Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd

[2011] FCA 342

FEDERAL COURT OF AUSTRALIA

Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd [2011] FCA 342

Citation:		Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd [2011] FCA 342
Parties:		EDGETEC INTERNATIONAL PTY LTD ACN 010 728 784 v ZIPPYKERB (NSW) PTY LTD ACN 109 959 337
File number:		QUD 55 of 2011
Judge:		REEVES J
Date of judgment:		30 March 2011
Date of hearing:	30 March 2011
Place:	Brisbane
Division:	GENERAL DIVISION
Category:	No Catchwords
Number of paragraphs:	5
Counsel for the Applicant:	Mr D Chesterman
Solicitor for the Applicant:	Redchip Lawyers
Counsel for the Respondent:	The Respondent did not appear

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION	QUD 55 of 2011

BETWEEN:	EDGETEC INTERNATIONAL PTY LTD ACN 010 728 784 Applicant
AND:	ZIPPYKERB (NSW) PTY LTD ACN 109 959 337 Respondent

JUDGE:	REEVES J
DATE OF ORDER:	30 MARCH 2011
WHERE MADE:	BRISBANE

THE COURT ORDERS THAT:

1.UPON THE UNDERTAKING given by the applicant, through its counsel, as to damages AND UNTIL FURTHER ORDER the respondent by itself, its servants, or agents, or otherwise, howsoever, be restrained from infringing Australian Registered Trademarks numbered 620691, 620692, 477062, 590521, and 590520, collectively referred to as the Australian Registered Trademarks, and in particular, from using the Australian Registered Trademarks or any substantially identical or deceptively similar mark thereto in the course of trade in relation to:

(a)goods in respect of which the Australian Registered Trademarks are registered;

(b)services that are closely related to those registered goods; and

(c)services in respect of which the Australian Registered Trademarks are registered, or

(d)goods that are closely related to such registered services.

2.Liberty be reserved to both parties to apply on two days written notice to the other party.

3.The respondent pay the applicant’s costs of and incidental to this application.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION	QUD 55 of 2011

BETWEEN:	EDGETEC INTERNATIONAL PTY LTD ACN 010 728 784 Applicant
AND:	ZIPPYKERB (NSW) PTY LTD ACN 109 959 337 Respondent

JUDGE:	REEVES J
DATE:	30 MARCH 2011
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1. This is an application for an interlocutory injunction against the respondent, Zippykerb (NSW) Pty Ltd. I am satisfied that the respondent has been served with the originating application, in accordance with s 109X of the Corporations Act 2001 (Cth), as provided for in O 7 r 2(4)(a) of the Federal Court Rules. I am also satisfied that the respondent, or at least its director, Ms Lorna McGregor, was advised of the change of time of this hearing from 10.15 am to 2.15 pm today. I am so satisfied based on the statement in the affidavit of Ms Angela Mary Laylee, to the effect that she rang a person called “Lorna” at the respondent’s place of business and advised her that the hearing time had been changed. That person responded that the time was irrelevant to her.

2. Based on the materials before me, I am satisfied that there is a serious question to be tried in these proceedings.  The materials disclose that the words KwikKerber were used extensively on a website maintained by an organisation called Zippykerb.  In my view, at least on a prima facie basis, those words are substantially identical to, or deceptively similar to, the words used in the applicant’s registered trademarks.  I am also satisfied, at least on a prima facie basis, that in so using those words, the respondent has used them as a trademark.

3. I infer that Lorna McGregor is relevantly connected with, and responsible for, at least in part, the Zippykerb website upon which the offending words appear.  I base that on the following.

4. I infer that the person named “Lorna” is one and the same person as, first, McGregor, Lorna, shown as a director and secretary of the respondent company, based on a search of that company’s details annexed to the affidavit of Ms Laylee.  Secondly, as the Lorna McGregor, who is the signatory to a letter addressed to Angela Laylee of Redchip Lawyers dated 28 March 2011:  Exhibit 1.  Thirdly, as the Lorna referred to in the email address [email protected], shown near the bottom of Zippykerb’s website.  And finally, as the Lorna shown in the form obtained by clicking on the “Contact Us” box at the head of the Zippykerb website.

5. I note that the applicant has given the usual undertaking as to damages and based on that, and the circumstances of this case, I am satisfied that the balance of convenience favours the applicant being granted an injunction in the terms sought.

I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Reeves.

Associate:

Dated:        8 April 2011