Buildcorp Contracting NSW Pty Ltd v Build Corp Construction Pty Ltd

[2019] FCA 90

FEDERAL COURT OF AUSTRALIA

Buildcorp Contracting NSW Pty Ltd v Build Corp Construction Pty Ltd [2019] FCA 90

File number:	NSD 2026 of 2018
Judge:	ROBERTSON J
Date of judgment:	7 February 2019
Legislation:	Trade Marks Act 1995 (Cth) s 126
Date of hearing:	7 February 2019
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	No Catchwords
Number of paragraphs:	14
Counsel for the Applicant:	Mr D Green of Green & Associates, agent for HW Litigation
Counsel for the Respondents:	The Respondents did not appear

ORDERS

NSD 2026 of 2018

BETWEEN:

BUILDCORP CONTRACTING NSW PTY LTD ACN003 922 825

Applicant

AND:

BUILD CORP CONSTRUCTION PTY LTD ACN 615 640 705

First Respondent

YASSAR BAKIR
Second Respondent

JUDGE:	ROBERTSON J
DATE OF ORDER:	7 February 2019

BY CONSENT, THE COURT ORDERS THAT:

1.The first and second respondents:

(a)be restrained from infringing the Buildcorp Marks (as defined in paragraph 5 of the Statement of Claim, a copy of which is annexed to these orders), including that they:

(i)immediately and permanently cease and desist from all unauthorised use of the Buildcorp Marks, or any substantially identical or deceptively similar trade mark;

(ii)not, in future:

1reproduce, publish or otherwise use the Buildcorp Marks;

2apply to register or use any company or business name which incorporates the Buildcorp Marks, or any substantially identical or deceptively similar name, or any name which suggests a connection with, or endorsement by, the applicant;

3pass off any business or services as having any association with, or endorsement or authorisation by the applicant; and

4falsely represent in trade or commerce that any business or services provided by either of them have any connection, affiliation or association with the applicant; and

(iii)change the first respondent’s name so that it no longer infringes on the applicant’s intellectual property rights;

(b)within 7 days of this order:

(i)lodge necessary documents with the Australian Securities and Investments Commission to record a change or cancel the company name of the first respondent so that it no longer infringes the Buildcorp Marks;

(ii)remove the Yellow Pages advertisement (as referred to in paragraph 8b of the Statement of Claim);

(iii)destroy all inventory (including, but not limited to, clothing, vehicles, signage, business cards) that contains any reference or association with the Buildcorp Marks; and

(iv)in the alternative to 1(b)(iii) herein, otherwise take steps to alter the inventory so as to remove any reference to the Buildcorp Marks; and

(c)within 30 days of this order, file with this Honourable Court an affidavit or statutory declaration confirming that the orders contained in paragraph 1(a) and (b) herein have been complied with and serve a copy of the same on the applicant, by its solicitors; and

2.Within 7 days of compliance with order 1 herein, the parties are to execute and file a Notice of Discontinuance with there being no order as to costs.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

ROBERTSON J:

1. These proceedings were commenced by originating application dated 30 October 2018, accompanied by a statement of claim. The applicant sought remedies primarily under s 126 of the Trade Marks Act 1995 (Cth) in relation to the “Buildcorp Marks” and the claimed use of them by the respondents.

2. The Buildcorp Marks are defined in the statement of claim at [5] as:

   a.Australian trade mark registration 1165652:

   …

   iii.    an image of which is annexed hereto and marked “SOC1”;

   b.Australian trade mark registration 1236778:

   …

   iii.    an image of which is annexed hereto and marked “SOC2”;

   c.Australian trade mark registration 1236778:

   …

   iii.    being for the word “BUILDCORP”;

3. SOC1 is as follows:

4. SOC2 is as follows:

5. The first respondent is Build Corp Construction Pty Ltd.  The second respondent is Mr Yassar Bakir, the sole Director and Secretary of the first respondent.

6. The first respondent was served with the originating application and statement of claim shortly after 7 November 2018.  I refer in this respect to the affidavit of Ms Georgia Alderdice affirmed 29 November 2018.

7. On 5 December 2018, on an interlocutory application dated 3 December 2018, I made orders for substituted service on the second respondent.

8. There was no appearance by or on behalf of the respondents on 5 December 2018.

9. I am satisfied that since 5 December 2018 the second respondent, Mr Bakir, has been served with the originating application and statement of claim.  I refer to the affidavits of Ms Bellah Lattenstein affirmed 4 February 2019, Ms Maranda Kerswell affirmed 4 February 2019, and Mr Joseph Khoury sworn 1 February 2019.

10. I also note the notice of address for service dated 5 February 2019 signed by Mr Bakir as the Director and Secretary of the first respondent and as the second respondent.  This notice was tendered in Court this morning.

11. In an affidavit of Ms Louarde Thomas affirmed 6 February 2019 she deposes to a telephone conversation on 7 January 2019 in which Mr Bakir said that the solicitors for the applicant, Mr Martin Daniel and Ms Thomas, should deal with a Mr Allan Hass in relation to the proceedings and that he, Mr Bakir, would sign “whatever you need me to, if [Mr Hass] agrees to it.”

12. Annexed to Ms Thomas’ affidavit to which I have referred is an email from Mr Hass dated 6 February 2019 to which was attached a copy of consent orders signed by Mr Bakir both as sole Director and Secretary of the first respondent and as second respondent.

13. Tendered in Court this morning was a copy of those consent orders signed also by Mr Daniel as solicitor for the applicant.

14. In these circumstances, I make those orders.

I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson.

Associate:

Dated:       7 February 2019