Carshare Australia Pty Ltd v Singh - [2018] FCCA 1446

FEDERAL CIRCUIT COURT OF AUSTRALIA

CARSHARE AUSTRALIA PTY LTD v SINGH

[2018] FCCA 1446

Catchwords:
TRADE MARKS – Australian Consumer Law.

INTELLECTUAL PROPERTY – trade marks – Australian Consumer Law – infringement – similar services.

Legislation:

Competition and Consumer Act 2010 (Cth) Schedule 2, ss.18, 29, 236
Trade Marks Act 1995 (Cth), ss.7, 17, 120, 126

Cases cited:

Accor Australia & NZ Hospitality Pty Ltd v Liv Pty ltd [2017] FCAFC 56; (2017) 345 ALR 205
Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235
Coca-Cola Co v All‑Fect Distributors Ltd (1999) 96 FCR 107
E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144
Facton Ltd v Rifai Fashions Pty Ltd [2012] FCAFC 9; (2012) 199 FCR 569
Geneva Laboratories Ltd v Prestige Premium Deals Pty Ltd & Ors (No.5) [2017] FCA 63; (2017) 122 IPR 279
Halal Certification Authority Pty Ltd v Scadilone Pty Ltd [2014] FCA 614
Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823

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
S&I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354
Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2016] FCA 820; 120 IPR 478
Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29
Truong Giang Corporation v Quach [2015] FCA 1097

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,…

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: [2018] FCCA 1446
Decision Date: 22 March 2018 8 June 2018

CaseChat Overview and Summary

Carshare Australia Pty Ltd (Carshare) brought proceedings against Singh, alleging trade mark infringement and contravention of the Australian Consumer Law. The dispute concerned the use of the name "Car Share" by Singh in relation to car-sharing services, which Carshare contended infringed its registered trade mark for "Carshare" and its associated goodwill. The matter came before Baird J in the Federal Court of Australia.

The primary legal issues before the court were whether Singh's use of the name "Car Share" constituted an infringement of Carshare's registered trade mark, and whether such use amounted to misleading or deceptive conduct or passing off under the Australian Consumer Law. Specifically, the court was required to determine if the services offered by Singh were similar to those for which Carshare held a trade mark registration, and if there was a likelihood of confusion or deception among consumers.

Baird J considered the principles of trade mark infringement and the Australian Consumer Law provisions relating to misleading and deceptive conduct. The court analysed the degree of similarity between the respective names and the nature of the services provided by both parties. His Honour found that the services were indeed similar and that the use of "Car Share" by Singh was likely to cause confusion and deceive consumers into believing that Singh's services were associated with or endorsed by Carshare. This conclusion was based on the substantial overlap in the services offered and the phonetic and visual similarity of the names.

Consequently, Baird J found in favour of Carshare, granting an injunction to restrain Singh from using the name "Car Share" in connection with his car-sharing business.

Orders