" was intentionally designed to create an association in the consumer's mind between the Giftzzy Card and Epay's New Zealand Prezzy business. It found that Epay had plainly set out to use the phrase as a trade mark in its own right, notwithstanding that GIFTZZY appeared more prominently on the card.

Epay's foreshadowed defences included:

• The Prezzee trade mark registrations do not cover "physical gift cards", meaning Epay's use falls outside the registered scope and is therefore non-infringing;
• In the alternative, if physical gift cards are found to be within the scope of the registrations, the Prezzee marks are vulnerable to cancellation for non-use; and
• There is no evidence of actual consumer confusion.

Notwithstanding these defences, the Court held that there were serious questions to be tried and that Prezzee's infringement case was not weak.

Balance of Convenience

The balance of convenience weighed in favour of Prezzee. Charlesworth J considered the following factors:

Historical dealings: Given the history between the parties — specifically Prezzee's explicit rejection of Epay's co-existence proposal and it’s express warning that it would oppose any launch of "Prezzy" in Australia — Epay would reasonably have expected to be restrained at some stage.

Irreparable harm to Prezzee outweighs harm to Epay: The reputational harm likely to be suffered by Prezzee if Epay were not restrained was found to be greater than any harm Epay would suffer if restrained. This was because:

• Prezzee has a significant and established reputation in Australia as a result of its existing operations, whereas Epay had only commenced Australian operations in 2025; and
• The burden on Epay of withdrawing the physical gift cards from the market was not found to be onerous — at most, Epay would need to issue a communication to its suppliers directing them to cease selling the cards.

Outcome

The interlocutory injunction was granted. Epay was restrained from supplying gift cards under or by reference to "PREZZY", "PREZZY Card" or "Powered by Prezzy Card", and was required to remove approximately 47,000 physical gift cards from the Australian market pending the final determination of the proceedings.

Key Takeaways

• Interlocutory injunctions: The criteria for grant of an interlocutory injunction must be satisfied and the bar presented is high. When a business becomes aware of potential IP infringement, it must take steps proactively to ensure that the balance of convenience does not tip in favour of the respondent.
• Trade mark use and subsidiary branding: A phrase used with the intention of creating a consumer association between products will likely constitute trade mark use, even where it is presented as secondary to a more prominent mark.