Buchanan Group Pty Ltd v Sorgetti - [2002] FCA 1646

FEDERAL COURT OF AUSTRALIA
Buchanan Group Pty Ltd v Sorgetti [2002] FCA 1646
TRADE MARKS – infringement - interlocutory injunction – applicant’s mark “brandpower” used in connection with website brandpower.com.au and elsewhere – respondents’ use of website “brandpower.com” – whether triable issues – balance of convenience
TRADE PRACTICES – interlocutory injunction – “dotcom assumption” – whether persons seeking site of applicant’s business Brandpower might visit respondents’ site brandpower.com on assumption that applicant’s site would be name of business plus “.com”
WORDS AND PHRASES – “place of business”
Trade Marks Act 1995 (Cth) ss 17, 24(1), 120(1) 122(1),
Epitoma Pty Ltd v Australasian Meat Industry Employees Union (No. 2) (1984) 3 FCR 55 at 58-59 cited
Philips Electronics MV v Remington Products Australia Pty Ltd (1997) 39 IPR 283 at 289 to 290 cited
Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No. 3) (2002) FCA 1487 at [43] cited
Lego Australia Pty Ltd v Pauls Merchants Pty Ltd (1982) 42 ALR 344 at 352 referred to
Taco Co of Australia Inc v Taco Bell Pty Ltd (1992) 42 ALR 177 applied
BUCHANAN GROUP PTY LTD v LEONARD SORGETTI & ANOR
V 838 OF 2002
HEEREY J
19 DECEMBER 2002
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V 838 OF 2002

BETWEEN:

BUCHANAN GROUP PTY LTD
APPLICANT

AND:

LEONARD SORGETTI
FIRST RESPONDENT

PACIFIC MEDIA GROUP PTY LTD
SECOND RESPONDENT

JUDGE:

HEEREY J

DATE OF ORDER:

19 DECEMBER 2002

WHERE MADE:

MELBOURNE

Upon both the Applicant by its Counsel and Timothy Joseph Buchanan of Unit 41, 74 Gladesville Boulevard, Patterson Lakes, giving the usual undertaking as to damages,
THE COURT ORDERS THAT:
1.The First and Second Respondents, whether by themselves or by their directors, agents or servants, be until the hearing and determination of the proceeding or further order restrained from using the in any way in the course of trade without the licence of the Applicant:

(a)the mark “BRAND POWER” or any other word or words substantially identical or deceptively similar to the mark “BRAND POWER” whether alone or as part of any mark in relation to:
(i)printed matter including books, catalogues, magazines and advertising literature, stationery, paper and cardboard (“Promotional Goods”);
(ii)goods of the same description as the Promotional Goods;
(iii)services closely related to the Promotional Goods.

(b)the mark “BRAND POWER” or any other word or words substantially identical or deceptively similar to the mark “BRAND POWER” whether alone or as part of any mark in relation to:
(i)advertising and marketing services; information and publicity services, telephone advertising including publication of directories and catalogues; and business services falling within Class 35 (“Promotional Services”);
(ii)services of the same description as the Promotional Services;
(iii)goods closely related to the Promotional Services.

2.The First and Second Respondents, whether by themselves or their agents or servants, be until the hearing and determination of the proceeding or further order restrained from using the domain names ‘brandpower.com’ and…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2002] FCA 1646
Decision Date: 19 DECEMBER 2002

CaseChat Overview and Summary

Buchanan Group Pty Ltd sought an interlocutory injunction against Sorgetti and another respondent for the use of the mark "BRAND POWER" in relation to promotional goods, services, and domain names. The Federal Court of Australia was asked to determine whether the respondents should be restrained from using the mark and the specified domain names. The primary legal issue was whether the applicant had established a prima facie case that warranted an interlocutory injunction, particularly focusing on the likelihood of confusion and the potential for damage to the applicant’s business reputation and goodwill. The court considered the applicant’s established use of the mark “BRAND POWER” in Australia, and whether the respondents’ use of the same or similar mark in relation to similar goods and services could cause confusion among the public.

The court examined the evidence provided by the applicant, including their extensive use of the mark in various promotional materials and services, and the significant investment made in establishing the brand. The respondents argued that there was no likelihood of confusion due to the distinct nature of their services and the differences in the markets they served. However, the court found that the applicant had demonstrated a strong likelihood of confusion given the similar nature of the goods and services and the similarity of the marks. The court also noted the potential for damage to the applicant’s business if the injunction was not granted. Based on these findings, the court granted the injunction as sought by the applicant, restraining the respondents from using the mark "BRAND POWER" and the specified domain names. The court also set down a timetable for the proceeding to proceed to a full hearing and ordered the parties to attempt mediation before a deputy district registrar.

Orders

Orders of the court

1. The First and Second Respondents, whether by themselves or by their directors, agents or servants, be until the hearing and determination of the proceeding or further order restrained from using the in any way in the course of trade without the licence of the Applicant:

(a) the mark “BRAND POWER” or any other word or words substantially identical or deceptively similar to the mark “BRAND POWER” whether alone or as part of any mark in relation to:

(i) printed matter including books, catalogues, magazines and advertising literature, stationery, paper and cardboard (“Promotional Goods”);

(ii) goods of the same description as the Promotional Goods;

(iii) services closely related to the Promotional Goods.

(b) the mark “BRAND POWER” or any other word or words substantially identical or deceptively similar to the mark “BRAND POWER” whether alone or as part of any mark in relation to:

(i) advertising and marketing services; information and publicity services, telephone advertising including publication of directories and catalogues; and business services falling within Class 35 (“Promotional Services”);

(ii) services of the same description as the Promotional Services;

(iii) goods closely related to the Promotional Services.

2. The First and Second Respondents, whether by themselves or their agents or servants, be until the hearing and determination of the proceeding or further order restrained from using the domain names ‘brandpower.com’ and ‘brandpower.tv’.

3. The Applicant file and serve a statement of claim on or before 31 January 2003.

4. The Respondents file and serve a defence and cross-claim on or before 21 February 2003.

5. The Applicant file and serve a reply and defence to cross-claim (if any) on or before 14 March 2003.

6. The proceeding be referred to mediation before a deputy district registrar to be held before 28 February 2003.

7. The proceeding be adjourned to a directions hearing to a date to be fixed in March 2003.

8. Costs are costs in the cause.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

HEEREY J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: HEEREY J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 838 OF 2002

BETWEEN:	BUCHANAN GROUP PTY LTD APPLICANT
AND:	LEONARD SORGETTI FIRST RESPONDENT PACIFIC MEDIA GROUP PTY LTD SECOND RESPONDENT
JUDGE:	HEEREY J
DATE OF ORDER:	19 DECEMBER 2002
WHERE MADE:	MELBOURNE