Federal Circuit and Family Court of Australia
(DIVISION 2)
A2B Australia Limited v Verma [2021] FedCFamC2G 204
File number(s): SYG 65 of 2021 Judgment of: JUDGE BAIRD Date of judgment: 20 September 2021 Catchwords: INTELLECTUAL PROPERTY – TRADE MARKS – INFRINGEMENT – Trade marks – infringement – summary judgment – infringement of five Australian registered trade marks – where respondents continued to infringe trade marks after notice – where some of respondents have participated intermittently – where no defences filed – where respondents have no reasonable prospect of successfully defending the claim – compensatory damages – whether conduct justifies awards of additional damages – respondents’ conduct justify awards of additional damages in varying amounts – respondents not acting in concert – notices of offers to compromise – whether costs should be awarded on an indemnity basis – whether costs should be awarded in lump sums – whether costs under the Federal Court scale are appropriate – whether justifying circumstances to make an indemnity costs order – application allowed. Legislation: Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth), rr.13.10, 22.02, Sch 2, Pt 1
Federal Circuit and Family Court of Australia Act 2021 (Cth), s.143
Federal Circuit Court of Australia Act 1999 (Cth)
Federal Circuit Court Rules 2001 (Cth), Sch.1, Part 2
Trade Marks Act 1995 (Cth), ss.7, 9, 20, 120, 126Division: Division 2 General Federal Law Registry: N/A FCFCOA Division: Division 2 General Federal Law Number of paragraphs: 190 Date of last submission/s: 17 September 2021 Date of hearing: 16 and 17 September 2021 Place: Sydney Counsel for the Applicants: Ms R White Solicitor for the Applicants: K&L Gates
Table of Corrections 10 February 2022 Included ‘fifth’ respondent in declaration 1(b). ORDERS
SYG 65 of 2021 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: A2B AUSTRALIA LIMITED
First Applicant
TAXIPROP AUSTRALIA PTY LTD
Second Applicant
TAXIS AUSTRALIA PTY LTD
Third Applicant
AND: PUNTEEPAL SINGH MANN ABN 30 360 875 447
First Respondent
AMRIPTAL SINGH ABN 79 834 672 893
Second Respondent
AYAZ ASHRAF ABN 11 414 217 976 (and others named in the Schedule)
Third Respondent
order made by:
JUDGE BAIRD
DATE OF ORDER:
17 AND 20 SEPTEMBER 2021
THE COURT:
In these Orders the following terms have the following meanings:
Annexure A means the Annexure A attached to these Orders.
13 CABS Logo Mark means Australian registered trade mark no. 1929482 for 13cabs (logo) (see below) registered, inter alia, in class 39 of the Register of Trade Marks for “taxi services including taxi transport, taxi hire, and taxi booking and reservation services; services in this class provided by taxi operators, taxi fleets, and taxi industry; travel arrangements in relation to taxis”
13 CABS Word Mark means Australian registered trade mark no. 900410 for the word mark 13 CABS registered, inter alia, in class 39 of the Register of Trade Marks for taxi services including taxi transport, taxi hire, and taxi booking and reservation…
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Details
- AGLC
- A2B Australia Limited v Verma [2021] FedCFamC2G 204
- Case
- [2021] FedCFamC2G 204
- Decision Date
CaseChat Overview and Summary
A2B Australia Limited, the plaintiff, brought an action against a number of respondents for alleged infringement of various trade marks. The plaintiff operates a business providing taxi network services under several brand names, including 13CABS, Silver Service, and Maxi Taxi. The respondents, who are sole traders operating personal transport services in Melbourne and Sydney, are alleged to have infringed the plaintiff's trade marks by using them on their websites to market and provide taxi and hire car or hire van services. The plaintiff sought summary judgment against the respondents, arguing that there was no reasonable prospect of the respondents successfully defending the claims. The court considered the principles relevant to the exercise of summary judgment, noting that the test is less stringent than earlier regimes but should still be exercised with caution. The court found that the plaintiff had discharged its burden of showing that the respondents had no reasonable prospect of successfully defending the claims.
The court examined the evidence provided by the plaintiff, including the use of the trade marks on the respondents' websites, and concluded that there was a strong likelihood of success for the plaintiff's claims. The court also noted that the respondents had not filed any defences and had not provided any evidence to counter the plaintiff's allegations. Based on this, the court granted summary judgment in favour of the plaintiff against the respondents. The court emphasised that the test for summary judgment is whether there is no reasonable prospect of defending the proceeding, not whether a certain conclusion should be made that the defence would necessarily fail. The court found that the plaintiff had established that the respondents had no reasonable prospect of successfully defending the claims.
The court examined the evidence provided by the plaintiff, including the use of the trade marks on the respondents' websites, and concluded that there was a strong likelihood of success for the plaintiff's claims. The court also noted that the respondents had not filed any defences and had not provided any evidence to counter the plaintiff's allegations. Based on this, the court granted summary judgment in favour of the plaintiff against the respondents. The court emphasised that the test for summary judgment is whether there is no reasonable prospect of defending the proceeding, not whether a certain conclusion should be made that the defence would necessarily fail. The court found that the plaintiff had established that the respondents had no reasonable prospect of successfully defending the claims.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
It is sufficient for the purposes of this summary judgment application to describe the applicants as carrying on a business in Australia, as I have said, principally providing taxi network services under various brand names, including the brand names of 13CABS, Silver Service, and Maxi Taxi, corresponding to the registered Trade Marks.SUMMARY OF THE APPLICANTS’ CLAIMS and evidence The applicants allege that each of the respective respondents has respectively infringed, and up until as at the date of the summary judgment application, not undertaken not to continue to infringe (and it may be inferred that they do intend to continue to infringe) one or more of the Trade Marks in contravention of s 120(1) of the TM Act, or, in the case of several of the respondents, s 120(2) of the TM Act. The applicants’ claim, and the evidence before me, satisfies me that each of the respondents: (a)purports to conduct business as a sole trader under an Australian Business Number (ABN) registered in their name; (b)conducts business of personal transport services (that is, substantially what may be described as taxi and hire car or hire van services) operating in a particular geographical area – that is, either greater metropolitan Melbourne or greater metropolitan Sydney; and(c)conducts such business at and via one or more websites which is or was registered under their respective ABN, and at and through their website or websites, has been using signs as trade marks, and either on or in pages of their websites, to market, supply and deal in booking, reservation, and pick-up taxi and hire car and/or hire van personal transport services. The evidence that has been adduced by the applicants is limited to what appears on and in the websites, and there is no evidence before me of any particular physical taxi hire, or taxi that has of itself, any decals or depictions of any of the Trade Marks on them. That does not, however, mean that any of the respondents did not, or did not have the opportunity to, use the Trade Marks both to promote their services, obtain bookings and reservations, and also to use the Trade Marks in the course of the provision of those services, even physically, on or in relation to their taxis. In the case of each of the respondents, the applicant’s solicitors have: (a)conducted investigations to identify the ABN details, the domain registrant details, and in many cases the telephone numbers and other email addresses, and/or contact addresses, and in some cases also physical addresses, of each of the respondents; (b)notified each respondent by email at one or more email addresses, via one or more letters of demand before suit, in which letters the applicants’ solicitors set out the Trade Marks in respect of which they have identified conduct which they allege infringes those Trade Marks, and have sought to obtain undertakings, an amount of damages, the cessation of the alleged infringing conduct, and the transfer or handing over of the authentication keys and codes which would enable the transfer of the relevant websites from each of the corresponding respondents to the applicants. In these letters the applicants’ solicitors have also given clear notice of sums that have been awarded, including in this Court, for similar infringements in respect of other parties who have been found to have infringed one or more of the applicants’ Trade Marks; (c)served Court documents, and subsequent Orders by email on each of the respondents, in the case of all but the fifth respondent, very soon after filing (that is, in or before mid-January 2021). There were some further investigations that were undertaken, and identification of the identity and contact details of the fifth respondent was obtained at a later date, and service thereafter effected; and(d)lastly, one or more offers of compromise, or offers which purport to be offers of compromise, have been sent to each respective respondent. That is, in addition to letters of demand inviting settlement before suit, letters have been sent to all respondents, except the tenth respondent. Some procedural history
Decision
Reasons for decision
The applicants submit that there is evidence of facts on which their claim is based, and there is evidence given by a party, or some responsible persons, that none of these respondents has any reasonable prospect of successfully defending the claim made against them.relevant principles – summary judgment The principles relevant to the exercise of summary judgment have been set out in a number of cases, including in the Full Court of the Federal Court of Australia in Jefferson Ford Pty Limited v Ford Motor Company of Australia Limited [2008] FCAFC 60 at [124] to [132], and more recently in the Federal Circuit Court, as this Court was formerly named, by her Honour Judge Obradovic in Ritter v Ritter & Anor [2019] FCCA 782 at [4] to [13]. I summarised those principles in the context of an intellectual property proceeding relating to an infringement of a registered design in PositiveG Investments Pty Limited as trustee for the PositiveG Trust v Li [2020] FCCA 2548 at [19] to [24]:[19]Section 17A of the Act empowers the Court to give judgment for one party against another party, as I have said, in relation to any part of a proceeding if the Court is satisfied that, in this case, the Respondent party has no reasonable prospect of successfully defending the proceeding. [20]Although there is no defence filed in this proceeding, I note that section 17A(3) of the Act provides that a defence need not be hopeless or bound to fail for it to have no reasonable prospect of success. [21]The provisions of the Act are in the same terms as s.31A of the Federal Court of Australia Act 1976 (Cth), and the approach taken in cases concerned with that section are generally seen as apposite to s.17A of the Act. [22]In sum, these principles relevantly provide:(a)the test is less stringent than applicable under earlier regimes. The power to order summary judgment should, however, be exercised with caution; (b)the assessment of reasonable prospects involves identifying the pleaded cause of action, including the pleaded facts, and any supporting evidence together with the facts, if any, pleaded; (c)the moving party bears the onus of persuading the Court that the Respondent has no reasonable prospects of success; and (d)the exercise of the power requires a practical judgment by the Court as to whether, in this case, the Respondent, has more than a fanciful prospect of success. This may be a judgment of law or of fact or of mixed law and fact. [23]The concept of “no reasonable prospect of success” is a different concept to “no real prospect of success” and encompasses defences that need not be hopeless or bound to fail. The inquiry is directed to whether there is no reasonable prospect of defending the proceeding, not an inquiry directed to whether a certain concluded determination should be made that the defence would necessarily fail. [24]Further, in discerning whether a real issue of fact exists such as to preclude summary judgment, the Court must draw all reasonable inferences in favour of the non-moving party. I note also, in Jefferson Ford, Gordon J’s observation that the word “may” in “the Court may give summary judgment” is used in an empowering sense rather than as denoting the exercise of a discretion, c.f. Kowalski v MMAL Staff Superannuation Fund Pty Ltd [2009] FCAFC 117; (2009) 178 FCR 401 at [28]-[31]; Nichol v Discovery Africa Ltd; Van Den Bergh v Discovery Africa Ltd [2016] FCAFC 182; (2016) ALR 594.
Ratio Decidendi
Legal Principle Established
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