Carshare Australia Pty Ltd v Singh
[2018] FCCA 1446
•22 March 2018 8 June 2018
FEDERAL CIRCUIT COURT OF AUSTRALIA
| CARSHARE AUSTRALIA PTY LTD v SINGH | [2018] FCCA 1446 |
| Catchwords: INTELLECTUAL PROPERTY – trade marks – Australian Consumer Law – infringement – similar services. |
| Legislation: Competition and Consumer Act 2010 (Cth) Schedule 2, ss.18, 29, 236 |
| Cases cited: Accor Australia & NZ Hospitality Pty Ltd v Liv Pty ltd [2017] FCAFC 56; (2017) 345 ALR 205 Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No.2) [2017] FCA 474 Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 Voxson Pty Ltd v Telstra Corporation Ltd (No.10) [2018] FCA 376 Wardley Australia Ltd v Western Australia (1992) 175 CLR 514 |
| Applicant: | CARSHARE AUSTRALIA PTY LTD |
| Respondent: | Manjit Singh |
| File Number: | SYG 475 of 2018 |
| Judgment of: | Judge Baird |
| Hearing dates: | 21-22 March 2018 |
| Delivered at: | Sydney |
| Orders pronounced: | 22 March 2018 |
| Delivered on: | 22 March 2018 8 June 2018 |
REPRESENTATION
| Counsel for the Applicant: | Ms A Spies |
| Solicitors for the Applicant: | Marque Lawyers |
| The Respondent Appeared in Person: |
THE COURT DECLARES THAT:
The Respondent has engaged in conduct that is likely to mislead or deceive in contravention of section 18 of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL)) and/or has made a false and misleading representation in contravention of sections 29(g) and (h) of the ACL by, and in the course of his conduct in using the phrase ‘GO GET CABS’ and the device (an example of which is depicted in Exhibit 2), in the course of advertising, promoting, offering to supply and supplying taxi services in the South Eastern suburbs of Melbourne and for journeys to and from Tullamarine Airport, and other Melbourne airports, that:
(a)the Respondent’s business is associated with, approved by, licensed by, or otherwise connected with, the Applicant;
(b)the Respondent’s taxi services are services associated with, approved by, licensed by, or otherwise connected with, the Applicant;
(c)the website < is a website associated with, approved by, licensed by, or otherwise connected with, the Applicant; and
(d)the Facebook page <facebook.com/gogetcabs/> is or is associated with, approved by, licensed by, or otherwise connected with, the Applicant
(together, the Representations).
THE COURT ORDERS THAT:
The Respondent permanently be restrained from using the signs “GoGetCabs” or “Go Get Cab”, or other similar phrase, in relation to the advertising, promotion, offer to supply or supply of taxi, passenger transport or similar services, including by:
(a)use of the name “Go Get Cabs” or a similar phrase, with or without other words or images, as a name or other badge of origin in relation to taxi, cab or airport passenger pickup and drop-off services;
(b)use of any of the domain name and website < of email addresses ending in “@gogetcabs.com.au”; and
(d)use of the phrase “Go Get Cabs”, or any similar phrase, on the Facebook page at <facebook.com/gogetcabs/>.
The Respondent be restrained from engaging in conduct which makes any of the Representations in trade and commerce in Australia.
Within 24 hours the Respondent cause to be lodged all necessary documentation to de-register and cancel the domain name <>
Within 24 hours the Respondent take all practicable steps to disable or remove the content from the website at url <>
Without derogating from paragraphs 1-4 of these orders, the Respondent cancel the domain name on or before 12 April 2018.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT Sydney |
SYG 475 of 2018
| CARSHARE AUSTRALIA PTY LTD |
Applicant
And
| Manjit Singh |
Respondent
REASONS FOR JUDGMENT
(Ex tempore, revised from transcript)
By way of clarification of these reasons, I commenced delivering reasons for judgment ex tempore at the conclusion of the hearing on 22 March 2018. At approximately 6:50pm, due to the lateness of the hour, I was unable to finish delivering reasons onto the record. Accordingly, having delivered my reasons on the trade mark causes of action, I then summarised the remainder of my factual findings and conclusions, and explained to the parties that I would hand down settled reasons at a later date. I made orders on 22 March 2018 as set out in the orders section of this judgment. I subsequently completed these reasons in Chambers in accordance with my summary delivered orally.
The matter was listed on 8 June 2018. I handed down my settled reasons on that day. I then heard the parties on costs and made separate costs orders.
This is an Application brought by the Applicant, Carshare Australia Pty Ltd, against the Respondent, Mr Manjit Singh, filed on 23 February 2018. The Applicant seeks a declaration that the Respondent has infringed the Applicant’s trade mark, has engaged in misleading and deceptive conduct, and has passed off his services as connected to that of the Applicant.
The alleged infringements arise from the use by the Respondent of the name Go Get Cabs, and a composite mark comprising the name Go Get Cabs, a stylised device of a taxi and what appears to me to be a road (depicted at [33] below). These appear on a website at the URL (Respondent’s website), on a Facebook page at facebook.com/gogetcabs/ and on blogs which appear to be related to, or associated with, the Respondent’s website and Facebook page, in relation to what the Respondent describes as “a cab service” – a taxi service – in the city of Melbourne and, more specifically, in the south-eastern and bayside suburbs of Melbourne, and for journeys to and from the airport. I understand the airport referred to, to be Tullamarine Airport, although it may be that the description of “Airport Pick up and Drop off … to and from airports” is not so limited.
The Application has been brought as a matter of urgency arising from a negative review on a product review website. On or about 19 December 2017, a representative of the Applicant became aware of the review posted on about 14 December 2017. Whilst by 20 December 2017, the Applicant was able to have the review removed and corrected after communication with the author of the review, and with the operator of the product review website, the Applicant has expressed concern about the use of the name Go Get Cabs and the consequences that might flow from that continued use and such matters as the product review.
Accordingly, letters of demand having been sent, and the demand having been repeated two further times without satisfactory response, on 22 February 2018 the Applicant commenced proceedings in this Court seeking substituted service on the email address identified on the Respondent’s website. The matter was listed in my docket and I listed the matter for a first return of the interlocutory application on 28 February 2018, at which time the Applicant was represented by counsel and the Respondent appeared on his own account. As I was sitting in Melbourne, the Applicant’s legal representatives appeared by video‑link from Sydney, and the Respondent appeared in court in Melbourne.
The Applicant’s counsel proposed that the matter be expedited to final hearing. After some short discussion, I set the matter down for an expedited final hearing on all issues on 21 March 2018, and I set a timetable for the filing and service of a response and affidavits and submissions. Notwithstanding that the Respondent appeared in person, and was informed of the directions made on that occasion, the Respondent did not file any formal response, as required by my orders, nor did he file any evidence by way of affidavit. The Applicant complied substantially with the evidentiary timetable, and filed and served on the Respondent some further evidence and, after receiving submissions from the Respondent, subsequently filed and served submissions.
Whilst the Respondent did not comply formally with the timetable, on 9 March 2018 he filed a document entitled “Outline of Submission” of some 26 paragraphs, and served it on the Applicant’s legal representatives. In paragraph 1 of that document the Respondent identified the submission as directed to the hearing of the interlocutory application on 22 February 2018, however I have taken the document as indicating that the Respondent wishes to make these submissions on final relief at this hearing on 21 March 2018.
In the Outline of Submission document the Respondent indicated that he is happy to act according to certain proposed consent orders, although submitting that he has not infringed the trade mark on which the Applicant relies, namely Australian trade mark number 1281484 for the mark GOGET in respect of certain services in class 39 of the Trade Marks Register (Applicant’s trade mark), and asserts that he is not using a sign substantially identical with, or deceptively similar to, the Applicant’s trade mark, that he offers a different service to the Applicant’s services for which the trade mark is registered, and further submits that he has not engaged in conduct in contravention of s.8 (by which I understand him to mean s.18) of the ACL or sub‑ss.29(g) and (h) of that law.
The consent orders that the Respondent recited as being happy to act according to repeat in substantial form the injunctive relief sought by the Applicant in [4] and [5] of the Application by way of final relief. I attach as a schedule to these reasons a copy of those paragraphs of the Application.
Notwithstanding that the Respondent agreed in writing to the permanent restraints in [4] and [5] of the Application, and specifically agreed not to use (a) the domain name and website gogetcabs.com.au, (b) the name “GoGet” or “GoGetCabs” as a trade mark, (c) the email addresses ending in @gogetcabs.com.au, or (d) to use the Facebook page for “GoGet Cabs” at facebook.com/gogetcabs/, significantly for the Applicant, the Respondent did not agree to costs, and did not address any question of damages, or the other declaratory relief sought by the Applicant. In response, the Applicant filed full written submissions and sought relief for the full breadth of the Application as if no offer to agree to injunctive relief had been made, and sought costs.
At the hearing before me yesterday and today, the Applicant was represented by Ms Spies of counsel and instructed by Mr Oddy of her instructing solicitors. The Respondent, Mr Singh, appeared in person by video‑link from Melbourne. Mr Singh was present throughout the hearing and made submissions from the Bar table. During the hearing, I indicated that if Mr Singh wished to make certain of his submissions which were matters of evidence, he should give evidence formally and make himself available for cross-examination. Mr Singh indicated that he was content with that course, and was duly sworn, gave evidence and was cross‑examined.
I have received the Respondent’s Outline of Submission as that, substantially submission. In large part, it merely states things that I am able to satisfy myself from the material filed and relied on by the Applicant, and, in particular, as set out in printouts of the Respondent’s website, the Respondent’s Facebook page and other searches that the Applicant has tendered in evidence.
In relation to an assertion in the Outline of Submission that there had been an arrangement with the Applicant to file consent orders, I was informed by Ms Spies, and I accept, that there was no such arrangement, and, whilst there was some communication, it was without prejudice. I have, accordingly, accepted that the parties did not reach agreement prior to the hearing, however, I consider it relevant that the Outline of Submission contains undertakings that Mr Singh has signed and communicated to the Applicant over 10 days ago, and that he has confirmed orally in Court that he will abide by.
In the light of the written submissions filed by the Applicant pressing all grounds in the Application, and given that the Applicant has elected damages and not an account of profits, and also pressed a cause of action under the ACL, at the commencement of the hearing I enquired whether the Applicant was pressing its claim for passing off. Ms Spies ultimately indicated to the Court that the Applicant would not press its passing-off claim, given its election for damages. I formally record the assistance I have now received from Ms Spies in properly seeking to narrow those issues before the Court.
The Applicant’s trade mark
As I have indicated, the Applicant is the owner of Australian registered trade mark number 1281484, for the word mark GOGET, registered in respect of services in class 39 of the Register of Trade Marks, namely:
Rental, hire and leasing of land vehicles, including but not limited to cars, buses, coaches and trucks; rental of commercial vehicles; rental of trailers; rental of vehicle roof racks; booking agency services for land vehicle rental, hire and leasing; arrangement of land vehicle rental, hire and leasing; delivery of vehicles; car parking; car parking (valet) services; provision of vehicle parking facilities; parking place rental; rental of garage parking places; vehicle storage; vehicle location services; recovery of vehicles; vehicle breakdown recovery services; towing of vehicles; car transport services; provision of information relating to road conditions; provision of information relating to road traffic conditions; providing information, including by electronic means and via a global computer network, about all of the aforesaid services.
The Applicant’s trade mark registration has effect from 19 January 2009. That is, however, later than when the Applicant commenced using the trade mark in the course of trade, in respect of certain services within the specification, principally concerned with what may be described as “rental, hire and leasing of land vehicles”. In its outline of submissions the Applicant also identified as relevant in particular the services “booking agency services for land vehicle rental, hire and leasing; … car transport services; … providing information including by electronic means and via a global computer network about all of the aforesaid services”.
The Applicant’s trade mark use and business
The Applicant commenced using the Applicant’s trade mark in about 2004 and has used the mark for what is described in evidence as a “subscription-based vehicle sharing service whereby customers can locate, book and use various types of vehicles”. It uses a slogan “Like owning a car, only better”. The Applicant’s chief financial officer, Mr Hamish Lister McMichael, in affidavits read in the proceeding, described the business of the Applicant and its services as follows:
“GoGet is a leading car share service in Australia which provides self-service access to on-the-ground car share facilities and car transport service across Australia.
GoGet has been offering car share services in Australia since 2003.”
Whilst Mr McMichael stated that the Applicant has been offering services since 2003, on the evidence, it is apparent that the use of the Applicant’s trade mark has been since 2004 in Melbourne, and since 2005 in Sydney. Mr McMichael describes the Applicant as having developed a “very strong reputation and goodwill in Australia”, as identified by some awards, including in 2004, an Australia Post Small Business Award, and in 2005, two awards (for innovative new business from the Council of the City of Sydney and the Sensis Yellow Pages Small Business Award - Winner small business of the year, metropolitan section), and, in 2008, a Telstra Business Award for MYOB Small Business of the Year. In 2012, the Applicant received a Meals‑On ‑Wheels New South Wales service award recognising its contribution to the charity, and a Green Lifestyle Awards, cars – winner, company category. The evidence supporting Mr McMichael’s assertions of “very strong” reputation and goodwill in Australia was limited to the provision of a handful of media articles and some limited promotional material since that date. There is no supporting evidence of any advertising or promotional spend, no revenue figures and no financial statements or accounts.
Mr McMichael described the service and operations of the Applicant as a subscription based service to its customers whereby, in exchange for a monthly or yearly membership fee, and additional fees depending on the amount of usage, customers can locate, book and use various types of vehicles which they drive themselves. At present, vehicles can either be booked by the Applicant’s customers via a mobile phone app, referred to as the “GoGet app”, the Applicant’s website at the URL or by telephone. Mr McMichael further described that the Applicant’s services under the GOGET name (that is the Applicant’s trade mark) enable customers to utilise car transport without the need to personally own a vehicle, and by using the Applicant’s services customers are able to transport themselves by operating a vehicle and then returning the vehicle to its original location after use.
Whilst Mr McMichael identified the current operations of the Applicant and provision of its services in New South Wales, Queensland, Victoria, Australian Capital Territory and South Australia, further evidence identified that, in relation to each of those zones, services were provided in the capital cities, namely, Sydney, Brisbane, Adelaide, Canberra and Melbourne, and not more widely.
The Applicant’s evidence of its business under the name GoGet is only directed to the date of each of the two affidavits made by Mr McMichael, namely, 19 February 2018 and 5 March 2018. As at the latter date, the “GoGet fleet” comprised 2,628 vehicles distributed across the capital cities I have identified, including 1,896 vehicles in Sydney, and 592 vehicles in Melbourne. In Melbourne, the Applicant’s vehicles are distributed throughout the Melbourne CBD and surrounding suburbs, including Melbourne Airport, however a map in evidence showing distribution of the “GoGet fleet” in Melbourne reveals that the fleet is concentrated in the inner suburbs of Melbourne, but does encompass a location at the Melbourne Tullamarine Airport and what appear to be pick-up and drop-off locations at Clayton and Clayton South ,and vehicles at Elwood and Elsternwick, each of which suburbs can broadly be identified as south-eastern suburbs of Melbourne.
As at the date of his affidavit, Mr McMichael stated that the Applicant provides its services to roughly 99,000 drivers registered across 58,000 active membership accounts. There is no information before me to identify any spread of those accounts geographically, nor what is meant by “active membership accounts”. I infer that the active memberships means that such accounts have been activated and used in some way at some time (but not when or how recently) before the date of the affidavit.
The Applicant uses the Applicant’s trade mark through online booking platforms, being its website and its app. Again, I am not provided with any evidence as to how long the website has been in operation, nor how long the app has been provided to members. The Applicant’s trade mark is applied to the outside of each of the vehicles in the fleet, and accordingly, I infer that it is applied to the outside of each of the 592 vehicles the Applicant operates in Melbourne. The Applicant’s evidence is that it advertises and promotes its services through direct mail, being email newsletters to its customers, and through its website, its app and in social media accounts including Facebook and Twitter. The Applicant’s Facebook page has 8,456 likes and 8,272 followers, whilst its Twitter page has 696 likes and 1,978 followers. Given the number of membership accounts stated to be “active”, the Applicant’s social media presence is not substantial. Whilst the Applicant’s evidence includes articles in such print media as the Australian Financial Review (one instance in each of 2016 and 2017), the Canberra Times, (one instance in December 2015) and the Huffington Post Australia (one instance in April 2016), the publication average is about two articles a year in each of 2015, 2016 and 2017.
By reference to the Applicant’s website, the Applicant’s system operates as follows: First, a member – a person wishing to be a member – has to “Choose a plan”. This requires applying online and picking up a “GoGet smartcard”. I infer that entry into membership terms and conditions is a necessary requirement, but, save to say that terms can include monthly or annual terms, there is no evidence of any membership terms and conditions. Next, a member books a vehicle, described as: “Choosing the right vehicle for you, and book it in for a few hours or a few days”. The booking can be made at least by website, online and through the “GoGet App”. The website does not identify a telephone number.The third step to be undertaken is described as “Tap on” - the member goes to the car they have booked, and unlocks the car with their smartcard. The keys are in the car. The member then “Drives away”, described as “Go somewhere fun, get to a meeting or move heavy things with your wheels. When you’re finished return the car to its home and tap off.”
More detail of the Applicant’s carshare system is described, at least, as at 2012, in an article in a media publication referred to as ‘My Business’ referring to fleet management. The origins of the Applicant are there described as “Beginning with three cars shared between neighbours in the Sydney suburb of Newtown and the conviction that technology meant that there could be a more efficient way to use vehicles.” The article describes the Applicant’s “GoGet” system similarly to that I have summarised above:
“Cars can be booked for as little as one hour over the internet by the mobile app. The cars are parked either on the street in designated spaces which [the Applicant calls] ‘pods’, or in private parking spots assigned to car share, for example, in a strata building or in an underground parking garage. Drivers gain access to these vehicles via a swipe card and then use the car as much as they need (an hour to buy groceries, for instance, or two hours to drive the kids to a violin lesson). Afterwards, the driver returns the vehicle to the same spot, locks it up, and walks away. [The Applicant’s] telematics software tracks vehicle use, ties all of this information into [the Applicant’s] web-based system and this usage can then be charged directly to the driver who pays per hour of use and the distance driven. Among other things, drivers never have to pay for fuel, worry about vehicle maintenance or any of the other attendant costs of owning a car like registration or insurance.”
Over time, I note, the Applicant has entered into “partnerships” with IKEA, storage facilities like Kennards, Commonwealth Bank, and a “partnership” arrangement with MasterCard. There are also sponsorship arrangements with a variety of companies and entities including, in Sydney, the University of New South Wales, in Queensland, the University of Queensland, and in Melbourne, Latrobe University. Amongst the promotional material in evidence in relation to IKEA, although undated, I note that the rates for cars at one time started from $8.95 an hour and $75 a day and apparently more recently $10.45 an hour and $85 a day for a standard economy runabout ute.
The IKEA promotion identified the advantages of the Applicant’s GoGet system as not being a need to worry about parking, cleaning, mechanics, car registration, insurance, or paying for petrol, and the benefits including saving money and helping the environment, with the statement that: “For every goget car, 9 cars are taken off our streets”. A member can choose from wagons, vans, utes and at least two luxury brands of cars, Alfas and Audis, hatchbacks, hybrids and people movers. I do not understand that description to be exhaustive.
At least since sometime in 2016, a news article tendered by the Applicant stated that the Applicant had a 12 month trial at Melbourne Airport as a location pickup and return pod. The evidence shows that Melbourne Airport terminal 4 now has at least space for 10 GoGet cars, and that the trial was newsworthy in 2016 because the Applicant had not previously been allowed to park at airports, and travellers to Melbourne had needed to take a shuttle bus to a private site outside the airport to pick up one of its cars. In the news article, a spokesman for the airport stated that “Car sharing has developed into a real market for itself, especially in the inner city, so we want to see if that translates into being a viable option out here.”
In the Australian Financial Review article in December 2017 the Applicant described demand for its service in the following terms:
“Demand for car share vehicles was strong from office workers who travel to work on public transport but wanted to use a car occasionally to run errands or travel home in bad weather as well as from companies who use GoGet instead of corporate cars to get around for business purposes.”
The Applicant’s counsel submitted to similar effect that the market for the Applicant’s services included people who wanted to use a car occasionally, or may have or didn’t have a car, but still wanted to use the benefit of a car. I accept this submission.
In terms of the weight I give to the media articles and the websites of both parties, the difficulty I have is that the claims are unsubstantiated. Accordingly I accept them as asserting, but not necessarily evidencing the truth of, the matters that the respective party wishes to promote in the respective media articles and websites. That is, whilst I have admitted the material, (and I note there were no objections) I note that judges of the Federal Court of Australia have rejected website and media articles as evidence of the fact of the matters stated. See, for example Voxson Pty Ltd v Telstra Corporation Ltd (No.10) [2018] FCA 376; Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No.2) [2017] FCA 474.
That said, the question is what weight I give the assertions in media articles and on websites in the absence of any substantiation by way of business records from either the Applicant or the Respondent, any financial information, documentary evidence of memberships, evidence of expenditure on advertising and promotion, or receipt of revenue. There is no such evidence.
Except for some limited historical description of the origination of the Applicant’s services, the evidence of the Applicant’s business and services supplied under or by reference to the Applicant’s trade mark that I have summarised above, is a snapshot of the business as at February and March 2018. Whilst I am able to, and do, infer that, in relation to Melbourne, there are at the present date 592 vehicles, and that the number of vehicles would have been in the same order in late 2017, the only evidence before me of the number and geographical spread of those vehicles is at the current date.
The Respondent’s conduct
Turning now to consider the Respondent and the Respondent’s conduct, the evidence shows that the Respondent has used the phrase ‘Go Get Cabs’ and a composite device in the following form:
– which I will refer to as the Respondent’s logo – in relation to the Respondent’s website (which I have already identified as at URL since at least since July 2017, and on the Respondent’s Facebook page.
The Respondent has conceded that he is the registrant of the Respondent’s website. An extract of a Whois search put in evidence by the Applicant identified the domain name “gogetcabs.com.au” as last modified on 17 January 2017, which I take to be the start date, at least, of the domain name reservation, whether or not the website was up and running at that stage. The Whois search identifies the Respondent as the registrant of the Respondent’s website, and the type of business conducted as a sole trader. The Respondent has a registered Australian Business Number, but the only evidence of any registered business name is of himself as a sole trader, that is, in his own name.
Since on or about 31 January 2017, the Respondent’s logo and the name Go Get Cabs have been depicted on the Respondent’s Facebook page, together with a photograph of a taxi anonymised with the roof light “Taxi Silver”, and other anonymised vehicle images with signage simply saying “Taxi” and “Taxi Pre-Paid Fares”. I find that from, at least, 31 January 2017 the Respondent’s Facebook page has contained images of the Respondent’s logo and the phrase “Go Get Cabs” used so as to name the business promoted, being the conduct of a taxi service.
I note that as at 21 March 2018, the Respondent’s Facebook page’s community information discloses that 18 people liked the page and 19 people followed it. That is, the Respondent’s Facebook page has a minimal social media presence. The Respondent’s Facebook page also identifies the Respondent’s website. Turning to the website, at least since 22 February 2018, and possibly, at least since December 2017, the Respondent’s website has used the phrase “Go Get Cabs” as the name of the service promoted on the website, and the Respondent’s logo. In addition, two mobile telephone numbers and the email address [email protected] are listed on the Respondent’s website.
By reference to the Respondent’s website I note, first of all, that the services described on the website are stated to be:
“Go Get Cabs for your events, airport pickups, drop-offs, or day to day pickup and drop off to work or shopping”
and promoted as:
“Choosing the car of your own choice, tell your pickup destination, and our driver will be there in a manner of minutes.”
The representation is made that the cab service drives to all south-eastern suburbs of Melbourne. I note that the geographic reach of the services is at least from Springvale in the north-east to Eumemmerring in the south-west and, certainly, covers specifically described suburbs including:
“Frankston, Cranbourne, Lynbrook, Seaford, Chelsea, Edithvale, Aspendale Garden, Dandenong, Dandenong South, Keysborough, Endeavourhills, Noble park, Springvale, Clayton, Mordilloc, Mentone, Dingly Village, Black Rock, Beaumaris, Cheltenham, Sandringham, Hampton, Brighton, Elwood, Elsternwick, Rowville, Wantirna, Scorsby, Ferntree Gully, Vermont, Mulgrave, Ringwood, Croydon, Warrandyte, Blackburn, Box Hill, Burwood, Nunawading, Wheelerhills, Glenwavelry, Mt Waverely, Chadston, Oakleigh, Ormond, Bentleigh, Moorabbin, Moorabbin East”
(misspellings as appear on the paper copy of the webpage).
Payment modes accepted for the service are stated to be cash, MasterCard, Visa, and American Express cards, Motorpass, Cabcharge and M40 cards. The contact details on the website are the same two mobile telephone numbers and email address as appear on the Respondent’s Facebook page.
At hearing, the Respondent gave evidence under oath that he was a sole taxi driver, and that the business he ran consisted of only himself, but that he communicated with a group of other taxi drivers. His evidence was that if he received a communication by email, and I infer also by phone, that he was not able to fulfil, he would pass the booking request on to one of his contacts through a WhatsApp chat group. There was no evidence that he made any use of the phrase “Go Get Cabs” in doing so. The evidence was that the taxis who took the booking were separate businesses, such as Yellow cabs. His evidence was that the WhatsApp chat group existed before he set up the Respondent’s website.
On the last page of the printout of the Respondent’s website in evidence the claim is made that “Our fleet comprises of more than 300 cars and meticulously maintained - mechanically and visually.” It is described as comprising “Holden Caprice, Ford G6, Toyota Camry, Toyota kluger, Ford Territory etc.” The Respondent’s website also states that it is “a superior car fleet and a dedicated crew of drivers is what enables Go Get Cabs to render a superior service to its clients”, that the drivers are experienced and are highly familiar with the areas that they operate in, always professional and well dressed, well versed with driving and safety rules, extremely courteous, polite and friendly. Other pages on the Respondent’s website appear to cover website terms of use, and, whilst there is a disclaimer statement, there is no reference that I could find of any disclaimer of association with the Applicant.
The website characterises the cab services as comprising three categories or groups:
“Airport pickup and Drop Off: Our airport pickup and drop off service allows our customers to plan their pickup and drop-off from airports, leaving them least bothered.
Routine Cab Service: Take our routine cabs to work, shopping or back home. Our routine cabs are available 24/7 and be booked with a mere phone call or online.
Luxury Cab Service: For special family or business events our luxury cabs are always on the go whether you want it for your guests or yourself.”
The tagline depicted underneath the above description is: “Go and get your cab to enjoy a comfy and fun ride, now!”
It is apparent, and I find, that the Respondent’s website promotes a taxi or cab service providing drivers and vehicles for services in the south‑eastern area of Melbourne and also being airport pickup and drop‑off. The claims made of the size and reach of the services appear to greatly exceed the reality of the Respondent’s capacity as a sole trader to provide taxi services under the phrase “Go Get Cabs”. So far as the evidence before me reveals, the Applicant made no attempt to investigate the claims on the website, nor their veracity.
The Respondent’s oral evidence was that in order to provide his taxi service, he was required to be, and was, a licensed taxi driver and had a taxi licence currently from the relevant Victorian authority which could be purchased for $52. It was unclear whether he was referring to a taxi licence or a taxi plate which entitles a properly registered and licensed driver to operate a taxi. I understood Mr Singh to say that he had to comply with relevant taxi regulations, although he did not express it in those precise terms.
In any event, I find that from the description of the cabs on the blogs, that the Respondent’s website is promoting the services of licensed taxis or cabs. The blog pages identify Melbourne locality taxi operators, identified by locality such as Frankston Taxis, Mornington Taxi, Cranbourne Taxi Services, and Berwick Taxis, as well as Melbourne Cabs. Each of the images of the taxis on the blog pages, as with the Respondent’s website, are anonymised taxi vehicles, which judging by the decals, as far as I can ascertain, contain the word “taxi”, if anything at all.
There is no evidence before me that any logo, decal or use of the name “Go Get Cabs” appears on any taxi vehicle. I find that the extent of the Respondent’s activities using the name “Go Get Cabs” and of the Respondent’s logo are on pages of a website promoting a Melbourne taxi service, in a Facebook post, on a blog and in the domain name.
The adverse product review
I should indicate the circumstances that brought the Respondent to the attention of the Applicant. I have previously briefly referred to the adverse product review. The Applicant’s evidence is that on or about 14 December 2017, a review headed “shocking service” appeared on the website at URL The reviewer is there identified as “Wendy” from Melbourne, and the review reads as follows:
I booked a luxury vehicle and maxi cab for my daughter to and guests to be picked up after her wedding a few week prior to the wedding. Not long after the booking they confirmed it so I thought it was all fine. I received a text message on the day of the wedding (during the wedding) stating they won’t have any cars in the area and can’t fill the booking. I only read this message as my daughter and her new husband were about to leave the reception. I called and couldn’t get through. Terribly disappointed at the shocking service. I would not recommend this service.
There is a small thumbnail picture identifying Wendy from Melbourne which is a picture, it looks like, of a mythical beast, possibly a hippopotamus, sniffing a rose and the statement “Private Message”.
The marketing director of the Applicant, in circumstances which are not clear, became aware of the review and informed Mr McMichael on about 19 December 2017.
The Applicant’s “Member Experience Manager,” Mr Michael, communicated with Wendy on 15 December 2017, saying that he was “… really sorry to hear about the experience…”, was “not proud of [the experience]” and “would love the opportunity to look into this further to see what went wrong … ” and requested that Wendy get in touch with the Applicant at [email protected]. Wendy responded on 18 December 2017 to the effect:
“Hi Neil, My name is Wendy and you asked me to contact in response to my review. I was very disappointed with your service or should I say lack of, seems no one showed up after I booked online and received a confirmation that the booking was received. It was my daughter’s wedding and I had booked a luxury car for her and her husband and a maxi for some guests. You can imagine my embarrassment when neither of the cars came. Not only did it spoil what was an amazing day but we were also left stranded and had to wait for some time to get home. Awaiting your response, Wendy. Sent from my iPhone.”
The Applicant’s manager, Mr Michael, responded, thanking Wendy for getting in touch and saying:
“…Sorry to hear what happened at your daughter’s wedding.
After reading your email, I wanted to ask if you've perhaps got us mixed up with another company as I couldn’t find an account for you in the system. We also don't offer a service where we bring the cars to you - our service is designed to be self-service/pickup and you are the driver of the vehicle, like car ownership.
Did you book a taxi for this event, there is a taxi company called GoCatch, which is different to GoGet.
If you can let me know if I've read your email wrong, or if you do have an account with us I can look into this further. Thanks.”
Mr Michael’s email signature block describes him as “Member Experience Manager, goget carshare”. The signature block contains a 1300 number, the Applicant’s website URL, and the slogan “Like owning a car, only better!” In a reply email, the Applicant was provided with a copy of the webpage used for the booking (which webpage is not in evidence). Mr Michael responded that same day, 19 December 2017, and identified that:
“It looks like you need to reach out to a different company as we are GoGet Carshare. The company you need to get in touch with is which is separate to us. I’m sorry I wasn’t able to help you out and I was wondering if it was possible for you to take down your review from our product review page.”
It is not clear to me from this correspondence whether the product review page was actually the Applicant’s product review page or was a third party’s product review page. In any event, it appears to be that there is some independent process whereby some request to disable the review can be made and the review removed. There is evidence that the Product Review brand management with the title “GoGet” and a plus sign was able to remove the content. The review was disabled on 20 December 2017 at 8.05 pm.
Communications between the Applicant and Respondent
The adverse product review caused the Applicant to contact its lawyers and, the Applicant’s solicitors issued a letter of demand on 21 December 2017. The Applicant got no response to that letter of demand and issued a further letter of demand on 12 January 2018. No response was received in relation to that letter. The Applicant’s solicitors sent an email on Monday 15 January 2018. That email resulted in an email communication from the Respondent from the email address, [email protected] with the subject line “Re someone filled in GoGet Cabs contact form” which stated:
“Hi Definitely Will check with you tomorrow Will call you.”
The Applicant sent a further letter by email to [email protected] on 18 January 2018. In response the Respondent emailed (without alteration):
“Hi john, actually am still in India so will be back on monday. First, I will discuss with my solicitor on 22 jan about this whole matter. Then will do whatever will appropriate for all. So hope we still have sometime Regard Manjit Singh.”
The Applicant’s evidence is that there was no further communication from the Respondent. The Applicant, by its letter dated 18 January 2018, noted that the Respondent was currently overseas, and due to return the next week, and gave the Respondent a further seven days to sign enclosed undertakings which related to ceasing use of the Go Get Cabs name or the Applicant’s trade mark in relation to any business that the Respondent operated, deleting the Facebook page and lodging all the necessary documentation to deregister the Go Get Cabs website and provide proof of lodgement within seven days of lodgement and to require notification to the Applicant within seven days of the deregistration of the Go Get Cabs website.
The undertakings sought have not been given (although the Respondent now proffers undertakings as set out in the Application). It appears that there was then silence from both parties until the Applicant sought substituted service and initiated this proceeding on 22 January 2018.
The steps that the Applicant has taken in identifying the Respondent and the Respondent’s business following upon becoming aware of the product review, are the following:
(a)undertaking a Google search of the name “Go Get Cabs”, which revealed the address and URL and the telephone numbers to which I have already referred;
(b)a review of the website;
(c)a search of the URL on Whois, which identified the Respondent and his ABN;
(d)a search of the ABN Lookup, which identified the Respondent as an individual, Mr Singh;
(e)a property title search of Mr Singh, which identified a mortgaged property at Cranbourne East, which corresponded to an address ascertained from the documents I’ve just referred to; and
(f)locating the Facebook and blog pages.
The above was the extent of the Applicant’s inquiries as to the Respondent’s business and the claims made on the Respondent’s website about the extent of the Respondent’s services. I infer from the lack of evidence that there was no attempt to investigate or use any of the services identified on the website, and no telephone call made to find out whether and how any of the telephone numbers identified on the website were answered.
Relevant law in relation to trade mark use
I turn first to the trade mark claims. Section 17 of the Trade Marks Act 1995 (Cth) provides that:
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Sub-section 7(5) of the Act relevantly provides that:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
Sub‑section 120(1) of the Act provides that:
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 goods or services in respect of which the trade mark is registered.
Sub‑section 120(2) then states, relevantly, that:
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)…
(b)…
(c)services of the same description as that of services (registered services) in respect of which the trade mark is registered; or …
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
Subsection 120(3) is then concerned with infringement of a trade mark that is well known in Australia, as follows:
A person infringes a registered trade mark if:
(a)the trade mark is well known in Australia; and
(b)the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
…
(ii)services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and
(c)because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and
(d)for that reason, the interests of the registered owner are likely to be adversely affected.
Thus, the questions before the Court in an action for infringement of a registered trade mark are whether the alleged infringer has used a sign in the course of trade as a trade mark, within the meaning of s.17, whether that sign so used is substantially identical with or deceptively similar to the registered trade mark, and whether the use is in relation to the same services within sub‑s.120(1), or services of the same description within sub‑s.120(2), or, pursuant to sub‑s.120(3), whether the use is in relation to unrelated services, not being of the same description, and not closely related to registered goods, and in that case, also satisfying the other elements of s.120(3).
The Applicant asserts trade mark infringement within the meaning of sub‑ss.120(1) and 120(2) of the Act and, in the alternative, pursuant to sub-s.120(3) of the Act. The Applicant asserts that the sign “Go Get Cabs” is substantially identical to the Applicant’s registered trade mark, and also that it is deceptively similar to the registered trade mark. The Applicant has sought to invoke each of the statutory tests of infringement of trade mark, notwithstanding that each sub-section of s.120 of the Act addresses different uses: a use in relation to the same services, is not a use in relation to unrelated services, whilst a sign that is substantially identical satisfies different criteria than a sign that is deceptively similar to another sign.
Consideration of trade mark infringement claims
First, I address whether or not any of the impugned uses in the present case may be characterised, in context, as use as a trade mark. I note the approval of the plurality in E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [42] (Heydon J concurring at [87]), of the statement of the Full Court of the Federal Court in Coca-Cola Co v All‑Fect Distributors Ltd (1999) 96 FCR 107 at 115 [19]:
Use ‘as a trade mark’ is use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.
The question to be asked is whether the alleged infringer has used the sign so as to indicate the origin of the services they offer to supply, and supply.
I turn now to consider whether the Respondent’s use of the Go Get Cabs name and the Respondent’s logo on the Respondent’s website, and similar uses on the blog pages and on the Facebook page are use of a sign as a trade mark.
I am satisfied that the Respondent has used a sign, being the name and phrase “Go Get Cabs”, in the course of trade in:
(a)the domain name gogetcabs.com.au;
(b)the Respondent’s website;
(c)the email addresses ending in @gogetcabs.com.au, which includes [email protected]; and
(d)the Facebook page and blog pages,
and that each of those uses is as a badge of origin as identified in Coca‑Cola v All‑Fect thus a trade mark within the meaning in s.17 of the Act.
On the evidence that I have summarised above, I also find that the Respondent has used the Respondent’s logo on the Respondent’s website and Facebook page as a trade mark. I further find that that his use of both the name “Go Get Cabs” and the Respondent’s logo on is use in the course of trade in relation to the offer to supply taxi or cab services, at least within the Melbourne area, focussing on the south‑eastern suburbs.
The next matter to address is whether the trade marks are substantially identical, or deceptively similar. The principles are well established. In Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414-5, Windeyer J stated:
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 …
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. The issue is not abstract similarity, but deceptive similarity. … “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.”
The test of substantial identity thus involves a side by side comparison, similarities and differences noted, and the importance of these assessed having regard to the essential features of the mark and the total resemblance of similarity and dissimilarity that emerges from the comparison. Whilst Ms Spies has submitted that the Go Get Cabs sign, the writing, is substantially identical to the Applicant’s trade mark, on a side-by-side comparison, and looking at the overall impression I am not satisfied that the sign is substantially identical to the Applicant’s trade mark. I do not consider that the word component “cabs” can be ignored or discounted.
I am satisfied, however, that the sign (the phrase Go Get Cabs) is deceptively similar to the registered mark. The test in relation to deceptively similar, pursuant to s.10 of the Act, is that a trade mark is taken to be deceptively similar to another mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. This allows for imperfect recollection that a person may have of a registered mark as explained by Windeyer J in Shell Company.
The principles have been recently summarised by Katzmann J in Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823 at [169]-[180], and I make reference to those principles. I leave to one side the question of whether the services are the same or of the same description, or the sub‑s.120(3) issue. The Respondent’s phrase is to be considered as a whole. Whilst it has an additional feature to be the Applicant’s trade mark, being the word “Cabs”, that word is a substantially descriptive word, and in the context of the Respondent’s services, describes the services of the Respondent. The Respondent’s mark incorporates the whole of the Applicant’s trade mark, and the additional word “Cabs” is not so distinctive as to change the overall impression of the Respondent’s mark on imperfect recollection (although I consider the word to play a greater role when the marks are considered side by side). I conclude, by reliance on the principles set out in Moroccanoil, and authorities referred to by her Honour, that the word, mark and phrase “Go Get Cabs” is deceptively similar to the registered Applicant’s trade mark “GoGet.”
In relation to the Respondent’s logo, the phrase “Go Get Cabs” is contained within the logo. The other part of the logo, at least according to my impression, is of a profile of a taxi, with a taxi sign at the top, and possibly road-marks or some markings on a road around the words. I find that the total impression taken away and retained by a consumer would be principally, or essentially, the features of the words “Go Get”, and the image that conveys the meaning of the descriptor word “Cabs”.
I do not consider that the device element is common to the trade, but I do find that it does not have such a distinctiveness as to give to the overall mark a greater distinctiveness over and above what is conveyed by the words. Accordingly, I find, although minds may differ, that the Respondent’s logo is deceptively similar to the Applicant’s registered trade mark.
Infringement under sub-s.120(1) of the Act
However, when determining deceptive similarity it is also relevant to consider the mark in relation to the particular services or goods in relation to which the mark is proposed to be used, or is used. I have had regard to the specification of services for which the Applicant’s trade mark is registered. The specification of services does not include, on its face, taxi or cab services or passenger transport services in relation to commercial taxi services. I find that the ordinary meanings of the words and phrases in the specification of services for the registered trade mark do not admit of an interpretation of passenger transportation for a fee. They do not admit of cars being driven as a service, or the driving of cars by drivers engaged for commercial reward.
The Applicant’s counsel drew my attention to the phrase “car transport” in the phrase “car transport services” in the specification. I find that the ordinary meaning of that phrase means the transportation of cars rather than of conveying passengers in cars. Passenger transport services, or taxi services, can fall within class 39 of the Register, but do not fall within the specification under present consideration.
Accordingly, I find that the Respondent has not used the phrase Go Get Cabs, or the Respondent’s logo in relation to services of the specification for which the Applicant’s trade mark is registered. I conclude that there is no infringement within s.120(1) of the Act.
Infringement under sub-s.120(2) of the Act
In relation to s.120(2) of the Act, the question is whether the trade mark is used in relation to services of the same description. I have regard to cases identified by the Applicant’s counsel. In the Full Court decision of Accor Australia & NZ Hospitality Pty Ltd v Liv Pty ltd [2017] FCAFC 56; (2017) 345 ALR 205, Greenwood, Besanko and Katzmann JJ set out principles and factors to be considered in relation to the meaning of “same description” in a trade mark context at [339] as follows:
As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:
The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?
(1) To whom are the services offered?
(2) How are they provided?
(3) How are they used?
(4) What is their purpose?
(5) Are they bundled together with other services?
(6) Are they differentiated by the functional level at which they are provided: wholesale or retail?
(7) Where do they originate?
(8) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(9) How closely contestable are the services in substance: are they in the same market or trade?
(10) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]-[73].
The Applicant’s counsel submitted that the Respondent’s activities fell within the same description as the services of the registered trade mark. By reference to the factors summarised in Accor, she pointed to the inherent character of the respective services, and submitted that car share and hire, and taxis were both vehicular transport, and for people who do not have or do not want to use their own car, and that it is a convenient form of travel and a means to get to and from, in particular the airport, and other locations.
She submitted that the services are both offered to persons who do not want to use their own vehicle, or who may not personally own a vehicle. In relation to how they are provided, she submitted that both parties’ services are provided to members of the public, noting that in relation to the Applicant they are provided to members via a subscription.
As to the particular market, Ms Spies submitted that the markets are the same, and said that there is a large overlap of convenience of use. In relation to the method of marketing and communication, they both use websites and Facebook, and pointed to the factor of the product review.
Whilst at a very high level of generality, it may be said that both the Respondent’s services and the Applicant’s services are concerned with vehicles, principally cars, and with persons wanting to get from ‘a’ to ‘b’, or take other journeys in vehicles not their own, I do not consider that that level of generality translates into satisfaction of the features identified in Accor so as to lead to a conclusion that the services offered are of the same description. By that I mean that the inherent character of the Applicant’s trade mark’s specified services of rental, hire and leasing of vehicles differs significantly from a taxi or cab service.
The services of rental, hire and lease of land vehicles within the specification of services of the registered trade mark is of the provision of vehicles for self-drive. The cars themselves are being hired out to a person or persons to drive. The rental, hire and leasing of land vehicles, the booking agency services for land vehicle rental, hire and leasing, and the other services of the specification to which my attention was directed, each requires self-drive or that the person receiving the services obtain their own driver, and have the necessary driver’s licence and that the acquirer undertake the task of driving the vehicle where and when they choose.
The supplier of the rental car service does not need to have any driver’s licence, or taxi licence, and does not provide any personal service (driving) to the consumer or acquire of the car rental service. Those services are of a very different nature to taxi and cab services which require, first of all, that the supplier have a driver’s licence and a taxi licence, and that the vehicle have a registered taxi plate, and, further, are a combined car-and-driver personal service conveying the passenger to destination(s) that the passenger directs the driver to take them (or the objects the consumer of the service wants delivered). There is no requirement that the acquirer of the service (the recipient consumer) themselves have any driver’s licence, or be responsible for the vehicle whilst they are being driven, or for navigating the journey to be undertaken.
In identifying the factors for comparison, the Applicant’s counsel, on occasions, slid between referring to the specification of services for the registered mark, and the actual business of the Applicant. I note that the actual business of the Applicant conducted under the trade mark is more limited than the full breadth of, and differs from some of, the services encompassed within the specification of the Applicant’s trade mark, although from the evidence I have set out in some detail earlier in relation to the Applicant’s car share service, I accept that the Applicant’s business can broadly be described at least as the rental and hire of land vehicles, and as providing a booking service for such rental and hire.
I have focused on the services as set out in the trade mark specification, rather than the Applicant’s business model. As I have said, the services of the specification have distinct differences on their ordinary meaning from the services of cab services or taxi services (I am using the expressions interchangeably) of a car-with‑driver or the services of making available a car-with-driver at a location and for a journey specified by the purchaser upon booking or flag-fall. I find that the Respondent’s cab taxi services and the services within the specification of services of the Applicant’s trade mark do not have the relevant similarity of features within the considerations of Accor at [339]; the Respondent’s cab and taxi service is not of the same description as the services of the Applicant’s trade mark.
That both services may be offered to consumers does not assist the Applicant because of the other distinguishing factors. The consumers of the respective services undertake different activities and need meet different pre-qualifications: simply put, one must hold a driver’s licence, and the other has no need to do so, or even to be licensed to drive. It follows, that whilst there appears to be no functional difference between rental, hire and leasing services (the most apposite services encompassed in the trade mark’s specification) and the service the Applicant supplies, in the autonomy of consumers of car rental services or of the Applicant’s members to take the vehicle, drive it, and be responsible for the vehicle whilst driving it (the Applicant’s business), the inherent character of those services on the one hand is very different to the service provided to a passenger in a taxi who is a passive consumer of the service of being driven from one place to another (the Respondent’s cab service).
I do not consider that the product review instance tends to an opposite conclusion. Having regard to the product review, including what actually were the services, and when the services were ordered or sought, I consider that at all times the product reviewer thought she was getting the equivalent of a taxi service or a limousine service, and that mere identification by her of the GoGet website as a site on which to make a complaint is insufficient to lead me to conclude that the Respondent’s services are of the same description within the meaning of sub-s.120(2) of the Act.
Infringement under sub-s.120(3) of the Act
I turn next to sub‑s.120(3) of the Act. In sum, on the limited evidence before me, I am not persuaded that, in the relevant sector, the Applicant’s trade mark is so well known that it satisfies the threshold requirement within para.120(3)(a) of being a well known mark in Australia.
Whilst I note that the mark need not be well known to the Australian public at large, an applicant must establish that its mark is well known to the relevant sector of the public: sub‑s.120(4) of the Act. Paragraph 120(3)(c) of the Act also directs attention to the trade mark also being well known in the sector in which the alleged infringer operates, with the consequence that the alleged infringer’s use of the offending sign would be likely to indicate a connection between the unrelated services and the trade mark owner.
The relevant sector in which the Applicant operates is at least the car share market, and possibly the broader car rental market. The relevant sector in which the Respondent provides his cab services is taxi services.
The evidence adduced is insufficient to establish that the trade mark is well known. It also lacks historical depth, breadth, and content. For example, there is a lack of detail as the number of active members in each location that the Applicant operates, particularly in Melbourne, there is no evidence of any revenue received by the Applicant’s business over the period it has been operating (or at any time), no advertising spend, no expenditure on vehicles, or their maintenance, and only few instances of reportage and promotion in print and other media throughout the whole of Australia over a dozen years or more. There is an absence of detail about the corporate and university partnerships and promotional relationships established, and no evidence about their duration, promotional reach or extent, or their success.
I have evidence before me of the number of cars supplied by the Applicant, and each of those cars having “GoGet” signage on them, over five cities, predominantly in Sydney, and to a lesser extent in Melbourne, where there are currently 592 vehicles in what is a populous and geographically extensive city, a website directed to members, a modest social media presence, and, as I have said, some news media references, and the establishment of some university and other sector relationships.
In relation to the website and social media, there is no evidence of how long the website and social media accounts have been operating, the website traffic, page views or users, or the like. In terms of the market sector, I note that the relevant public may include actual and or potential consumers of the type of services. It may also include persons involved in the channels of distribution of those services.
In short, I do not have sufficient evidence of the development or expansion of the use and promotion by the Applicant of the trade mark over time and across the sector to infer a sufficient reputation and goodwill accruing to the mark to conclude that the mark satisfies the threshold requirement that it is well known within para.120(3)(a) of the Act.
Even if I assume that the sectors may be geographically limited to capital cities (being where the Applicant physically operates), or even more narrowly to Melbourne (although it is not immediately apparent in the present circumstances that such a narrowing of the concept of sector would satisfy the requirements of the phrase “well known in Australia”), in the present case, I am not satisfied on the evidence that the Applicant’s trade mark is well known.
In relation to para.120(3)(b) of the Act, I have found that the Respondent’s name and logo are deceptively similar to the Applicant’s trade mark. It must follow from my earlier findings in relation to sub‑ss.120(1) and 120(2), that the services offered by the Respondent are not the same as the services of the registered trade mark, and are not of the same description as the registered services, that the services that the Respondent offers to provide on the Respondent’s website and blogs are unrelated services.
In relation to the relevant likely indication of connection between the marks that is required to establish infringement, as I have set out above, sub‑para 120(3)(c) of the Act requires that:
Because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark.
The Applicant points to the similarity of the marks, and of the services. Whilst I have found that the marks are deceptively similar, that is not sufficient of itself to thereby indicate a connection with the unrelated services of the Respondent.
The Applicant submits that the negative product review is sufficient evidence to satisfy para.120(3)(c) of the Act. The Applicant submits that there will be loss of value in the Applicant’s trade mark because of the non-exclusivity that is likely to arise from the use by the Respondent of the name and Respondent’s logo.
I infer from Ms Spies’ submission that she was referring to the reputation of the Applicant in relation to its car share services, as a sub-set of the services in relation to which the trade mark is registered. However, as I not satisfied that the Applicant’s trade mark is well known, which is a necessary element of para.120(3)(c), I am not satisfied that the Applicant has established the necessary causal relationship required by para.120(3)(d). Further, I am not satisfied on the evidence that the interests of the Applicant are likely to be adversely affected.
In short, I find that whether the Applicant puts its case as the trade mark is well-known in relation to car share services or whether the Applicant puts its case on the basis that its registered trade mark is well-known in relation to the services for which the trade mark is specified, on the evidence before me I am not satisfied that the mark is, within the meaning of s. 120(3) of the Act, well-known in Australia to a relevant sector. I am not satisfied that the other elements of sub-s.120(3) are made out.
Conclusion on trade mark infringement
It follows that I find that the Applicant has not made good its allegations of trade mark infringement.
If am wrong about that conclusion, I will briefly turn to the question of damage. In sum, I do not find that the Applicant has suffered any damage, and that the Respondent’s conduct is such as to attract an award of additional damage.
Damage
The Applicant seeks damages on two grounds: compensatory damages pursuant to s.126(1)(b), and additional damages pursuant to s.126(2) of the Act.
The Applicant claims damages for loss of reputation as a head of compensatory damages. It submits that an appropriate award for reputational damages is $5000.
Reputational damages compensate for the harm of devaluing an injured party’s reputation by reason of the adverse reflection on its products or services arising from the contravening conduct of a respondent. In Geneva Laboratories Ltd v Prestige Premium Deals Pty Ltd & Ors (No.5) [2017] FCA 63; (2017) 122 IPR 279, Bromwich J considered the issue of reputational damages at [68] - [73], and followed the Full Court’s consideration in Facton Ltd v Rifai Fashions Pty Ltd [2012] FCAFC 9; (2012) 199 FCR 569, another counterfeiting case. In Geneva, in the context of a substantial counterfeiting operation, there was no separate evidence dealing specifically with the topic of damage to reputation, but there was evidence that Bio‑Oil (the trade marked product) had a significant positive reputation, and from the fact that a large number of professional pharmacists were sued by the applicants in that case his Honour accepted that “the inescapable inference is that the presence of a significant problem with Bio‑Oil counterfeiting must be known to many pharmacists”. He stated (at [72]-[73]) that:
[72]Damage to reputation was aggravated by the widespread email advertising of the counterfeit Bio‑Oil by or on behalf of the respondents, which was in evidence, indicating steep discounting for what turned out to be counterfeit product. Importantly, and in context, this was in relation to a product recommended by doctors and used by patients … in those circumstances the very fact of reasonably widespread counterfeiting was inherently damaging to reputation and individual evidence in support of that inescapable conclusion would not significantly advance the applicants’ case in this regard. …
[73]This is not a head of damages which is amendable to precise calculation any more than are damages for individual reputational loss such as in defamation. Nonetheless the Court must do the best that it can on the available evidence. The reasonably widespread counterfeiting operation which the respondents participated in can fairly be regarded as having a real if not readily measurable impact on the good reputation of Bio‑Oil. …
I consider that very different circumstances pertain here. The evidence is that the respondent was a sole trader. The Respondent’s website presence and self-promotion on the website and the Facebook posts had very few views, and pathetically few followers.
Whist it is clear that there is no requirement for an evidentiary starting point to obtain an award for reputational damages, the Applicant must have established to the satisfaction of the Court a positive reputation – in both Facton and Geneva the applicants had established a “substantial, exclusive and valuable reputation” – and some evidence from which I can draw an inference (at least) that the reputation will likely be diminished by non-exclusivity or by other loss in value – in Facton and Geneva such inferences were available from the sale of counterfeit items, sharp discounting, and the inference that sales would be lost because of loss of exclusivity. No such circumstances arise in the present case.
The Applicant’s counsel relied on the statements of Mason CJ and Dawson J in Commonwealth v Amman Aviation Pty Ltd [1991] HCA 54; (1991) 174 CLR 64 at 83, approved in Facton at [28] by Lander and Gordon JJ, that mere difficulty in estimating damages does not relieve a court from the responsibility of estimating them as best it can. I am cognizant of that responsibility. I have found, however, that the trade marks are not substantially identical, and that the services are not the same or of the same description, that the Applicant had a modest social media presence, and the Respondent, almost no social media presence and operated one taxi (and there is no evidence that it displayed the Respondent’s logo or the phrase). The instance of confusion which brought the Respondent to the attention of the Applicant was of a person who wished to acquire car-with-driver personal services not provided by the Applicant. If I am wrong on the matter of trade mark infringement, on the evidence I am not satisfied that there is damage to reputation such as would enable me to estimate any award of reputational damages.
In relation to aggravated damages, the factors that are identified by Wigney J in Truong Giang Corporation v Quach [2015] FCA 1097, by the Full Court in Facton, and Bromwich J, in Geneva. The Respondent’s conduct in the present case does not display such flagrancy and cynicism that the Court is minded to demonstrate further judicial disapproval or to penalise by an award of aggravated damages. The Respondent has appeared in person on each occasion that the matter has been before the Court, he has offered undertakings, before the hearing in his submission in writing, and he has reiterated to me yesterday and today his willingness to effect cancellation of the domain name and that the offending marks be removed from social media accounts.
The Respondent’s failure to adequately respond to the Applicant’s lawyers’ demands are matters relevant more relevant to costs than to additional damages, although they may not be irrelevant (see Geneva at [80]). I do not find that the Respondent’s conduct is, in the terms described by other courts as flagrant conduct, including that which is deliberated and calculated and in disregard of the injured party’s rights, or a cynical pursuit of benefit. The present matter is off a very different ilk than the counterfeit cases and the behaviours of the respondents in each of the three decisions to which I have already referred.
Should I be incorrect in my findings of infringement of trade mark, I make no award of additional damages.
Consideration of the Australian Consumer Law claim
I turn now to the Applicant’s claim of contravention of the ACL. The Applicant has alleged that by the Respondent’s conduct (see at [33]–[47]) he has represented to consumers that, and I summarise, his business, his services the Respondent’s website and the Facebook page are that of the Applicant or is associated with, affiliated with, sponsored by, approved by, licensed by, or otherwise connected with the Applicant and that he has thereby contravened ss.18 and 29(1)(g) and (h) of the ACL.
Section 18(1) of the ACL provides as follows:
A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Relevantly, s.29(1)(g) and (h) of the ACL provide:
A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
(g)make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits: or
(h)make a false or misleading representation that the person making the representation has sponsorship, approval, or affiliation
The principles are well established: see generally S&I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354, 361–362. They have recently been summarised in Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235 by Burley J at [308]-[319], see also Morrocanoil at [338]-[343], and Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2016] FCA 820; 120 IPR 478 at [173]-[194] (Moshinksy J); on appeal at [2018] FCAFC 29, and I do not repeat them here. It suffices to note that it is not necessary for an applicant to establish an exclusive reputation, that evidence from individual consumers that they have been misled by the impugned conduct is not necessary and may be of little utility, and that conduct may be found to be misleading or deceptive, or likely to mislead or deceive, notwithstanding that the respondent acted honestly and reasonably, and did not intend to mislead or deceive.
Whilst the relevant date for assessing the reputation of the Applicant for the purposes of the ACL is the date that the impugned conduct commenced, and the Applicant’s claim to reputation has been directed to early 2018, and not some earlier time in 2017, having regard to the totality of the evidence, I am satisfied that prior to the first use by the Respondent of the Respondent’s logo and phrase “Go Get Cabs” that the Applicant had established a reputation in its trade mark as signifying, whether or not exclusively, the provision of car share services at least in Melbourne’s greater CBD and into its south eastern suburbs.
I am persuaded, on the weight of the evidence, that there is a real or not remote chance or possibility that continuing use of the Respondent’s logo and of the phrase, “GoGet Cabs” by the Respondent in the manner it has been used in the instances evidenced, is likely to mislead or deceive a not insignificant number of consumers that the provider of “GoGet” carshare services has licensed or approved a third party, the Respondent, to extend that business to encompass the provision of taxi services in south eastern Melbourne, in contravention of ss.18 and 29(1)(g) and (h) of the ACL.
Whilst I am not satisfied that the Respondent has or will by the impugned uses represent that he is the Applicant, or that the services he promotes are those of the Applicant, by reason of the element “GoGet” in common in both the name of the Applicant’s car share service and the Respondent’s logo and phrase promoting his taxi services, having regard to the whole of the evidence, I find that the Respondent’s continued use is likely to make a representation of association, approval or licence, or of otherwise having a connection with the Applicant and its services that is likely to mislead or deceive.
Conclusion
It follows from the above that the Applicant has established that the Respondent has engaged in conduct that is likely to mislead or deceive, and has made false representations in contravention of the ACL. I am prepared to make declarations to that effect, and to injunct the Respondent from further use of the Respondent’s logo and phrase.
However, insofar as the claim for damages under s.236 of the ACL is concerned, damage is an essential element in the cause of action: see Wardley Australia Ltd v Western Australia (1992) 175 CLR 514; Halal Certification Authority Pty Ltd v Scadilone Pty Ltd [2014] FCA 614, Perram J at [90], [114]-[116]. There is no evidence that the Applicant has suffered any damage. There is no evidence that its reputation has been damaged by the Respondent’s conduct. There is no evidence that any trade was diverted, or would be diverted nor that any person had been dissuaded from becoming a member or that the Applicant had lost any membership or revenue (there was not any evidence before me of the Applicant’s revenue at all). Accordingly, the claim for damages under s.236 of the ACL must fail.
On 23 March 2018 I made declarations and orders giving effect to my ex tempore reasons. The Applicant’s counsel and the Respondent both indicated that they wish to be heard on costs. Upon publication of these reasons I will list the matter for that purpose.
Schedule – Extract of paragraphs of originating Application
4. An order that the Respondent be permanently restrained from using, as a trade mark, the signs "GoGetcab" or "Go Get Cab", or any other sign that is substantially identical or deceptively similar to the GoGet Mark, in relation to the advertising, promotion, offer to supply or the supply of taxi, driving, car transport or related services, the services in respect of which the GoGet Mark is registered or any other services which are of the same description as the services in respect of which the GoGet Mark is registered, including by:
(a)use of the domain name and website < of the name GoGet or GoGetCabs as a trade mark;
(c)use of the email addresses ending in "@gogetcabscom.au" as a trade mark; and
(d)use of the Facebook page for "Go Get Cabs" at <facebook.com/gogetcabs>.
5.An order that the Respondent be permanently restrained from engaging in conduct which makes the Representations in trade and commerce in Australia, including by:
(a)use of the name GoGet or GoGetCabs;
(b)use of the email addresses ending in "@gogetcabs.com.au"; and
(c)use of the Facebook page for "Go Get Cabs" at <facebook.com/gogetcabs/>.
I certify that the preceding one hundred and twenty-six (126) paragraphs are a true copy of the reasons for judgment of Judge Baird
Date: 13 July 2018
CORRECTIONS
Catchwords: changed from “CONSUMER LAW - COPYRIGHT - Trade Marks – Australian Consumer Law”, to “TRADE MARKS – Australian Consumer Law.
Catchwords: changed from “INTELLECTUAL PROPERTY – Trade Marks – Australian Consumer Law”, to “INTELLECTUAL PROPERTY – trade marks – Australian Consumer Law – infringement – similar services”.
Cover page 2: insert “Orders pronounced: 22 March 2018.”
Cover Page 2: insert delivery date of “8 June 2018”.
Reasons for judgment: insert introductory paragraph which reads:
By way of clarification of these reasons, I commenced delivering reasons for judgment ex tempore at the conclusion of the hearing on 22 March 2018. At approximately 6:50pm, due to the lateness of the hour, I was unable to finish delivering reasons onto the record. Accordingly, having delivered my reasons on the trade mark causes of action, I then summarised the remainder of +my factual findings and conclusions, and explained to the parties that I would hand down settled reasons at a later date. I made orders on 22 March 2018 as set out in the orders section of this judgment. I subsequently completed these reasons in Chambers in accordance with my summary delivered orally.
The matter was listed on 8 June 2018. I handed down my settled reasons on that day. I then heard the parties on costs and made separate costs orders.
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