A2B Australia Limited v Verma
[2021] FedCFamC2G 204
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 services; services in this class provided by taxi operators, taxi fleets, and taxi industry; travel arrangements in relation to taxis”
MAXI TAXI Trade Mark means Australian registered trade mark no. 615059 for the word mark MAXI TAXI registered in class 39 of the Register of Trade Marks for “taxi van transport services”
SILVER SERVICE Logo Mark means Australian registered trade mark no. 705074 for Silver Service (logo) (see below) registered in class 39 of the Register of Trade Marks for “services in this class relating to the hiring and transportation by means of taxi”
SILVER SERVICE Word Mark means Australian registered trade mark no. 1427083 for the word mark SILVER SERVICE registered in class 39 of the Register of Trade Marks for “services in this class relating to the hiring and transportation by means of taxi”
Taxiprop means the second applicant
Taxis Australia means the third applicant
Trade Marks Act means the Trade Marks Act 1995 (Cth)
THE COURT:
Declarations
1.DECLARES that:
(a)each of the second, third, sixth, ninth and tenth respondents have infringed the 13 CABS Word Mark in breach of s 120 of the Trade Marks Act by their respective use in the course of trade of the signs as set out in Annexure A, Part 1 attached to these Orders;
(b)each of the second, third, fourth, fifth, sixth, seventh and ninth respondents have infringed the SILVER SERVICE Word Mark in breach of s 120 of the Trade Marks Act by their respective use in the course of trade of the signs as set out in Annexure, Part 2 attached to these Orders;
(c)the sixth respondent has infringed the MAXI TAXI Trade Mark in breach of s 120 of the Trade Marks Act by his use in the course of trade of the signs as set out in Annexure A, Part 3 attached to these Orders;
(d)the seventh respondent has infringed the SILVER SERVICE Logo Mark in breach of s 120 of the Trade Marks Act by his use in the course of trade of the signs as set out in Annexure A, Part 4 attached to these Orders;
(e)the ninth respondent has infringed the 13 CABS Logo Mark in breach of s 120 of the Trade Marks Act by his use in the course of trade of the signs as set out in Annexure A, Part 5 attached to these Orders.
Second, third, sixth, ninth and tenth respondents – 13 CABS Word Mark
2.ORDERS that each of the second, third, sixth, ninth and tenth respondents – whether by themselves, their servants, employees, agents, or otherwise – permanently be restrained from using any of the signs “13cabs”, “13 CABS” or any mark that is identical or substantially identical with, or deceptively similar to, “13cabs” or “13 CABS” (including any of the signs in Annexure A, Part 1) – whether as a word, as a phrase, in the singular, in the plural, by itself, or with or without other indicia, words, phrases, or images – in relation to marketing, advertising, promoting, supplying, offering for sale of, and selling, taxi transport, taxi hire, and taxi booking and reservation services, including, but not limited to, by:
(a)such use as a name or other badge of origin in relation to:
(i)taxi services including taxi transport, taxi hire and taxi booking and reservation services;
(ii)travel arrangements in relation to taxis; or
(iii)courier services;
(b)such us as part of any logo, banner, or device;
(c)use as or on any domain names or websites;
(d)use on any social media page, including, but not limited to, Facebook, Twitter, and Instagram;
(e)use on any video or other content publication page, including, but not limited to, YouTube; and
(f)authorising, causing, procuring, or inducing any person to do any act which would be an infringement of the injunctions referred to in subparagraphs 2(a) to (e) of this Order.
3.ORDERS that each of the second, third, sixth, ninth and tenth respondents within 7 days of these Orders – whether by themselves, their servants, employees, agents, or otherwise howsoever – do all things necessary to deliver up to the applicant’s solicitors, or destroy under oath:
(a)any and all business cards, brochures, pamphlets, advertising, labels, promotional or marketing material, and the like in their power, possession, custody, or control in Australia which bear the 13 CABS Word Mark or any mark that is identical or substantially identical with, or deceptively similar to, the “13 CABS” Word Mark (including any of the signs in Annexure1, Part A); and
(b)any materials, products, or things in the respondents’ power, possession, custody, or control the exploitation of which by the respondent would be in breach of the injunctions in paragraph 2 of these Orders.
Second, third, fourth, fifth, sixth, seventh and ninth respondents – SILVER SERVICE Word Mark
4.ORDERS that each of the second, third, fourth, fifth, sixth, seventh and ninth respondents – whether by themselves, their servants, employees, agents, or otherwise – permanently be restrained from using any of the signs “silverservice”, “Silver Service” or any mark that is identical or substantially identical with, or deceptively similar to, “silverservice” or “Silver Service” (including any of the signs in Annexure A, Part 2) – whether as a word, as a phrase, in the singular, in the plural, by itself, or with or without other indicia, words, phrases, or images – in relation to marketing, advertising, promoting, supplying, offering for sale of, and selling, services relating to the hiring and transportation by means of taxi, including, but not limited to, by:
(a)such use as a name or other badge of origin in relation to services, the hiring and transportation by means of taxi;
(b)such use as part of any logo, banner, or device;
(c)use as or any domain names or websites;
(d)use on any social media page, including, but not limited to Facebook, Twitter, and Instagram;
(e)use on any video or other content publication page, including, but not limited to, YouTube; and
(f)authorising, causing, procuring, or inducing any person to do any act which would be an infringement of the injunctions referred to in subparagraphs 4(a) to (e) of this Order.
5.ORDER that each of the second, third, fourth, fifth, sixth, seventh and ninth respondents within 7 days of these Orders – whether by themselves, their servants, employees, agents, or otherwise howsoever – do all things necessary to deliver up to the applicants’ solicitors, or destroy under oath:
(a)any and all business cards, brochures, pamphlets, advertising, labels, promotional or marketing material, and the like in their power, possession, custody, or control in Australia which bear the SILVER SERVICE Word Mark, or any mark that is identical or substantially identical with, or deceptively similar to, the SILVER SERVICE Word Mark (including any of the signs in Annexure A, Part 2); and
(b)any materials, products, or things in the respondents' power, possession, custody, or control the exploitation of which by the respondent would be in breach of the injunctions in paragraph 4 of these Orders.
Sixth respondent – MAXI TAXI Trade Mark
6.ORDERS that the sixth respondent – whether by himself, his servants, employees, agents, or otherwise – permanently be restrained from using any of the signs "maxitaxi", "MAXI TAXI" or any mark that is identical or substantially identical with, or deceptively similar to, "maxitaxi" or "MAXI TAXI" (including any of the signs in Annexure A, Part 3)– whether as a word, as a phrase, in the singular, in the plural, by itself, or with or without other indicia, words, phrases, or images – in relation to marketing, advertising, promoting, supplying, offering for sale of, and selling, services relating to taxi van transport services, including, but not limited to, by:
(a)such use as a name or other badge of origin in relation to taxi van transport services;
(b)such use as part of any logo, banner, or device;
(c)use as or on any domain names or websites;
(d)use on any social media page, including, but not limited to, Facebook, Twitter, and Instagram;
(e)use on any video or other content publication page, including, but not limited to, YouTube; and
(f)authorising, causing, procuring, or inducing any person to do any act which would be an infringement of the injunctions referred to in subparagraphs 6(a) to (e) of this Order.
7.ORDERS that the sixth respondent within 7 days of these Orders – whether by himself, his servants, employees, agents, or otherwise howsoever – do all things necessary to deliver up to the applicants' solicitors, or destroy under oath:
(a)any and all business cards, brochures, pamphlets, advertising, labels, promotional or marketing material, and the like in their power, possession, custody, or control in Australia which bear the MAXI TAXI Trade Mark, or any mark that is identical or substantially identical with, or deceptively similar to, the MAXI TAXI Trade Mark (including any of the signs in Annexure A, Part 3); and
(b)any materials, products, or things in the respondents' power, possession, custody, or control the exploitation of which by the respondent would be in breach of the injunctions in paragraph 6 of these Orders.
Seventh respondent – SILVER SERVICE Logo Mark
8.ORDERS that the seventh respondent – whether by himself, his servants, employees, agents, or otherwise – permanently be restrained from using the SILVER SERVICE Logo Mark, or any mark that is identical or substantially identical with, or deceptively similar to, the SILVER SERVICE Logo Mark (including any of the signs in Annexure A, Part 4) – whether with or without other indicia, words, phrases, or images – in relation to marketing, advertising, promoting, supplying, offering for sale of, and selling, services relating to the hiring and transportation by means of taxi, including, but not limited to, by:
(a)such use as a name or other badge of origin in relation to the hiring and transportation by means of taxi;
(b)such use as part of any logo, banner, or device;
(c)use on any websites;
(d)use on any social media page, including, but not limited to, Facebook, Twitter, and Instagram;
(e)use on any video or other content publication page, including, but not limited to, YouTube; and
(f)authorising, causing, procuring, or inducing any person to do any act which would be an infringement of the injunctions referred to in subparagraphs 8(a) to (e) of this Order.
9.ORDERS that the seventh respondent within 7 days of these Orders – whether by himself, his servants, employees, agents, or otherwise howsoever – do all things necessary to deliver up to the applicants' solicitors, or destroy under oath:
(a)any and all business cards, brochures, pamphlets, advertising, labels, promotional or marketing material, and the like in his power, possession, custody, or control in Australia which bear the SILVER SERVICE Logo Mark, or any mark that is identical or substantially identical with, or deceptively similar to, the SILVER SERVICE Logo Mark (including any of the signs in Annexure A, Part 4); and
(b)any materials, products, or things in the respondents' power, possession, custody, or control the exploitation of which by the respondent would be in breach of the injunctions in paragraph 8 of these Orders.
Ninth respondent – 13 CABS Logo Mark
10.ORDERS that the ninth respondent – whether by himself, his servants, employees, agents, or otherwise – permanently be restrained from using the 13 CABS Logo Mark, or any mark that is identical or substantially identical with, or deceptively similar to, the 13 CABS Logo Mark (including any of the signs in Annexure A, Part 5) – whether with or without other indicia, words, phrases, or images – in relation to marketing, advertising, promoting, supplying, offering for sale of, and selling, services relating to the hiring and transportation by means of taxi, including, but not limited to, by:
(a)such use as a name or other badge of origin in relation to the hiring and transportation by means of taxi;
(b)such use as part of any logo, banner, or device;
(c)use on any websites;
(d)use on any social media page, including, but not limited to, Facebook, Twitter, and Instagram;
(e)use on any video or other content publication page, including, but not limited to, YouTube; and
(f)authorising, causing, procuring, or inducing any person to do any act which would be an infringement of the injunctions referred to in subparagraphs 10(a) to (e) of this Order.
11.ORDERS that the ninth respondent within 7 days of these Orders – whether by himself, his servants, employees, agents, or otherwise howsoever – do all things necessary to deliver up to the applicants' solicitors, or destroy under oath:
(a)any and all business cards, brochures, pamphlets, advertising, labels, promotional or marketing material, and the like in his power, possession, custody, or control in Australia which bear the 13 CABS Logo Mark, or any mark that is identical or substantially identical with, or deceptively similar to, the 13 CABS Logo Mark (including any of the signs in Annexure A, Part 5); and
(b)any materials, products, or things in the respondents' power, possession, custody, or control the exploitation of which by the respondent would be in breach of the injunctions in paragraph 10 of these Orders.
All respondents – orders to transfer websites
12.ORDERS that the fifth respondent within 7 days – whether by themselves, their servants, employees, agents, or otherwise howsoever – do all things necessary to transfer ownership of the website at domain URL silverservicecabs.com to Taxiprop.
13.ORDERS that the fifth respondent within 7 days – whether by themselves, their servants, employees, agents, or otherwise howsoever – do all things necessary to cancel the Facebook page at domain URL facebook.com/silverservicecabs2/ .
14.ORDERS that the sixth respondent within 7 days – whether by himself, his servants, employees, agents, or otherwise howsoever – do all things necessary to transfer ownership of the websites at domain URLs book13cabsairport.com.au and 13cabs‑melbourne.com.au to Taxiprop.
15.ORDERS that the seventh respondent within 7 days – whether by themselves, their servants, employees, agents, or otherwise howsoever – do all things necessary to transfer ownership of the websites at domain URLs sydneysilverserviceonline.com and sydneysilverserviceonline.com.au to Taxiprop.
16.ORDERS that the ninth respondent within 7 days – whether by himself, his servants, employees, agents, or otherwise howsoever – do all things necessary to transfer ownership of the websites at domain URLs 13silverservicetaxis.com.au and 13cabsofficial.com.au to Taxiprop.
17.ORDERS that the tenth respondent within 7 days – whether by himself, his servants, employees, agents, or otherwise howsoever – do all things necessary to transfer ownership of the website at domain URL silver13cabssydney.com to Taxiprop.
Respondents’ – damages and costs
18.ORDERS that the second respondent pay the applicant:
(a)damages pursuant to s 126(1)(b) of the Trade Marks Act in the sum of $3,740;
(b)an additional amount of damages pursuant to s 126(2) of the Trade Marks Act in the sum of $6,000; and
(c)costs fixed in the sum of $6,795
being a total amount of $16,535.00.
19.ORDERS that the third respondent pay the applicants:
(a)damages pursuant to s 126(1)(b) of the Trade Marks Act in the sum of $4,306;
(b)an additional amount of damages pursuant to s 126(2) of the Trade Marks Act in the sum of $6,000; and
(c)costs fixed in the sum of $6,795
being a total amount of $17,101.00.
20.ORDERS that the fourth respondent pay the applicants:
(a)damages pursuant to s 126(1)(b) of the Trade Marks Act in the sum of $10,000;
(b)an additional amount of damages pursuant to s 126(2) of the Trade Marks Act in the sum of $2,000; and
(c)costs fixed in the sum of $6,272
being a total amount of $18,272.00.
21.ORDERS that the fifth respondent pay the applicants:
(a)damages pursuant to s 126(1)(b) of the Trade Marks Act in the sum of $10,000;
(b)an additional amount of damages pursuant to s 126(2) of the Trade Marks Act in the sum of $2,000; and
(c)costs fixed in the sum of greater of $6,272
being a total amount of $18,272.00.
22.ORDERS that the sixth respondent pay the applicants:
(a)damages pursuant to s 126(1)(b) of the Trade Marks Act in the sum of $10,000;
(b)an additional amount of damages pursuant to s 126(2) of the Trade Marks Act in the sum of $9,000; and
(c)costs fixed in the sum of $8,158
being a total amount of $27,158.00.
23.ORDERS that the seventh respondent pay the applicants:
(a)damages pursuant to s 126(1)(b) of the Trade Marks Act in the sum of $4,986;
(b)an additional amount of damages pursuant to s 126(2) of the Trade Marks Act in the sum of $9,000; and
(c)costs fixed in the sum of $8,215
being a total amount of $22,201.00.
24.ORDERS that the ninth respondent pay the applicants:
(a)damages pursuant to s 126(1)(b) of the Trade Marks Act in the sum of $2,266;
(b)an additional amount of damages pursuant to s 126(2) of the Trade Marks Act in the sum of $10,000; and
(c)costs fixed in the sum of $8,158.
being a total amount of $20,424.00.
25.ORDERS that the tenth respondent pay the applicants:
(a)damages pursuant to s 126(1)(b) of the Trade Marks Act in the sum of $3,173;
(b)an additional amount of damages pursuant to s 126(2) of the Trade Marks Act in the sum of $12,000; and
(c)costs fixed in the sum of $10,025
being a total amount of $25,198.00.
Annexure A: attached
THE COURT NOTES THAT:
A.These Orders have been amended pursuant to rule 17.05(2)(h) of the Federal Circuit and Family Court of Australia (General Federal Law Rules) (Division 2) Rules 2021 (Cth).
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
(ex tempore, revised from transcript)Judge Baird
In this matter, I am satisfied on the evidence and the helpful assistance of counsel, Ms White, that it is appropriate to grant summary judgment against each of the second, third, fourth, fifth, sixth, seventh, ninth, and tenth respondents, and to make declarations, orders restraining the respondents, requiring delivery up of indicia and business cards, advertising materials, and the like, and orders to transfer their respective websites, which I will identify.
I am also satisfied it is appropriate to order that each respondent pay, but in different amounts, damages pursuant to s 126(1)(b) of the Trade Marks Act 1995 (Cth) (TM Act), an additional amount of damages pursuant to s 126(2) of the TM Act in specified amounts, and to pay costs fixed in varying amounts, which I will set out below.
For the purpose of this summary judgment, attached to these reasons will be an annexure A, which in parts 1 to 5 will identify by Trade Mark the website and signs that each respondent has, within the meaning of the TM Act, used in relation to services within the registration of the relevant Trade Mark.
introduction
The first applicant A2B Australia Limited, the second applicant Taxiprop Pty Limited, and the third applicant Taxis Australia Pty Limited, together the applicants, by application in the case (now formally known as an application in a proceeding) filed 3 September 2021, and further to orders foreshadowing such application made 30 June 2021, seek summary judgment against the remaining eight respondents in this proceeding, being the second respondent, Puneet Pal Singh Mann, ABN 30 360 875 447, the third respondent, Amritpal Singh, ABN 79 834 672 893, the fourth respondent, Ayaz Ashraf, ABN 11 414 217 976, the fifth respondent, Harjinder Singh Grewal, ABN 31 902 200 547, the sixth respondent, Parminder Singh, ABN 49 512 158 395, the seventh respondent, Abdul Qadir, ABN 36 966 367 468, the ninth respondent, Telvindar Singh Atwal, ABN 15 822 912 669, and the tenth respondent, Yadvinder Singh, ABN 84 488 178 622.
The applicants seek summary judgment in relation to the applicants’ claims in this proceeding for infringement of five Australian registered trade marks for what may in sum, be described as the “13 CABS” Word Mark and Logo Mark, “Silver Service” Word Mark and Logo Mark, and “Maxi Taxi” Trade Mark, registered with respect of what may broadly be described as taxi services, and services relating to the hiring and transportation by means of taxi, including taxi transport, hire, booking, and reservation services. The applicants seek judgment pursuant to s 143 of the Federal Circuit and Family Court of Australia Act 2021 (Cth), and r 13.10 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
The Act and Rules, in large part, have imported, in the case of the Act the provisions of the Federal Circuit Court of Australia Act 1999 (Cth), and in the case of the Rules the Federal Circuit Court Rules 2001 (Cth), in effect and in operation prior to 1 September 2021.
Relevantly, s 143(1) of the Act provides that this Court:
… may give judgment for one party against another in relation to the whole or any part of a proceeding if:
(a) the first party is prosecuting the proceeding, or that part of the proceeding; and
(b)the Court is satisfied that the other party has no reasonable prospect of successfully defending the proceeding, or that part of the proceeding.
In the present case, none of the remaining eight respondents has filed and served a defence, or a notice of address for service in the proceeding. Further, whilst the fourth, and tenth respondents have appeared at one or more of the case management hearings, they have not actively participated in the proceeding.
That said, at the hearing of the summary judgment application which commenced on 16 September 2021, the fourth respondent appeared by telephone and has made submissions during the course of the hearing. However, he did not continue his appearance, and he has not appeared today.
Rules 13.10(1) and (2) of the Rules read together provide:
(1)This rule applies if, in a proceeding:
(a)in relation to the whole or part of a party’s claim there is evidence of the facts on which the claim is based; and
(b)either:
(i)there is evidence given by a party or by some responsible person that the opposing party has no answer to the claim; or
(ii)the Court is satisfied that the opposing party has no reasonable prospect of successfully defending the claim.
(2)The Court may give judgment on that claim or part of the claim and make any orders or directions that the Court considers appropriate.
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.
The concept of “no reasonable prospect of success” thus is a different concept to the earlier concept of “no real prospect of success”, and encompasses defences that need not be hopeless or bound to fail. The inquiry of the Court 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.
It should be noted further that the determination of a summary judgment application does not require a mini trial: see Kimber v The Owners Strata Plan No 48216 [2017] FCAFC 226 at [62], citing with approval the earlier decision of Australian Securities and Investments Commission v Cassimatis [2013] FCA 641 at [46].
No reasonable prospects
The Court has a discretion to grant or refuse a summary judgment on an application made by a party under s 143 of the Act. However, that discretion must be exercised judicially.
In the present case, an assessment under s 143 of the Act whether each of the respondents has no reasonable prospect of successfully defending the claims made by the applicants in the statement of claim against him respectively will require, for each respondent respectively:
(a)identification of the causes of action pleaded by the applicants in respect of the claims;
(b)identification of the pleaded facts said to give rise to those causes of action;
(c)a review of the evidence tendered by the applicants in support of the application; and
(d)consideration of the respondents’ respective defences.
As I have said, in the present case there is no defence filed by any respondent, and Ms White has submitted that it cannot thus be said that there is any dispute that the respondents have relevantly infringed. There is considerable merit in Ms White’s submission.
However, in this proceeding the applicants do not simply rely on the continuing default of the respondents and their non-participation in the proceeding. Rather, the applicants have filed and rely on evidence in support of their summary judgment application.
Overview of the applicants and their trade marks
It is appropriate that I set out the applicants’ Trade Marks relevant to this proceeding by reference to paragraphs 17, 18, 19, 24, and 28 of Mr Lucchese’s affidavit relied on by the applicants:
[17]Taxis Australia is the registered owner of the following Australian trade mark:
Trade mark no.
Trade mark
Goods & services
Status
900410
13 CABS
Classes 12 and 39, including:
Class 39: Taxi services including taxi transport, taxi hire, and taxi booking and reservation services
(13 CABS Services)
Registered
Priority date 16 January 2002
Renewal due 16 January 2032
(13 CABS Word Mark)
[18]Taxiprop is the registered owner of the following Australian trade mark:
Trade mark no.
Trade mark
Goods & services
Status
1929482
Classes 9, 12, 25, 36, 38, 39, and 42 including:
Class 39: Taxi services including taxi transport, taxi hire, and taxi booking and reservation services
(13 CABS Services)
Registered
Priority date 25 May 2018
Renewal due 25 May 2028
(13 CABS Logo Mark)
[19]Taxiprop is the registered owner of the following Australian trade mark:
Trade mark no.
Trade mark
Goods & services
Status
1427083
SILVER SERVICE
Class 39: Services in this class relating to the hiring and transportation by means of taxi
(SILVER SERVICE Services)
Registered
Priority date 25 May 2011
Renewal due 25 May 2031
(SILVER SERVICE Word Mark)
[24]Taxiprop is the registered owner of the following Australian trade mark:
Trade mark no.
Trade mark
Goods & services
Status
705074
Class 39: Services in this class relating to the hiring and transportation by means of taxi
Registered
Priority date 22 March 1996
Renewal due 22 March 2026
(SILVER SERVICE Logo Mark)
[28]Taxiprop is the registered owner of the following Australian trade mark:
Trade mark no.
Trade mark
Goods & services
Status
615059
MAXI TAXI
Class 39: Taxi van transport services
Registered
Priority date 1 November 1993
Renewal due 1 November 2023
(MAXI TAXI Trade Mark).
A2B was earlier registered as Cabcharge Australia Pty Limited, but since conversion to a public company – and relevantly, at all material times in this proceeding, on 22 November 2018 changed its name to A2B Australia Limited.
A2B is the owner of a group of companies that operate as a taxi network business, which is one of Australia’s leading personal transport service providers, operating a fleet of approximately 10,000 vehicles throughout Victoria, South Australia, Queensland, New South Wales, the Northern Territory, and Western Australia.
Within the A2B group of companies, Taxiprop is the entity that owns the Trade Marks I have identified above, and other intellectual property rights, which it licenses back to particular companies within the group of companies comprising A2B and its subsidiaries.
Taxis Australia is a company within the A2B group of companies which, relevantly, is the registered owner of the 13CABS Word Mark.
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
This proceeding was commenced by application and statement of claim, both dated and filed 11 January 2021. The proceeding was commenced against 11 respondents. The first Court date was listed before me on 3 February 2021. On that occasion, the fourth, and tenth respondents appeared.
As the proceeding concerned the applicants’ claim for relief of infringement of their registered Trade Mark rights, the proceeding was docketed to me for case management, as the Judge conducting the Court’s national intellectual property list.
At the first Court date I conducted a case management hearing in which, being satisfied on the evidence before the Court of attempted service, and communication of the application, statement of claim, and genuine steps statement, I made orders that service had been effected on each of the first, fourth, and tenth respondents, and that thereafter those respondents be served by email at the email addresses that were listed in annexure A to that order. I made further orders that the applicants communicate the orders made on the day to all respondents by 10 February 2021.
The matter was next before the Court on 21 April 2021, when I granted leave to the applicants to file and serve an amended pleading to amend details in relation to the fifth respondent. The initiating process otherwise was in the same form as had previously been filed.
On 30 June 2021, being satisfied on the evidence before the Court, I made orders effecting substituted service on all respondents then unserved in accordance with the Rules. Pursuant to the Rules then in force, relevantly I ordered that service on each of the second, third, fifth, sixth, seventh, and ninth respondents be taken to be effected on various dates to the email addresses that were annexed to the orders made on 30 June 2021. The orders of 30 June 2021 included orders adjourning proceedings to 16 September 2021 for case management, and if appropriate, the hearing of any application for summary judgment or default orders.
I am satisfied on the evidence that the pleadings, the orders which the applicants seek today, and the substance of the applicants’ claims have been brought to each of the respondents’ attention, further to emails to the respective respondents’ email addresses in accordance with the orders I have previously made.
In terms of participation by these respondents, I should say that each of the Court events I have referred to above has occurred by telephone. A person identifying themself as the fourth respondent appeared at the first Court date of 3 February 2021, the second Court date of 21 April 2021, and has made submissions by email before this summary judgment application, and appeared by telephone at the hearing yesterday. A person identifying themself as the tenth respondent appeared by telephone at the first Court date of 3 February 2021, and the second Court date of 21 April 2021, but has not otherwise participated.
Applicant’s evidence
The applicants have filed and rely on the following affidavits which Ms White has taken me, and made submissions in relation to in this hearing:
(a)first, the affidavit of Mr Adrian Bartolo Lucchese, affirmed 3 September 2021. Mr Lucchese is the general counsel and company secretary of A2B, a director and company secretary of Taxiprop, and a director of Taxis Australia. He gives evidence of the history of the applicants and the applicant group, of the taxi networks operated by the group, of the applicants’ registered Trade Marks relied upon in this proceeding, the use, promotion, and ensuing reputation accrued to the applicants in respect of each of the Trade Marks, and his concern of the damage to the applicants’ reputation by the respondents’ use of the Trade Marks. Mr Lucchese deals, in turn, with each of the registered Trade Marks. He also gives evidence of foregone fees and sales and the damages claim of the applicants;
(b)secondly, an affidavit of Mr Peter Ernest Knowles, affirmed 3 September 2021 (Knowles #1). Mr Knowles is a solicitor at the applicants’ solicitors, K&L Gates. He gives detailed evidence of the formalities associated with the registration of each of the Trade Marks, gives evidence of the applicants’ awareness and investigations, conduct of, correspondence with, and dealings in respect of each of the respondents, including history of correspondence with, service on, and appearances by (or lack of appearances by) each respondent. Annexed to Knowles #1 are 117 annexures, which include annexures evidencing the websites registered by each respondent, the searches of the registrant details, various correspondence with, and demands served on, and investigations relating to each of the respondent’s identity, communications with, and dealings in the course of seeking to protect the applicants’ Trade Mark rights.
I have reviewed screenshots of each of the websites that are annexed to Knowles #1, and I am satisfied on the evidence contained in those annexures of the identification of use by the respective respondent of the signs that have been identified, and the use that has been made of various of the Trade Marks, or Trade Marks that are substantially identical with or deceptively similar to each of the applicants’ Trade Marks. Mr Knowles gives evidence of service on each of the respondents of Court documents, and Orders made in the course of the proceeding;
(c)thirdly, a second affidavit of Peter Ernest Knowles, affirmed 15 September 2021 (Knowles #2). In Knowles #2, Mr Knowles updates his earlier affidavit as to correspondence and dealings with the fourth respondent, gives evidence of the status of the websites in issue in this proceeding, and also of the notification in accordance with the orders for substituted or deemed service that I have earlier made in the proceeding, and giving notice to each of the respondents of this application and of this hearing date; and
(d)fourthly, the affidavit of Mr Christopher John Round, affirmed 3 September 2021. Mr Round is a partner of the applicants’ solicitors, K&L Gates, and the solicitor on the record; he has extensive experience in intellectual property matters, particularly intellectual property litigation. He gives evidence of the costs the applicants have expended in professional fees, counsel disbursements, and gives evidence both in support of the applicants’ claim for costs on an indemnity basis as against each of the respondents, and the offers of compromise that have been made to various of the respondents in the course of this proceeding. Mr Round attests that the applicants’ total professional fees, counsel fees, and disbursements billed to date (including the present application) is approximately $115,000 (excluding GST). Mr Round also gives an itemisation of costs were costs to be ordered in accordance with Schedule 1 of the Federal Circuit Court Rules 2001(Cth), which whilst it has been superseded by Schedule 2 Part 1 of the Rules and amounts have slightly increased, is otherwise relevantly the same. Were costs to be awarded on what are described as “scale costs”, the costs would be approximately $30,000 total. I say approximately, because a calculation has not been done under the current scale in force at this time.
I am satisfied on the evidence of Mr Lucchese of the following:
(a)since 2002, the 13CABS taxi network operated by entities within the A2B group has grown to become the largest in Australia;
(b)the use of the 13CABS Trade Marks is extensive and is in use substantially throughout New South Wales, Queensland, Victoria, and South Australia, and both the 13CABS Word Mark and the 13CABS Logo Mark are used in relation to services within class 39 services provided by the applicants through booking platforms featured on a website of the A2B group, which include relevantly websites with the URLs and and for the promotion of the 13CABS Trade Marks, and decals on what are known as 13CABS-branded taxis;
(c)the applicants, through the 13CABS taxi network, provide relevant services: an example of a licence agreement between a subsidiary of A2B, Combined Communications Network Pty Limited and drivers, identifies that the network operates a booking and dispatch system through which the taxis forming part of the network conduct their business; and
(d)similarly to the above, in relation to the Silver Service Trade Marks, the taxis providing services under the brand name or the Silver Service Trade Marks pay A2B’s taxi network businesses licence fees in terms of network affiliation fees, and A2B’s payment business collects a 5 per cent service fee for electronic payment transactions through its in-car or handheld payment terminals.
The applicants submit that by the respondents’ use of their respective websites and telephone numbers identified on those websites, which use one or more of the Trade Marks, the respondents have taken away from the applicants, and members of the A2B taxi network, the value of using (as relevant to the respective respondent) one or more of the 13CABS Word and Logo Trade Marks, and the Silver Service Logo and Word Trade Marks.
The respondents are each individuals, and each appears to have registered or be operating one or more websites. Thus, in the statement of claim the applicants have, per respondent, set out in detailed form the particular respondent’s conduct which the applicants allege infringes one or more of the Trade Marks.
In effect, each of the applicants bring separate claims against each respondent for each respondent’s respective use in personal transport or taxi businesses via their respective one or more websites. This proceeding groups together under the one proceeding claims comprising one or more causes of action against the respective 8 respondents (and before settlement, also other respondents).
On the evidence to which I have referred to above, I am satisfied that the relevant applicant is the owner of the relevant Trade Mark, and I am satisfied that each of the relevant respondents has operated a taxi business via one or more websites, as I will identify, and used as a trade mark, a trade mark or more than one trade mark, which is substantially identical with, or deceptively similar to, one or more of the above registered Trade Marks, that he has done so without the licence or authority of the applicants, and further, that he has done so in relation to services in respect of which the Trade Marks are registered.
RELEVANT PROVISIONS OF THE TRADE MARKS ACT
Section 120(2) of the TM Act provides:
(2)A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(a)goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
(b) services that are closely related to registered goods; or
(c)services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
(d) goods that are closely related to registered services.
I refer to and incorporate [23] – [29] of the summary judgment application I delivered in the matter of Otter Products LLC v Hayden [2021] FCCA 2012, supplementing those paragraphs by reference in [24] to s 7(5) of the TM Act, in place of 7(4):
[23] Section 120(2) of the TM Act provides:
(2)A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(a)goods of the same description as that of goods ( registered goods ) in respect of which the trade mark is registered; or
(b) services that are closely related to registered goods; or
(c)services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
(d) goods that are closely related to registered services
[24] By section 7(5) of the TM Act:
use of a trade mark in relation to services" means use of the trade mark in physical or other relation to the services.
[25]Also relevant are the rights conferred on the registered owner of a registered trade mark under s 20 of the TM Act, including, under subsection (1):
the exclusive rights to use the trade mark; and
to authorise other persons to use the trade mark in relation to the goods;
in respect of which the trade mark is registered.
[26]By subs 20(2), the registered owner of a trade mark also has the right to obtain relief under the TM Act if the trade mark has been infringed.
[27]Section 9 defines when a trade mark is taken to be applied to, and in relation to, any goods. Section 9(1) of the TM Act provides:
For the purposes of this Act:
(a)a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and
(b) a trade mark is taken to be applied in relation to goods or services:
(i)if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or
(ii)if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and
(c)a trade mark is taken also to be applied in relation to goods or services if it is used:
(i)on a signboard or in an advertisement (including a televised advertisement); or
(ii)in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;
and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.
[28]Section 126 of the TM Act sets out the relief that a Court might grant in an action for infringement of a registered trade mark. Section 126 of the TM Act provides:
(1)The relief that a court may grant in an action for an infringement of a registered trade mark includes:
(a)an injunction, which may be granted subject to any condition that the court thinks fit; and
(b)at the option of the plaintiff but subject to section 127, damages or an account of profits.
(2)A court may include an additional amount in an assessment of damages for an infringement of a registered trade mark, if the court considers it appropriate to do so having regard to:
(a) the flagrancy of the infringement; and
(b)the need to deter similar infringements of registered trade marks; and
(c)the conduct of the party that infringed the registered trade mark that occurred:
(i) after the act constituting the infringement; or
(ii)after that party was informed that it had allegedly infringed the registered trade mark; and
(d)any benefit shown to have accrued to that party because of the infringement; and
(e) all other relevant matters.
[29]In short, the relief includes injunctions, at the option of the plaintiff damages or an account of profits, and where damages are awarded, an additional amount having regard to the flagrancy of the infringement, the need to deter similar infringements of registered trade marks and the conduct of the party that infringed the registered trade mark that occurred after the act constituting the infringement or after the party was informed that it had allegedly infringed the registered trade mark.
A trade mark registration is infringed when a sign is used as a trade mark which is substantially identical with, or deceptively similar to, the registered trade mark in relation to similar goods or services as those of the registered trade mark.
For the purposes of summary judgment, it suffices to refer to the classic statements of Windeyer J in Shell Co of Australia Limited v Esso Standard Oil (Australia Limited) [1963] 109 CLR 407 at [415], which statements of both substantial identity and deceptive similarity have been restated and approved many times in the courts, including in this Court:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”. Whether there is substantial identity is a question of fact. Judging by the eye alone, as I think is proper for the determination of substantial identity…
Turning then to the question of deceptive similarity, Windeyer J stated:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side.
Windeyer J continued:
And in Australian Woollen Mills Ltd v. F. S.Walton &- Co. Ltd Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.
RESPONDENTS’ WEBSITES
The evidence shows that over time each respondent registered and operated at least one, and up to three websites. The evidence shows that the websites, according to the domain administrator registration details obtained by a “WHOIS” search at the respective domain URL for the registrant details of that domain URL, are registered under each respondent’s respective ABN.
The evidence shows that the second, third, fourth, sixth respondent, in respect of his second website, the seventh respondent, in respect of his first website, and the ninth respondent, in respect of his first and second website were registered through the domain administrator AU Domain administration (AUda), whilst for the fifth, and the tenth respondents the domain administrator of their websites was the GoDaddy domain, and the seventh respondent’s second website domain administrator was the Tucows domain. Lastly, the seventh, and ninth respondents’ respective third websites were registered through the Crazy domains administration.
SERVICE AND OFFERS OF COMPROMISE
In the case of service, so far as I was able to readily ascertain, there does not appear to have been any service personally on a particular respondent. That is because it appears that each of the particular respondents has had the benefit of an email or telephone number through which they can via their respective websites have the opportunity to exploit the Trade Marks or signs that they have been using, and also to evade publicly identifying themselves unequivocally.
I was satisfied on previous Court occasions that each of the respondents had been served by email, and has otherwise been made aware of these proceedings. Before these proceedings were commenced, in the letters of demand asserting the applicants’ Trade Mark rights, each respondent had the opportunity to modify their conduct, approach the applicants, and transfer the website or cease the conduct, and satisfy the applicants’ demands with an opportunity to compromise or mediate to a resolution.
The letters of demand, and more particularly the offers of compromise, demonstrate that the applicants have been willing to compromise their claims and to accept amounts that on their calculations would be less than what they would obtain had the conduct been lawfully entered into, that is, by first obtaining the licence from the particular applicants, or secondly had it been mediated in good will to resolution.
Whilst I have reached a conclusion that the licence fee evidence is not such as to persuade me that the full amount of the licence fee claimed is all attributable to the Trade Marks, nonetheless on each of the calculations that I will do in these reasons, I am satisfied that each of the respondents individually has:
(a)infringed the Trade Marks;
(b)has had the opportunity to use those Trade Marks in respect of the service for which the relevant Trade Mark is registered and in some cases services that are of the same description or similar to those that are registered;
and that:
(c)some of the respondents have in some level communicated with, and/or sought to engage with the applicants, but in no instance has their conduct been such as to fully compensate the Trade Mark owner, or fully satisfy the applicants by assuring the applicants of the lack of possibility of them ever using the Trade Marks again.
I have reviewed certain offers of compromise in the proceedings which the applicants have put in evidence as examples of the offers made. Having regard to the Calderbank v Calderbank [1975] 3 All ER 333 principles which have been set out in a number of cases, I had a concern that the first offers at least were not first such as to clearly identify and distinguish between the damages and costs amounts, and secondly what the amount was that the compromise was to be.
I say this because in an offer of compromise which is an exhibit to the proceeding, the offeror asks for consent orders, and a damages amount of $10,000. The offer says nothing about costs at that point, but then says that should the particular respondent pay by way of instalments in a shorter period of time, the sum of $5,000 would possibly fully satisfy the claim. Thus, it is not in every case of every respondent that I am satisfied that indemnity costs should be awarded.
Nonetheless, indemnity costs may be awarded not only where a respondent without good cause, unreasonably rejects an offer of compromise, but may also be awarded where the behaviour of the respondent party in the proceeding, in terms of their conduct (or non-conduct), is such as to bring unwarranted counterclaims or make a proceeding more complex and more wasteful in terms of legal fees than it should be if both parties had been complying in good faith with their obligations in this Court, to act cost-effectively, minimise costs, and also to bring proceedings to a reasonable compromise where possible.
In respect of each of the respondents, unless I particularly identify otherwise, the behaviour of each of the respondents in response to letters of demand, and in many cases the service of the Court initiating process and other Court documents evidences the following:
(a)first, that the particular respondent received notice of the applicants’ Trade Mark rights, as they either changed details on the website, or registered or started using a second or third website; and
(b)secondly, each of the respondents ignored the demands until being served with notice of this proceeding.
In the case of a number of the respondents, it appears that they continued the conduct with the operation of the particular website, and in some cases moved to further URLs or attempted to change but not eliminate uses of the Trade Marks. In some cases, the particular respondent then sought to “sail as close to the wind” as possible by using the Trade Marks and sometimes putting a further word within the mark. For example, instead of the mark “Silver Service”, the use by one of the respondents was “Silver Cab Service”, or in many cases by putting a geographical indicator in or on the mark or website, thus descriptive words such as “Melbourne”, “Sydney”, “Vic”, “Airport” were either introduced as prefixes before the use of the mark in the website name, or as suffixes after the use of the particular mark in the website name, or on occasions interposed within the mark.
Additionally, some of the respondents – for example, the second, and sixth respondents – have sought to depict part of the 13CABS number using either an upper-case initial capital “L” or a lower-case initial “l” in lieu of the numeral 1. I consider that visually these uses are substantially identical with the registered mark given the appearance of the 13CABS Trade Marks. Whilst I say substantially because on a visual inspection it looks like something that is substantially identical with the registered 13CABS Trade Mark, I consider that in use that is non‑visual, including perhaps within metatags on websites, it may not be so, however I consider that the Trade Mark(s) would nonetheless be deceptively similar. I also point out that uses of the words “official” in my view merely reinforce the attempt by that particular respondent to identify themselves with the Trade Marks of the applicants.
Thus, in my view any argument that might be put by a respondent, and I note there is no such argument put except, perhaps in the case of those semi-participating respondents such as the fourth respondent, that the domain from whom they acquired the registration of the website led them into error does not satisfy me as being any type of legitimate defence to their conduct.
It cannot be said that the respondents can be considered as acting in concert however, and I note there has been no suggestion by the applicants or Ms White that they did so act. Nor am I able to deal with the respondents as an undifferentiated whole notwithstanding any of my foregoing remarks which may tend to suggest otherwise. That is because, as I have considered the evidence over the last two days, it appears to me that each of the respondents has been acting individually and thus must be assessed by their conduct individually, both as to damages and costs.
It is appropriate however, that the declarations that the Court will make, and the injunctions or restraining orders that the Court will impose are able to be ordered by grouping respondents according to the particular Trade Mark that I have concluded they have infringed by their conduct on their individual websites.
In the case of the sixth and ninth respondents, there appears to have been a particular web developer who has either assisted, or acted at the respondent’s behest in the design of the website and its operation. This is a person who goes by the email contact detail of [email protected]. The evidence of Mr Round and Mr Knowles establishes Mr Kumar represents himself as being the web developer of one or other of those respondents. However, notwithstanding the contact detail appears to be the same for the websites of both the sixth, and ninth respondents, I am not satisfied by that commonality that those two respondents have been shown to have been acting in concert.
PRINCIPLES RELATING TO DAMAGES AND COSTS
It is appropriate now to set out the principles for damages for infringements of trade marks and costs. I turn first to the principles relating to damages under s 126(1) and s 126(2) of the TM Act.
Section 126(1) of the TM Act provides:
(1)The relief that a court may grant in an action for an infringement of a registered trade mark includes:
(a)an injunction, which may be granted subject to any condition that the court thinks fit; and
(b)at the option of the plaintiff but subject to section 127, damages or an account of profits.
Section 126(2) of the TM Act provides:
(2)A court may include an additional amount in an assessment of damages for an infringement of a registered trade mark, if the court considers it appropriate to do so having regard to:
(a) the flagrancy of the infringement; and
(b) the need to deter similar infringements of registered trade marks; and
(c)the conduct of the party that infringed the registered trade mark that occurred:
(i) after the act constituting the infringement; or
(ii)after that party was informed that it had allegedly infringed the registered trade mark; and
(d)any benefit shown to have accrued to that party because of the infringement; and
(e) all other relevant matters.
Damages under s 126(1) of the TM Act are commonly described as compensatory damages, or as damages having an element of restitution to the trade mark owner for the unauthorised use of their mark.
In the present case, the applicants have sought damages by reference to the licence fee that they say they have lost by this unauthorised use. The licence fee approach is a useful approach where a trade mark owner in fact licenses the use of its trade mark, by example for allowing, as in the present case, taxi drivers and their taxis that participate in a network conducted by the A2B group to use a trade mark. Thus, under the A2B group there are networks of taxis that operate under one or more of the 13CABS, Silver Service, or Maxi Taxi Trade Marks.
An argument that is sometimes put against such a licence approach is that the particular respondent would never have entered into a licence with the particular trade mark owner. It must be remembered, however, that this licence approach is a hypothetical approach – that is, had both parties been acting in good faith and fairly sought to reach an agreement, this is the agreement that they would have reached.
The principles applicable to damages under this compensatory and restitutionary basis have been recently helpfully considered in detail by her Honour Katzmann J in Universal Music Publishing Pty Ltd & Anor v Palmer (No. 2) [2021] FCA 434, a copyright case which I consider has equal relevance to trade mark infringement cases such as the present. Indeed, her Honour Katzmann J referred to an earlier decision of Yates J in relation to trade marks and related rights which set out some of the principles in detail which are repeated in her Honour’s judgment. Her Honour at [358], [363], and then under her analysis of the principles at [364]‑[395] has discussed the licence approach, and also what is known as the user principle for compensatory damages. In her Honour’s reasons, concluding at [395], she explained that (in sum) in cases based on the user principle, including cases involving infringement of intellectual property, the remedy attempts to rectify the wrongful act by requiring payment to the owner/licensor of an amount that would have made the use lawful.
In the cases to which her Honour refers, including in the High Court of Australia case of Lewis v Australian Capital Territory (2020) 381 ALR 375; [2020] HCA 26 reasons of Gordon J at [82] – [83], and of Edelman J at [138] – [149] (which Katzmann J summarises in Universal Music at [395]) damages are awarded even if the trade mark owner applicant has suffered no actual detriment, including no loss of an opportunity that would have been exercised to license the use of the relevant intellectual property rights. Further, it might be noted, relevant to the present case, that user damages may be payable if the infringer has “kept it”, that is, kept the particular use of the trade mark to themselves for the opportunity of their own use, whether or not they did use it. I have found that a useful analysis in the present case.
I turn then to the concept of damages under s 126(2) of the TM Act, or what the TM Act calls “an additional amount in an assessment of damages”, and often described as additional damages. The TM Act distinguishes between the licence fee or user principle, and an amount of damages for the wrongful conduct of the respondent that is over and above the use of the Trade Mark, but can be seen as reflecting some level of penalty or view of the Court’s opprobrium as to the behaviour of a party.
Ms White has helpfully referred to Bromwich J’s decision in the trade mark case of Geneva Laboratories Limited v Prestige Premium Details Pty Ltd (No. 5) (2017) 122 IPR 279; [2017] FCA 63 where at [80], his Honour summarised the key features of an additional damages assessment, noting 8 elements. I summarise them with the assistance of Ms White’s submissions at [26]:
[26]…
(1) there is no need for proportionality to compensatory damages;
(2) an award involves an element of penalty;
(3) judicial disapproval has a part to play;
(4)the terms of the statutory provision as to the non-exhaustive matters that can be taken into account…do not constitute a precondition for them to be awarded;
(5)flagrant conduct includes that which is deliberate and calculated in disregard of the injured party’s rights, or a cynical pursuit of benefit;
(6)post-infringement conduct such as in the conduct of proceedings is relevant more to costs than to additional damages but is not irrelevant;
(7)additional damages encompass but are not the same as aggravated or exemplary damages at common law; and
(8) specific deterrence has a part to play, including general deterrence.
In this Court, I have referred to and explained the application of the concepts of additional damages in a copyright infringement in Henley Arch Pty Ltd v Del Monaco [2019] FCCA 3848, and a design infringement case in PositiveG at [95] ‑ [96]. More recently, in a summary judgment in the trade mark case of Otter Products, I summarised those decisions, and decisions of the Federal Court, at [49] and [51] as follows:
[49]In PositiveG I set out the principles relating to the award of additional damages at [95] and [96] (citations omitted):
[95]The principles relating to the award of additional damages have been set out many cases in the Federal Court and relied on in this Court in intellectual property proceedings. Whilst these have particularly been in relation to copyright and trade mark infringement, the same principles are relevant to design infringement. I have found useful the discussion of such damages in the decision of Bromwich J in the trade mark and copyright matter of Geneva Laboratories at [74] and following.
[96]I referred to his Honour’s discussion and the cases to which he refers, in my decision in this Court in Henley Arch. For convenience, I will adopt what I there said at [102]‑[105], noting that in Henley Arch I was concerned with infringement of copyright, and circumstances where the respondent in that case ultimately did appear, and it was not established that he was a serial offender, or a competitor, or, indeed, conducting an infringing business in infringing products in the course of his ordinary business. In the present case the Respondent is trading in competing products. As I said in Henley Arch [at [102] – [103]] …
…
[51] In Henley Arch I then stated at [104] to [105]:
[104]Perram J in Halal Certification Authority v Scadilone Pty Limited [2014] FCA 614; (2014) 107 IPR 23, observed that if additional damages are appropriate, the amount of damages to be awarded must operate as a sufficient deterrent to ensure that the conduct will not occur again. It should also be noted that, whilst additional damages encompass, they are not the same as aggravated or exemplary damages at common law. Further, as Bromwich J in Geneva observed, at [80] (referring to Truong), specific deterrence has a role to play, including general deterrence.
[105]It is not always the case, however, that additional damages must be given, nor that they be such as to be given in an award and an amount as claimed by an applicant. I adopt what Bromwich J said in Geneva at [82]:
Additional damages may be seen as encompassing broad concepts not always readily amenable to precise measurement or quantification. This includes having regard to capturing aspects of loss that have not been able to be ascertained because of the imperfect nature of litigation and evidence gathering in reflecting all aspects of wrongdoing and the total damaging effect of infringing or contravening conduct. It also entails giving a dollar figure to otherwise intangible considerations of punishment, giving effect to judicial disapproval and sanction and future-looking considerations of specific and general deterrence.
I am persuaded that it is appropriate in the present case to award additional damages to varying amounts in respect of the conduct of each of the respondents. I note however, that the evidence of the applicants’ instructors Mr Round and Mr Knowles has an element of mixing of conduct, whereas (see Geneva element (6)) one has to distinguish between conduct of a trade mark nature, such as continuing after notice the use of the Trade Marks but trying to hide a URL or a person behind it, and conduct which is procedural, which might be raising unmeritorious defences, or evading service after proceedings. I have sought to distinguish those elements in the present case.
Licence agreement
I now turn to the licence fee approach relied on for damages under s 126(1) of the TM Act. In the present case, Mr Lucchese gives evidence of licence fees for joining the network – respectively, for the 13CABS, Silver Service, or Maxi Taxi networks – which comprise an amount, in rounded terms, of an affiliation fee in the order of between $670 to $705 per month, which would equate to an annual fee of $8,000. In addition, there is a 5 percent service fee on electronic payments that the applicant group receives for participation in the network where electronic payments are used.
A number of template licence agreements are in evidence. I take by way of an example a licence agreement evidenced for the 13CABS network. The licensor is a third company, which on the evidence is a subsidiary for the ultimate holding company, which is A2B. The licence agreement itself does not identify a 13CABS Trade Mark. The licence sets out that the operator of the network operates a “booking and dispatch system” operated in conjunction with what is defined equipment and related contact centre for a network named Combined Communications Network. By the licence agreement the licensee has requested a licence to operate on that network’s dispatch system, and use the service of the network set out in the agreement, and the network has agreed to:
(a)supply the licensee with the equipment, software, GPRS or 3G capability necessary to then grant a licence to operate on the system;
(b)operate what is known as an “M7 account”, which is a running account;
(c)accept dockets; and
(d)if the licensee decides to use the CabCharge payment system, to process certain dockets and deposit proceeds into the M7 account and operate its licence charges accordingly.
The licence, pursuant to clause 1(2) of the licence agreement, is as follows:
1(2)In return for the payment of the Licence Fee, Combined Communications Network agrees to grant to You licences to operate the Vehicle on the Dispatch System, to use in connection with the Dispatch System the Equipment supplied under this Agreement, and to have and operate the M7 Account with Combined Communications Network ("Licence").
By clause 11, the licensee is required to display door badges and advertising material specified and authorised from time to time on the vehicle that the licensee operates. The specified door display badges and advertising material are those specified by the licensor.
From my review of the licence agreement, it appears to me that the licence comprises at least three aspects or components: first, participation on the dispatch system; secondly, to use the supplied equipment in connection with that system (and, in one or other of these components to display the specified door badges and advertising materials); and thirdly, to have and operate an M7 account with the network. I have no further evidence of any Trade Mark licence. However, it is reasonable to infer that the 13CABS network operates, in its public-facing aspect, under or by reference to the 13CABS Trade Mark, and that some of the advertising material and door badges and decals would include those depicting the Trade Marks being the 13CABS Word Mark and the 13CABS Logo Mark, and I am prepared to so infer.
Approach to calculation of damages and additional damages
With those indications I turn to the conduct of each of the respondents, my conclusions, and relief, including orders on judgment, damages, and costs will follow.
THE CONDUCT OF EACH RESPONDENT and findings on damages and costs
Second Respondent
The evidence establishes that the second respondent has purported to conduct business as a sole trader under the ABN I referred to above at [4], in the business of providing personal transport services operating in Melbourne.
Since at least 22 August 2019, he has acquired the domain URL and since at least 3 April 2020, through that website he has operated a personal transport business, in substance a taxi business.
It is relevant to note that this website uses the initial “l” in lowercase, which presents itself as the numeral 1. The second respondent’s website features as a predominant element, “l3CABS”, “l3CAB”, and “l3cabtaxi”. Screenshots of the website in evidence show that the sign “l3CABS” is presented by itself as the business name and the trade mark of the second respondent’s business. In addition, these forms of use appear in banner form on the website. The website describes the second respondent’s services as, “highest quality taxi service(s)”.
In addition, it appears that the mark “Silver service” was used for approximately a year, on my assumption that the website was operational from on or about the date it was registered.
The second respondent was first notified by letter of demand on 23 April 2020 that the applicants objected to his use of the Trade Marks, and a further letter was sent by the applicants on 9 July 2020.
Following the second letter of demand, the phrase, “Silver service” was removed from the website, but the site was not transferred to the applicants and it continued to be operational.
I am satisfied on the evidence that the second respondent has used the following signs:
No. Trade Marks/signs used 1. l3cabs 2. l3cab taxi 3. l3cabstaxi.com.au 4. 5. 6. Silver service
I am satisfied that the second respondent has infringed the 13CABS Word Mark and the 13CABS Logo Mark by these uses, and by its use in the domain name “l3cabstaxi.com.au”.
Whilst the second respondent did not respond to either letter of demand, I am satisfied the first letter of demand was served on or about 12 January 2021, and the second letter of demand was served with the amended pleadings on 4 May 2021. It appears it was not until approximately 11 May 2021 that the second respondent cooperated by providing the relevant authentication keys and transfer codes for the domain URL
It follows and I find the second respondent has infringed the 13CABS Word Mark and the 13CABS Logo Mark for a period of up to 16 and a half months. In these circumstances, I am satisfied it is appropriate to make a declaration of infringement, to make restraining orders, and to award compensatory damages pursuant to s 126(1) of the TM Act, and an additional amount of damages under s 126(2) of the TM Act.
As the second respondent has operated one website, and has infringed at least two of the applicants’ Trade Marks, there is some proportionality in the damages I will award by way of compensation, and by way of additional damages.
The applicants submit that the term “Silver service”, which appeared on at least one page of the second respondent’s website up until one or two months after the applicants sent the second letter of demand, infringes the Silver Service Word Mark. Whilst the phrase appears within the website to identify a particular type of taxi, I am satisfied that the second respondent has thereby sought to use the phrase “Silver service” as a badge of origin, that is, as a trade mark, to identify a particular type of taxi which the second respondent offered to provide to customers via the second respondent’s website.
On balance, on this summary judgment application, and having regard to the lack of any participation by the second respondent, I find that the use of the phrase “Silver service” on the website of the second respondent in the period up until about August 2020 is an infringement in breach of s 120(2) of the TM Act, as at least being a service of the same description as the registered services, if not within s 120(1) of the TM Act. However I consider that visually that use, whilst use as a trade mark, is secondary in terms of the attention that is drawn to the predominant uses of the 13CABS Trade Marks on the website.
The applicants made an offer of compromise by letter to the second respondent on 14 May 2021. That offer contained a settlement sum of $8,000, and was put on the basis of the principles set out in Calderbank. Self-evidently, the second respondent did not accept the terms of settlement, and did not engage with or accept the offer. The applicants therefore seek costs on an indemnity basis.
Thereafter, on 3 July 2021 the applicants again wrote and made a subsequent offer for the sum of $10,000.
The applicants today seek costs against the second respondent in the sum of $8,732.
I am not persuaded that indemnity costs should be ordered as against the second respondent.
Compensatory damages payable by the second respondent will be ordered according to the damages calculation of the licence fee I have outlined above. As to additional damages, I am satisfied that the sum of $6000 is appropriate. As to costs, I will order party and party costs because of the transfer of the website, calculated as I have outlined above. In each case I will order as a fixed amount.
Third Respondent
The third respondent is a sole trader who has conducted a taxi business via a website at domain URL The third respondent’s website was registered on 11 June 2019. The registrant details list the registrant ID as the ABN of the third respondent: see [4] above.
The evidence establishes that the applicants first became aware of the third respondent’s website on about 17 May 2020, and that the third respondent, by reference to his ABN and the content of the third respondent’s website, purports to conduct business as a sole trader under his ABN, in the business of personal transport services – that is, taxi services –operating in Melbourne.
Similarly to the second respondent’s conduct, but specific to the third respondent, the evidence shows that at and via the third respondent’s website the third respondent has been using as trade marks the signs, being “13cab Silver Service Taxi”, and also those words within a rectangle banner, and as is apparent, as the domain name of the website.
I am satisfied on the evidence that the third respondent has used the following signs:
No. Trade Marks/signs used 1. 13 Cab Silver Service Taxi 2. 3. 13cabsilverservicetaxi.com.au
I find that the third respondent’s signs feature the predominant elements “13CABS”, and “Silver Service” which act as the distinctive feature of each of those marks, and I conclude that the third respondent’s use is of a trade mark which is deceptively similar to the 13CABS Word Mark, and to the Silver Service Word Mark.
Further, I find that the third respondent’s use of these signs constitutes trade mark use. That they are being used as trade marks, as with the second respondent, is reinforced by the URL of the third respondent’s website. It is also evident from the website that the third respondent described his services via the website as “affordable and luxury taxi cab service(s)”.
I am satisfied that by these uses the third respondent has infringed the 13CABS Word Mark and the Silver Service Word Mark. I do not consider that by combining both “13 Cab” and “Silver Service” in the one sign, the third respondent thereby avoids a conclusion that the sign used on his website by him is not deceptively similar to each of the 13CABS Word Mark and the Silver Service Word Mark. It is appropriate I make declarations of infringement and restraining orders.
The applicants sent the third respondent a letter of demand on 28 May 2020, a further letter of demand on 21 August 2020, and served him with the Court documents on 12 January 2021 by email.
The third respondent then engaged with the applicants’ solicitors, and on 14 January 2021 Mr Knowles received an email from the third respondent’s email address that contained the authorisation key code for the third respondent’s website. The applicants were thereafter able to effect transfer of ownership of that website to the applicants’ domain provider account.
Thus, I infer on the evidence it is reasonable to conclude, and I do conclude, that the third respondent from at least the date of registration of the URL on 11 June 2019 until 14 January 2021 infringed the above Trade Marks, that he did so for nearly 10 months after he received the first letter of demand, and it was only upon suit that he engaged with the applicants.
Thereafter the third respondent has not engaged with the applicants’ solicitors. The evidence is that shortly after service of the initiating process on 21 January 2021, the applicants’ solicitors sent what they described as a Calderbank offer, or an offer of compromise, and they sent a further offer on 16 July 2021.
Tendered in evidence by the applicants as an example was the form of the second offer of compromise made to the third respondent, pursuant to which the applicants sought a simple declaration, restraining orders, and order for damages in the sum of $10,000, and proposed that that sum be paid in four monthly instalments. I am satisfied that the offer was available for a reasonable period, being from 16 July to 30 July 2021.
In this instance however, I am not satisfied that it is appropriate in respect of the third respondent to order costs on an indemnity basis because of his conduct. I consider that the question of conduct here is rather of his conduct continuing after notice, and is a matter that is addressed within my award of additional damages.
As to compensatory damages, they are to be assessed applying the calculations set out previously in these reasons and I so order. I am satisfied additional damages should be $6,000. I will order costs on the same party and party basis calculated as I have outlined above, in each case as a fixed amount.
Fourth Respondent
The fourth respondent is a sole trader conducting a business in the provision of taxi and similar car services in the Melbourne greater metropolitan area: see [4] above. The website the fourth respondent has registered is at the domain URL The date of registration of the URL is not in evidence, however the first known use of the website of which there is evidence is from 31 May 2016, and the last known use is as at the commencement of suit, 11 January 2021.
The fourth respondent has sought to participate in the proceedings but has done so without engaging solicitors, despite the Court’s express invitation and suggestion that he do so. Whilst he indicated he would cooperate it appears that it was not until 4 May 2021 that he provided the relevant authentication keys and transfer codes to the applicants to transfer the website.
The fourth respondent’s website has been marketed as “Melbourne Taxi Services”. On and within the website the following signs have been used:
No. Trade Marks/signs used 1. Vic Silver Service 2. Silver Service Taxi 3. Silver Service Melbourne 4. vicsilverservice.com.au
I am satisfied on the evidence before me that the fourth respondent has used as a sign “Silver Service” for his business name and brand. I am satisfied that the use of the phrase Silver Service is a distinctive feature within the sign, and that that is use of the applicants’ Silver Service Trade Mark. I am satisfied that use is an infringement, and that the use has continued, or the opportunity to use the applicants’ Trade Mark has continued, for four and a half years, noting here that the fourth respondent did not put on any evidence of any contrary contention. Accordingly, I am satisfied that it is appropriate to make declarations of infringements and orders, and to award compensatory damages under s 126(1) of the TM Act based on the calculations I have outlined above.
However, in respect of his behaviour, I consider that the fourth respondent’s conduct from attempting in some form to participate at the first and following case management hearings, and turning up for the first day of this summary hearing and making submissions is such that the award of additional damages is at the low end.
The applicants have submitted that the additional damages should be $2,000. I accept that submission. I consider that is an appropriate amount. I observe that the additional damages amount makes clear that the participation by way of communicating an attempt to hand over the website to the applicants is one that is reflected in the lower amount of damages I will award.
As to costs, I do not accept, notwithstanding the offers of compromise given on 21 January 2021, and 14 May 2021, that it is appropriate in the case of the fourth respondent to award indemnity costs, and thus, I will award an amount of costs by way of reference to party and party costs calculated as I have outlined above, in each case as a fixed amount.
Fifth Respondent
The fifth respondent is a sole trader, and conducts business in the Melbourne metropolitan area as or in relation to the provision of taxi services: see [4] above. He has registered the domain name at the URL The URL was registered with the GoDaddy domain on 21 October 2015. The first known use of the domain name in evidence was 10 January 2016, and the last known use was 11 January 2021, that is, the time of commencement of suit and service. Thus, the use is approximately over 5 years. I note also that the fifth respondent conducted a Facebook page which also reflected the particular uses of the signs used in relation to the website.
Additionally, as of approximately 24 May 2017, the fifth respondent included a logo in his uses which prominently included the Word Mark “Silver Service”.
The Trade Marks that have been used by the fifth respondent on his website are as follows:
No. Trade Marks/signs used 1. 2. Silver Service Taxi Melbourne 3. Silver Service Cabs 4.
The fifth respondent has described his services as “best taxi services in Melbourne” and “most trusted Silver Service cab: Melbourne”. I am satisfied that there has been a use on the one website of the sign, the distinctive feature of which is “Silver Service”, that this use has been as the business name and trade mark of the fifth respondent’s business, and that these uses are an infringement, as being substantially identical with the Silver Service Word Mark. It is appropriate to make declarations and restraining orders. I note also that the fifth respondent was a former driver for the applicants, and the first letter of demand was sent to his website on 7 December 2020. Further demands were sent in October 2020, and a Calderbank offer was made on 16 July 2021.
This respondent did not cooperate. On the evidence, however, the applicants say that the fifth respondent was “relatively compliant”.
I note that the evidence shows that the fifth respondent did make some attempts at communicating with the applicants, and whilst he claimed he was not using the website he did not transfer it.
I consider that the award of damages by way of the licence fee calculated as outlined above should be for the full 5 years. Additional damages are $2,000, and costs will be awarded on the party and party basis at the greater of the party and party amount calculated as I have outlined above or the amount that the applicant seeks by way of their costs, in each case as a fixed amount.
Sixth Respondent
The sixth respondent is a sole trader, and operates a taxi business in the greater Melbourne metropolitan area: see [4] above. He has operated two websites over time. The first was at the domain URL The registration date for this domain name is unknown, but the first known use of the domain name in evidence is 28 November 2016, and the last known use was in the period 23 June 2020 and 25 June 2020, which I note is in the period shortly after the first letter of demand was sent.
The sixth respondent then appears to have commenced using a website at the URL which use continued from at least 31 August 2020 up to at least 11 January 2021. The applicants’ evidence is that the website was not transferred but is not active as at the summary judgment application date.
In total over the two websites, the sixth respondent has had the opportunity to use either website over a period of three and a half years in the case of the first website, and six months in the case of the second website. The sixth respondent has used, in respect of the first website, the following signs:
No. Trade Marks/signs used 1. 2. 3. 13 Cabs Melbourne 4. 13 Cabs Airport Taxi 5. Silver Service Taxi 6. Maxi Taxi
In the case of the second website, the sixth respondent has used the following signs:
No. Trade Marks/signs used 1. 2. 3. 13cabs airport 4. 13cab airport bookings 5. Maxi Taxi 6. Silver Service
On these two websites the signs “13cabs booking” and “13airportcabs” are depicted and used in such a way also as to have together the numerals 13 and word “13CABS”. In addition, as secondary marks on each of the websites there are the uses of the Trade Marks “Silver Service” and “Maxi Taxi” to identify particular types of taxis available. I consider that the use of the 13CABS sign or signs including 13CABS, be that at Melbourne or at Airport, is both use as a business name and a trade mark, the use is prominent, and it is used as a distinctive feature within the sixth respondent’s signs.
I am satisfied that the sixth respondent has used these signs as trade marks and that they infringe the 13CABS Word Mark, and as secondary marks, the Silver Service Word Mark, and the Maxi Taxi Word Mark.
I consider that the sixth respondent’s behaviour, which included changing the style of the numeral font after notice, and moving from one website to appear to take up the second website shows that he was both on notice and that his behaviour is more egregious than other of the respondents. It is appropriate that I make declarations of infringement and restraining orders.
In terms of damages under s 126(1) of the TM Act, I will apply the licence fee analysis calculations I have previously set out. In relation to s 126(2) of the TM Act, I consider that this respondent’s behaviour has an element of egregiousness, and the Court wishes to express its opprobrium of the behaviour, particularly in moving from one site to another but continuing in an attempt, apparently, to fly close to the wind with the use of the applicants’ Trade Marks. Accordingly, I consider that in this case the additional damages I award should be $9,000.
Turning to costs, I consider that the additional work and thus costs that can be inferred the applicants expended in relation to the sixth respondent, and that Calderbank offers were made on both 21 January 2021, and 16 July 2021, whilst there may have been some concerns expressed more generally about whether to award indemnity costs in the present matter, in the case of the sixth respondent I consider there is a component of indemnity costs that should be awarded, and I will award costs applying the calculations that the applicants have made of scale costs before 21 January 2021, and indemnity costs thereafter, subject to the overall 10 percent discount that I have indicated should be applied, calculated as I have outlined above, in each case as a fixed amount.
Seventh Respondent
The seventh respondent is a sole trader, and operates one or more taxi businesses in the Sydney metropolitan area: see [4] above. Whilst the start date of the URL registration is not known, the domain URLs at which the seventh respondent has operated his business, or at least offered his taxi services, are which is registered through the AUda domain administrators, operating in the period 21 February 2020 up until at least 11 January 2021, secondly which domain was registered through Tucows domains, and operated in the period, at least on the evidence, from 25 September 2020 until at least 11 January 2021, and thirdly, although in a period which may have been before the second site, at the domain URL registered through the Crazy Domains domain administrator.
The Trade Marks that have been used by the seventh respondent are, as to the first website:
No. Trade Marks/signs used 1. 2. Sydney Silver Service Online 3. 4. Silver Cab Service 5. Silver Taxi Service Sydney as to the second website:
No. Trade Marks/signs used 1. 2. Sydney Silver Service Online 3. 4. Silver Cab Service 5. Silver Taxi Service Sydney and as to the third website:
No. Trade Marks/signs used 1. 2. 13cab Taxi Booking 3.
I am satisfied that on each of the above sites, and particularly in the first two sites, the sign “Silver Service” within the signs is used as the distinctive feature, and that there is an infringement. They have been used as both a brand name and trade marks. In respect of the third site, “13cab” is a distinctive feature within the sign and is used as a trade mark and brand name.
I am satisfied in each case that the signs that have been used are substantially identical with or deceptively similar to, the Silver Service Word Mark, the Silver Service Logo Mark, and in respect of the the 13CABS Word Mark.
In each case, it appears that the sites were taken down on or soon after the respondent was served; however, the respondent was on notice since the first letter of demand sent on 25 September 2020. I consider this behaviour, particularly by using three different domains, indicative of a knowing infringer, and it is appropriate to express the Court’s opprobrium of the seventh respondent’s conduct. For this respondent’s infringements it is appropriate that I make declarations of infringement and restraining orders.
Accordingly, in respect of the seventh respondent, who in total has been using the applicants’ Trade Marks for some 22 months, for the use of the Trade Marks over three websites I will award compensatory damages under s 126(1) of the TM Act according to the calculation I have previously indicated above. However, in relation to additional damages, I consider that the amount of additional damages to be awarded is the sum of $9,000, accepting that it is a relatively lighter amount than it may appear.
In relation to costs, however, I consider that the behaviour of the seventh respondent and the additional work undertaken by the applicants’ solicitors requiring reviews of three different websites, and having regard to the identification of the work involved in trying to deal with the seventh respondent, is such as to attract indemnity costs, with the 10 percent discount as I have indicated above, and to do so for the whole period the applicants seek, calculated as I have outlined above, in each case as a fixed amount.
Ninth Respondent
The ninth respondent is a sole trader, and conducts a taxi business in the greater Sydney metropolitan area and has also had the assistance, as did the sixth respondent, of a web developer, who goes by the name on his email address of ramnitkumar17. The ninth respondent has operated under three websites, two at least of which are substantially identical. The first website he has operated his business under is at the domain URL which was registered on the AUda administration with an unknown registration date, but the first known use was on 26 August 2020. Its last known use was in the period 1 October 2020 and 13 October 2020. The evidence shows that it was taken down on 13 October 2020 after a conversation with Mr Kumar.
However, the ninth respondent then appears to have operated a site at the domain URL also registered through AUda. Again, the date that the URL was registered is unknown, but the first known use was on or about 16 October 2020. It is unclear when the second website was taken down or, indeed if it has been taken down, but it certainly has not been transferred. The last known use in evidence is 17 November 2020. Then there appears to have been a third website at the domain URL which has been operational in a period that appears to overlap with 10 September 2020 and possibly until some time after initiation of proceedings.
The signs used on each of these sites are as follows. As to the first site, the following signs have been used:
No. Trade Marks/signs used 1. 2. 13 Cabs Official 3. 4. as to the second site at the URL the following signs have been used:
No. Trade Marks/signs used 1. 2. 13 Silver Service Taxis 3. 13 Cabs Airport Taxi 4. and as to the third website at the domain URL the signs that have been used are:
No. Trade Marks/signs used 1. 1300cabs 2. l3cabbs 3. Maxi Taxi
The first and second websites are substantially identical in content. I am satisfied in respect of the first and second websites that the signs there used have been used as a distinctive feature, and in the case of the first site, are uses of the 13CABS Word Mark and the 13CABS Logo Mark. I am satisfied further that in the case of both sites the ninth respondent has used as a trade mark and as his business name in the first site 13CABS, and in the second site both “13cabs” and “Silver Service”.
As secondary marks there are repeated uses of “13cabs”, and there is also use in the second site of “Silver Service”. I am satisfied that in the case of the first two sites the signs used are both uses of the 13CABS Word Mark and the 13CABS Logo Mark, because the signs used are substantially identical with or deceptively similar to each of the 13CABS Word Mark and the 13CABS Logo Mark.
As to the third site, the uses of the signs on the third site demonstrate that the ninth respondent is well-aware of the Trade Marks owned by the applicants, seeks to benefit from those Trade Marks, and to attempt to use marks that he considers are not deceptively similar to the 13CABS Word Mark. I consider he fails to avoid trade mark infringement.
In the circumstances, and applying the test of deceptive similarity, I consider that the use of the sign “l3cabbs” is deceptively similar to the 13CABS Word Mark, and is an infringement. As to “Maxi Taxi”, that is in the use in which it is made on that website, it is an infringement of the Maxi Taxi Trade Mark. It is appropriate in respect of this respondent that I make declarations of infringements and restraining orders.
The ninth respondent’s behaviour has taken place over a period of at least 10 months. In these circumstances, I consider that the damages under s 126(1) of the TM Act are over the two websites at least, and secondly for a period of the third website. I consider that the ninth respondent has had the benefit under the user principle of two of the Applicants Trade Marks, and I consider the full annual licence fee on the basis I have calculated above should be awarded. I note that will be slightly less than the applicants seek for damages pursuant to s 126(1) of the TM Act.
In respect of the additional damages pursuant to s 126(2) of the TM Act, whilst the period of time in which the ninth respondent’s activities have continued has been for less than a year, I consider the behaviour of the ninth respondent to be egregious, and deserving of an award of additional damages which reflects the Court’s disapproval. The applicants seek $10,000. I consider that amount is an appropriate amount of additional damages. Had the activity continued longer the amount of additional damages would have been increased.
As to costs, I consider that in the circumstances the ninth respondent’s conduct has involved additional work identifying and chasing down first one site, then a second site, and then a third site, and that it is appropriate, with the lump sum discount I have set out above at [105], to award indemnity costs and I will do so calculated as I have outlined above, in each case as a fixed amount.
Tenth Respondent
The tenth respondent is a sole trader, and conducts business as a taxi business in the Greater Metropolitan area of Sydney: see above at [4]. I have already said that the tenth respondent’s conduct has been such as to cause the applicants’ solicitors to expend the most time and effort, and the costs should reflect that. The tenth respondent has over time, had the opportunity to obtain the benefit of two websites, the first at the domain URL and secondly at the website with the URL
The first site, which I will call the .com.au site, has an unknown registration date, whilst the first known use was on 2 April 2020, and the registrant details contained inaccurate ABN numbers, being first for apparently unrelated businesses of My Curry, and secondly as an Italian restaurant known as the Yak Bar in inner-city Melbourne. Because of these inaccuracies the applicants’ solicitors applied to cancel the first website, and a cancellation was effected by 19 November 2020. The tenth respondent’s sites were registered through GoDaddy. The .com.au site was cancelled at the higher level by the AUda administration as that is to whom the complaint was made by the applicants’ solicitor. The tenth respondent however, then has used or operated the website (.com site), which appears to have been registered from 12 November 2020, and in use from 28 November 2020 and in use at least as at and until 7 June 2021.
The signs used on the first website, the .com.au site are the following:
No. Trade Marks/signs used 1. 2. silver 13 cabs Sydney
The second site, the .com site, used substantially the same signs, being:
No. Trade Marks/signs used 1. 2. silver13cabs Sydney
In addition, the evidence establishes there is a meta tag use of the sign “silverservice”, which is not apparent on the site but brings up the site when the term “silverservice” is searched.
The tenth respondent engaged with the applicants and with the Court, but his engagement was to the following effect: he said it was not his website, his identity was stolen, and he did not know what was happening. However, the investigations of the applicants’ solicitors revealed the following:
(a)he had a telephone number on the .com.au site which redirected to his personal telephone number;
(b)the telephone number on the .com site also redirected to his personal telephone number;
(c)at a later time he had an updated telephone number on the .com site which also redirected to his personal telephone number;
(d)he had engaged in communications with the applicants’ solicitors, including by email, using the .com site email address, which used the silver13cabs mark on the site; and
(e)he continued to deny any knowledge of or responsibility for either of the websites;
(f)and he also then redirected his telephone number when he moved to yet a third site known as the silvertaxisncabs website.
The tenth respondent had a conversation at least with Mr Knowles on 30 June 2021, of which Mr Knowles gives evidence, in which the tenth respondent appears to have tried to bargain with Mr Knowles, including giving him the following information:
(a)whether having driven taxis for the applicants would help his case;
and Mr Knowles told the tenth respondent:
(i)that the applicants did not believe the tenth respondent’s denials; and
(ii)further told him that the proceeding would not be withdrawn against the tenth respondent whilst the .com website remained active, and whilst the third website, which is silvertaxisncabs website, had a hidden or meta tag use of “silverservice”.
Mr Knowles gives evidence that after this conversation, and by 1 July 2021, all use of “silverservice” had been removed from the silvertaxisncabs website, and the .com website had been taken down.
I am satisfied, on the evidence that the tenth respondent is the operator of each of the following websites at the following domain URLs:
(a) and
(c)>
I am satisfied, in the circumstances, that the tenth respondent has by the signs I have set out above, used the 13CABS Word Mark, and in the meta tag use has used the Silver Service Word Mark. I say so as I am satisfied that the use is of a kind of which the Full Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 at [322], and approving of the primary Judge’s findings in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554 at [435] held, that the Silver Service use on the silvertaxisncabs website is a Trade Mark use of the Silver Service Word Mark. It is appropriate that I make declarations of infringement and restraining orders against this respondent.
Notwithstanding that the tenth respondent appeared at the first, second, and third case management hearings in this matter, I consider that the tenth respondent’s behaviour is such as to award damages on the following basis:
(a)first, pursuant to s 126(1) of the TM Act, compensation for the period of 14 months calculated as I have previously indicated above;
(b)secondly, on the basis of additional damages pursuant to s 126(2) of the TM Act I consider the behaviour has been egregious, and that the Court’s disapproval is expressed by awarding additional damages in the sum of, $12,000 in total; and
(c)third, as to costs, whilst there is no Calderbank offer made, I consider that the behaviour of the tenth respondent is such that indemnity costs should be awarded for the whole of the period, and in this case I consider that the indemnity costs should be at 100 percent of costs.
I so order.
I certify that the preceding one‑hundred and ninety (190) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Baird. Associate:
Dated: 10 February 2022
SCHEDULE OF PARTIES
SYG 65 of 2021 Respondents
Fourth Respondent:
"SILVER SERVICE CABS OPERATOR"
Fifth Respondent:
PARMINDER SINGH ABN 49 512 158 395
Sixth Respondent:
ABDUL QADIR ABN 36 966 367 468
Seventh Respondent:
TELVINDAR SINGH ATWAL ABN 15 822 912 669
Eighth Respondent:
YADVINDER SINGH ABN 84 488 178 622
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