Digitrex (Aust) Pty Ltd v EMT Aust Enterprise Pty Ltd - [2004] FCA 1027

FEDERAL COURT OF AUSTRALIA
Digitrex (Aust) Pty Ltd v EMT Aust Enterprise Pty Ltd
[2004] FCA 1027
PRACTICE AND PROCEDURE – failure to comply with orders – application for default judgment pursuant to O 10 r 7 – whether substantive claims made out
Trade Marks Act 1995 (Cth) ss 120(1) and (2)
Federal Court Rules O 10 r 7(1)(b)
Australian Securities Commission v Macleod (1994) 130 ALR 717 followed
Cooper Engineering Company Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 cited
In the Matter of an Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 followed
Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388 cited
DIGITREX (AUST) PTY LIMITED AND ANOR v EMT AUST ENTERPRISE PTY LIMITED
N 2198 OF 2003
STONE J
9 AUGUST 2004
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 2198 OF 2003

BETWEEN:

DIGITREX (AUST) PTY LIMITED
FIRST APPLICANT

ZHENJIANG JIANGKUI GROUP
SECOND APPLICANT

AND:

EMT AUST ENTERPRISE PTY LIMITED
RESPONDENT

JUDGE:

STONE J

DATE OF ORDER:

9 AUGUST 2004

WHERE MADE:

SYDNEY

THE COURT DECLARES THAT:
1.The respondent has infringed Australian Trade Mark No 891347 (‘the Digitrex Mark’) by:
(a)using as a sign the word ‘DIGITEX’ on or in relation to electric goods including home entertainment products, televisions, DVD players, VCR players, audio systems, speakers, refrigerators, microwave ovens and air conditioners;
(b)using as a sign the logo depicted below (‘The DIGITEX Logo’) on or in relation to electric goods including home entertainment products, televisions, DVD players, VCR players, audio systems, speakers, refrigerators, microwave ovens and air conditioners. The Digitex Logo is:

2.The respondent has infringed Australian Trade Mark No 941333 (‘the Advertising Mark’) by:
(a)using as a sign the word DIGITEX on or in relation to electric goods including home entertainment products, televisions, DVD players, VCR players, audio systems, speakers, refrigerators, microwave ovens and air conditioners;
(b)using as a sign the Digitex logo on or in relation to electric goods including home entertainment products, televisions, DVD players, VCR players, audio systems, speakers, refrigerators, microwave ovens and air conditioners;
(c)using the internet website and domain name known as ‘ COURT ORDERS THAT:
3.The respondent by itself, its servants, agents or otherwise be permanently restrained from using as a sign the word DIGITEX or the Digitex Logo or any other sign that is substantially identical with or deceptively similar to either the DIGITREX Mark or the Advertising Mark on or in relation to the advertising, sale, offering for sale, distribution, promotion, importation, or hire of any electric goods including home entertainment products, televisions, DVD players, VCR players, audio systems, speakers, refrigerators, microwave ovens and air conditioners, or in or as the internet address for any website promoting or referring to any such products.
4.The respondent by itself, its servants, agents or otherwise be permanently restrained from using in trade or commerce in relation to the distribution, advertisement, promotion, importation, offering for sale or hire in Australia the word…

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: [2004] FCA 1027
Decision Date: 9 AUGUST 2004

CaseChat Overview and Summary

The case of Digitrex (Aust) Pty Ltd v EMT Aust Enterprise Pty Ltd involved a dispute over the use of the trade mark "DIGITEX" and associated logos by EMT Aust Enterprise Pty Ltd. Digitrex, the applicant, claimed that EMT Aust had been distributing and selling electrical goods under the name "Digitex" and using a logo similar to that of Digitrex since April 2003. The applicants also alleged that EMT Aust advertised these products online under the domain name using the Digitex logo. The dispute reached the Federal Court of Australia, where the applicants sought permanent injunctive relief and other orders against EMT Aust.

The primary legal issue before the court was whether EMT Aust had infringed on Digitrex's trade marks by using the "DIGITEX" name and logo, and whether EMT Aust should be restrained from continuing to use these marks. The applicants argued that EMT Aust's actions constituted trade mark infringement, unfair trading, and misleading or deceptive conduct under Australian law. They sought permanent injunctive relief against EMT Aust's use of the contested marks, the withdrawal of EMT Aust's trade mark applications, and the delivery of all products bearing the contested marks. The court also needed to determine whether any further actions, such as an assessment of damages, should be undertaken.

The court found in favour of Digitrex, granting the injunctive relief sought. It held that EMT Aust's use of the "DIGITEX" name and logo constituted trade mark infringement, unfair trading, and misleading or deceptive conduct. The court emphasised the deceptive similarity between the marks used by EMT Aust and those owned by Digitrex, which could cause confusion among consumers. As a result, the court issued a permanent injunction restraining EMT Aust from using the contested marks in relation to the distribution, advertisement, promotion, importation, or sale of any electrical goods. Additionally, the court ordered EMT Aust to withdraw its trade mark applications and deliver up all products bearing the contested marks. The applicants were granted leave to apply for the determination of damages within 28 days from the date of the order.

Orders

Orders of the court

3. The respondent by itself, its servants, agents or otherwise be permanently restrained from using as a sign the word DIGITEX or the Digitex Logo or any other sign that is substantially identical with or deceptively similar to either the DIGITREX Mark or the Advertising Mark on or in relation to the advertising, sale, offering for sale, distribution, promotion, importation, or hire of any electric goods including home entertainment products, televisions, DVD players, VCR players, audio systems, speakers, refrigerators, microwave ovens and air conditioners, or in or as the internet address for any website promoting or referring to any such products.

4. The respondent by itself, its servants, agents or otherwise be permanently restrained from using in trade or commerce in relation to the distribution, advertisement, promotion, importation, offering for sale or hire in Australia the word DIGITEX or the Digitex Logo or any word or logo deceptively similar to either the DIGITREX Mark or the Advertising Mark thereto or in relation to any of: home entertainment products, televisions, DVD players, VCR players, audio systems, speakers, refrigerators, microwave ovens or air conditioners bearing, or in or as the internet address for any website promoting or referring to any such products.

5. The respondent, by itself, its servants, agents or otherwise be permanently restrained from using the website and domain name ‘www.mydigitex.com.au’.

6. The respondent withdraw trade mark application 929737 for DIGITEX and device and trade mark application 951983 for DIGITEX and device.

7. The respondent deliver up on oath, within fourteen (14) days, all products and materials in the respondent’s possession, custody or control that bear the Digitex name or the Digitex logo or any other sign that is substantially identical with or deceptively similar to either the DIGITREX Mark or the Advertising Mark.

8. The applicants have leave to apply to the Court within 28 days from the date of this order to have the matter listed for the determination of the quantum of damages payable to the applicants by the respondent.

Background

Background to the litigation

The applicants’ goods, bearing the trade marks described above, have been imported into and distributed in Australia since March 2002. The applicants claim that since at least April 2003, the respondent has been distributing and selling electrical goods under the name of ‘Digitex’ and under the logo depicted in connection with the trade mark applications referred to below (‘the Digitex logo’). They also claim that the respondent has been advertising such products on the internet under the domain name ‘ using the Digitex logo. The respondent has made the following trade mark applications: ·the Digitex Trade Mark Application No. 929737 which depicts the Digitex logo thus:and ·the Digitex Trade Mark Application No. 951983 which depicts the Digitex logo thus: Procedural background This proceeding was commenced by application and statement of claim filed on 2 December 2003. On 13 February 2004 the respondent filed a defence. On 4 February 2004 I ordered the respondent to provide its list of categories of documents for discovery by 20 February 2004. The respondent did not comply and on 9 March 2004 the time was extended to 17 March, although the list was not provided until 23 March 2004. The applicant alleged that the categories were too broad and attempted to agree narrower categories with the respondent but was not able to evoke a response. While this was no doubt irritating and involved the applicant in unnecessary expense, difficulties of this kind are regrettably not uncommon. In April 2004, however, the applicants became aware of an open letter from the respondent, presumably to its customers, dated 6 April 2004. The letter, signed by Trung Dinh, commercial manager, states that the manager is writing ‘in regards to our change of company name’. It advises that the change in the company’s name from that of the respondent to ‘Luxon Electronics Pty Ltd’ ‘will slowly take place over the next two weeks’. It contains further advice about invoices, statements and other documents that is not relevant here. On 19 April 2004 the applicants’ solicitors wrote to the solicitors for the respondent seeking clarification of the proposed change. Having had no response, other than that the respondent’s solicitors were seeking instructions, the applicants wrote again on 28 April saying that they had not received an adequate response to their request of 19 April. They stated: ‘We have already informed you of your client’s “change of company details”, so called, as set out in our fax of 19 April. We note that in fact the letter sent to the trade is misleading in that the change is not merely a change in name but in fact appears to be a transfer of the business to a new corporate entity operating from the same premises. In that regard, we require your response to the following questions:(a)Has your client ceased or is it planning to cease the importation or sale of “DIGITEX” products in Australia?(b)Is Luxon importing or selling or planning to import or sell “DIGITEX” branded products in Australia?(c)It appears that Luxon has been or is being structured to take over the business of your client. Is this correct? If so, it would appear that Luxon is a proper party to the proceedings. Kindly state what the true relationship is between Luxon and your client? Has there been a sale, or other transfer, of assets or funds from one to the other? If your client fails to provide a clear and adequate response we [will] be obliged to take such interlocutory steps as are appropriate to ascertain the true position.’

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

STONE J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: STONE J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY		N 2198 OF 2003
BETWEEN:	DIGITREX (AUST) PTY LIMITED FIRST APPLICANT ZHENJIANG JIANGKUI GROUP SECOND APPLICANT
AND:	EMT AUST ENTERPRISE PTY LIMITED RESPONDENT
JUDGE:	STONE J
DATE OF ORDER:	9 AUGUST 2004
WHERE MADE:	SYDNEY