Google LLC v Weeks
[2018] FCCA 3150
•30 October 2018
FEDERAL CIRCUIT COURT OF AUSTRALIA
| GOOGLE LLC v WEEKS | [2018] FCCA 3150 |
| Catchwords: CONSUMER LAW – TRADE MARKS – Well known trade mark – Google – Registration by unconnected party of business names Google LLC and Google Legacy and registration of internet domain name containing the word Google – deceptively similar trade marks – misleading and deceptive conduct – passing off – whether quia timet injunctive relief in respect of trade mark infringement should be granted – whether registered business names and domain name could be an instrument of fraud – summary judgment delivered. |
| Legislation: Business Names Registration Act 2011 (Cth), ss.5, 16, 22, 23, 51 Competition and Consumer Act 2010 (Cth), Schedule 2, ss.18, 29(g) and (h) Federal Circuit Court Rules 2011 (Cth), s.13.07 |
| Cases cited: British Telecommunications Plc v One in a Million Ltd (1998) 42 IPR 289 |
| Applicant: | GOOGLE LLC |
| Respondent: | JASON EDWARD WEEKS (T/A GOOGLE LLC; T/A GOOGLE LEGACY) (ABN 92 121 854 726) |
| File Number: | SYG 2851 of 2018 |
| Judgment of: | Judge Baird |
| Hearing date: | 30 October 2018 |
| Date of Last Submission: | 30 October 2018 |
| Delivered at: | Sydney |
| Delivered on: | 30 October 2018 |
REPRESENTATION
| Counsel for the Applicant: | Mr A Lang |
| Solicitors for the Applicant: | Ms S Seet, Gilbert + Tobin |
| No appearance by or on behalf of the Respondent |
ORDERS
Pursuant to r.13.07 of the Federal Circuit Court Rules 2011 (Cth), summary judgment be entered against the Respondent.
The Respondent, whether by himself, or by his employees or agents, or howsoever otherwise, be restrained from using any of the names “Google LLC” and “Google Legacy”.
The Respondent, whether by himself, or by his employees or agents, or howsoever otherwise, be restrained from using, as a trade mark, any sign comprising or containing the word “Google” in relation to any goods or services for so long as the Applicant or any successor in title remains registered as the owner of any one or more of the Australian registered trade marks listed in the schedule to these Orders (Google Trade Marks).
The Respondent, whether by himself, or by his employees or agents, or howsoever otherwise, be restrained from applying to register, or registering:
(a)any business name, company name or domain name comprising or incorporating the name “Google”; and
(b)any trade mark comprising or incorporating any of the Google Trade Marks.
The business name “Google LLC”, registered in the name of the Respondent, be transferred to the Applicant by way of the following steps:
(a)the Applicant lodging a copy of these Orders with the Australian Securities and Investments Commission (ASIC) within 7 days of the date of these Orders;
(b)after the expiration of 21 days from the date of these Orders, if it be the case, the Applicant serving on ASIC an affidavit by its solicitor or employed solicitor deposing that:
(i)no application for the stay of the Orders is pending;
(ii)no appeal from the Orders is pending;
(iii)the Orders are not stayed; and
(iv)the Orders have not been overturned on appeal, and
(c)forthwith upon receipt of the affidavit referred to in paragraph 5(b), ASIC transfer the business name to the Applicant.
The business name “Google Legacy”, registered in the name of the Respondent, be cancelled forthwith by ASIC upon the following steps being effected:
(a)the Applicant lodging a copy of these Orders with ASIC within 7 days of the date of these Orders; and
(b)after the expiration of 21 days from the date of these Orders, if it be the case, the Applicant serving on ASIC an affidavit by its solicitor or employed solicitor deposing that:
(i)no application for the stay of the Orders is pending;
(ii)no appeal from the Orders is pending;
(iii)the Orders are not stayed; and
(iv)the Orders have not been overturned on appeal.
The Respondent forthwith deregister the domain name <>
The Respondent, whether by himself, or by his employees or agents, or howsoever otherwise, be restrained from cancelling, transferring to any third party or otherwise dealing with, any of the business names “Google LLC” and “Google Legacy”, save as ordered by paragraphs 5 and 6 of these Orders.
The parties and ASIC each have liberty to apply on 2 days’ notice in relation to any matter arising out of compliance with any of paragraphs 5(b), 5(c) and 6 of these Orders.
The Respondent pay the Applicant’s costs of the application, including the application in a case.
The Applicant serve a copy of these Orders on the Respondent by:
(a)email to the address [email protected]; and
(b)private message via Facebook to one or more of the following accounts:
(i)>
The application otherwise be dismissed.
Schedule 1 to the orders of the Court made 30 October 2018 in SYG2851/2018
| Applicant’s Trade Mark Number | Trade Mark | Specified Goods/services within the following classes |
| 788234 | | 9, 38, 42 |
| 1049124 | | 16, 25, 35 |
| 1111537 (IR 881006) | | 9, 38, 42 |
| 1130283 | | 36, 38 |
| 1429812 | GOOGLE CHROME | 9, 35, 42 |
| 1444348 (IR 1086299) | | 3, 20 |
| 1453446 (IR 1091990) | | 9, 35, 36, 42 |
| 1539418 (IR 1145934) | | 42 |
| 1747948 | | 9, 25, 35, 36, 38, 39, 42 |
| 1749330 | | 9, 25, 35, 36, 38, 39, 42 |
| 1792596 | | 9, 35, 39, 41, 42, 43, 45 |
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT Sydney |
SYG 2851 of 2018
| GOOGLE LLC |
Applicant
And
| Jason Edward weeks (T/A GOOGLE LLC; T/A GOOGLE LEGACY) (ABN 92 121 854 726) |
Respondent
REASONS FOR JUDGMENT
(Ex Tempore, Revised from Transcript)
The Applicant, Google LLC, is the provider of a wide array of internet‑related services and products, including, amongst other services and products, an internet search engine and website, a social networking platform, instantaneous translations between many languages, online shopping services, a service for creating and hosting applications and websites, an online digital distribution platform that provides music, movies, books and apps, news, maps, webmail, instant messaging, video chat platforms, voicemail, an online payment service, and smartphones, speakers, tablets, wi-fi routers and streaming devices.
Google is the registered owner of a portfolio of trade marks, including registered trade marks in Australia which consist of or comprise predominantly the word and name mark Google, in respect of a wide range of goods and services, which registrations and specifications are listed in the schedule to the statement of claim filed in this Court, (Australian Google Trade Marks). It has been ranked as one of the most valuable brands in the world.
Google has initiated proceedings in this Court against the Respondent, Mr Jason Edward Weeks. Mr Weeks, who has an Australian business number registration, has registered the business names Google LLC and Google Legacy under the Business Names Registration Act 2011 (Cth) (Business Names Act). Mr Weeks is also the registrant of the domain name at the URL
Google has commenced proceedings in this Court for infringement of the Australian Google Trade Marks, seeking quia timet relief for threatened misleading or deceptive conduct in contravention of ss.18, 29(1)(g) and (h) of the Australian Consumer Law in Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL), and for passing off. Google seeks transfer of the registered business name Google LLC, cancellation of the registered business name Google Legacy, deregistration of the domain name, and permanent injunctions restraining Mr Weeks from the use of the trade mark and name Google.
Procedural background
By application in a case filed 24 October 2018, Google seeks summary judgment pursuant to r.13.07 of the Federal Circuit Court Rules 2011 (Cth). Google proceeds in the absence of Mr Weeks, although Mr Weeks has been given notice and has been served with the initiating process, and the substantive affidavits on which Google relies affirmed or sworn prior to 18 October 2018, and the affidavit in support of its application in a case of Ms Rebecca Dunn sworn 24 October 2018.
As I describe further below, Mr Weeks has also been served with the ex parte Court orders that I made on 11 October 2018, which included an order restraining Mr Weeks from cancelling or transferring to any third party or otherwise dealing with or disposing any of the business names Google LLC and Google Legacy until further order, orders for a case management conference and hearing of an interlocutory application set down for 16 October 2018, and orders provisionally listing the matter for final hearing on 30 October 2018.
Additionally, Mr Weeks has been served with subsequent timetabling orders made in the proceeding, including orders listing the matter for final hearing, and hearing of any default or summary judgment application, on 30 October 2018 in Sydney commencing at 10:30am. Those orders also provided that if Mr Weeks filed an address for service evidencing a physical location in Melbourne, Victoria by 25 October 2018, then the hearing on 30 October 2018 would have proceeded with the addition of by video‑link from the Court in Sydney to the Court in Melbourne, with the courtroom to be advised administratively.
On 24 October 2018, I granted leave to Google to serve any applications in a case together with all supporting affidavit evidence by 12 noon on 25 October 2018. I am satisfied that Google has done so, excepting very recent affidavits of service, and evidence of activity on certain Facebook accounts in the last 24 hours. Before me today (30 October 2018), Mr Lang of counsel appeared for Google in Sydney. Mr Weeks has not filed any address for service, and has not attended Court.
I am satisfied that there is evidence of the facts on which Google’s claim is based, and that there is evidence given by Google through its employee Ms Liburd and by Ms Dunn that Mr Weeks has no answer to the claim. I am satisfied that Mr Weeks has no reasonable prospect of successfully defending Google’s claim as pleaded in its statement of claim filed 9 October 2018, and that, pursuant to r.13.07 of the Rules, it is appropriate to give summary judgment on the claim, and to make the orders that I have made on 30 October 2018. In the course of formulating those orders I requested that Mr Lang identify a subset of the Australian Google Trade Marks which would be sufficiently illustrative of the range of Google’s Australian registered trade marks consisting of or comprising predominantly the word Google to inform Mr Weeks of the breadth of the uses being restrained. That subset is identified in the orders as the Google Trade Marks, and I have used this expression in the balance of these reasons to refer to the term as used in the orders where I consider it necessary.
The parties and the evidence
It is appropriate to first identify the parties, their activities and the evidence, before I turn to the relevant legislative provisions and legal principles, and their application in relation to trade mark infringement, passing off and contravention of the ACL as pleaded in the claim, and the relief sought in respect of Mr Weeks’ registered business names, his conduct and his apprehended conduct.
The Applicant, Google, and its trade names and activities
Google, as I have said, is a company. It provides a wide range of internet-related services and products. It began in 1998, and in 2002 was incorporated in the state of Delaware as a Delaware corporation named Google Inc. On 30 September 2017, Google was converted from a Delaware corporation to a Delaware limited liability company, and since then has operated under its present name, Google LLC.
I am satisfied on the evidence that since at least early this century Google, by itself and through its subsidiaries and affiliates, has extensively advertised, marketed, promoted, offered and provided a wide range of internet-related services and products which include online advertising technologies, a search engine, cloud computing software and hardware, under, and by reference to, the name Google, relevantly, in Australia, but also internationally. I have described some of these products and services at the commencement of these reasons.
Further, in Australia, commencing with Australian registered trade mark number 788234 registered in respect of specified goods/services in classes 9, 38 and 42 with a priority date of 16 September 1998, Google is registered as owner under the Trade Marks Act 1995 (Cth) of trade marks which consist of, or comprise predominantly, the word Google.On the Register of Trade Marks kept and maintained by the Registrar of Trade Marks, there are currently some 35 or so Australian registered trade marks owned by Google which consist of, or comprise predominantly, the word and name mark Google, variously in non‑specific font, in stylised form and in logo form, registered in respect of goods and services in various classes of the Register including classes 3, 9, 16, 20, 25, 35, 36, 38, 41, 42, 39, 43, 37 and 45, the majority of which registered trade marks have a priority date prior to 18 June 2015. As I have referred to above, certain of the registered trade marks are referred to in the orders made 30 October 2018 as the Google Trade Marks. Details of those trade mark registrations are in evidence.
The evidence establishes that Google is a coined term, created in 1997 by Google’s founders, Larry Page and Sergey Brin. The evidence is that Google is consistently ranked as one of the best global brands, including in rankings by Fast Company Magazine (2017), Interbrand (2017 and 2018), WPP and Kantar Millward Brown (2018), the Wall Street Journal (2006), and the independent business valuation company, Brand Finance, headquartered in London. Brand Finance identified the brand Google as the world’s most valuable brand in its February 2017 survey, with an estimated value of US$109 billion. According to its survey released in February 2018, Google was the world’s third most valuable brand, with an estimated value to Google of US$120 billion.
Even in traditional advertising media, as reported in the Australian Financial Review on 3 June 2018, Google’s spend on television advertising in Australia has exceeded $11.3 million (figures sourced from Nielsen AdEx by the TV industry group, Think TV). Reports of Google’s US dollar advertising spending in 2015, and spending in the UK in 2011 are also in evidence. It is reasonable to infer from the global brand rankings and brand valuations, and from the Australian advertising spend, and I accept, that the name Google is extremely well known to Australian consumers, and is recognised by members of the Australian public as the name of the Applicant, Google, and as a badge of origin associated with a wide array of internet-related services and products originating from it, its subsidiaries and affiliates, including those services and products I have referred to at the commencement of these reasons.
The evidence established that Google has more than 150 offices in more than 60 countries around the globe, and currently employs 70,000 employees worldwide, and that its revenue in 2017 was US$109.7 billion. As I have said, Google holds trade mark registrations in Australia for the name and mark Google. These registrations are among the over 650 trade mark registrations for the word mark Google owned by Google in 163 countries.
By reason of the matters which I have summarised above, I find that the name and mark Google, and any name substantially identical with, or deceptively similar to, the name and mark Google, used in relation to any of the range of goods and services encompassed by the Google Trade Marks, is likely to signify to a substantial number of people in Australia that:
(a)the services and products are services and products of Google;
(b)they are marketed, offered and/or provided by Google; or
(c)they are marketed, offered and/or provided by a company or a trader associated with Google, or with the licence, sponsorship or approval of Google; and
(d)that any such services or products are of the same standard, quality, value and grade as services or products advertised, marketed, promoted, offered and provided by Google, by itself, and through its subsidiaries and affiliates.
Further, I find that the evidence I have adverted to above establishes that Google is likely to have the above signification to a substantial number of people in Australia when used in relation to unrelated goods and unrelated services to goods and services encompassed by the specifications of the Google Trade Marks, and that it was likely to have such signification in relation to goods and services encompassed by the registrations, and unrelated goods and unrelated services, as at 18 June 2015.
That is, I accept that the Applicant, Google, has acquired a ubiquitous goodwill and reputation in the Google Trade Marks and that those trade marks with a priority date prior to 18 June 2015 are well known in Australia, within the meaning of s.120(3) of the Trade Marks Act.
The Respondent, Mr Jason Edward Weeks, and his activities
Mr Weeks is the holder of an Australian business number registration (ABN), generally an indicium of carrying on or starting up an enterprise, including a business of a recognisable size and scale, or engaging in trade or commerce, in Australia. On 18 June 2015 Mr Weeks registered the business name Google Legacy under his ABN. On 31 May 2017 he registered the business name Google LLC, again under his ABN. He has also registered in his name the domain name googlefoundation.com.au, which remains currently registered. As at the commencement of this proceeding on 10 October 2018, the domain name googlelegacy.com was also registered in his name. As at 16 October 2018, that domain was not currently registered.
At the commencement of this proceeding, Mr Weeks maintained an active online presence on Facebook at the following 8 Accounts:
(i)
(ii) refer to each of the above Accounts as the [name e.g. GoogleMatrix] Account, and together as the Facebook Accounts.
In addition, at least in the pages of the GoogleLegend Account, the timeline and about pages indicate that the GoogleLegend Account manages the GooglePixel Account, and is associated with the Instagram page GoogleLegacy, the LinkedIn page GoogleLegacy, Snapchat Account GoogleLegacy, Twitter Account Google Legacy, YouTube Account GoogleLegacy, and the website >
Several of the above Accounts have about and timeline pages which refer to Mr Weeks, and state that Mr Weeks is variously “owner and founder”, of GooglePixel, or “Google Arts and Culture”, or “google.com”, that he is the “owner/operator at Google” (pages of the GoogleInfinite Account), that Mr Weeks “works at Google” (pages of the GoogleMatrix Account), that he “studied at Google” (pages of the PixelLegacy Account), that his contact details are at googlefoundation.com, and that his products are “#Google”. A number of pages of the above Accounts contain colourful images depicting the stylised form of Google, the subject of Google’s Australian trade mark registration number 1111537, and recognisable copies of the Google Chrome logo, the subject of Australian trade mark registration number 1429814 owned by Google (for example, on the GoogleStereo Account).
In terms of Mr Weeks’ recent activities, I additionally note that at the GoogleStereo Account, the timeline and about pages indicate that the Account is associated with the website at the URL address and that a picture uploaded to the GoogleStereo Account on 22 December 2017 featured the Google stylised logo mark, and the Google Chrome logo.
I am also satisfied that the GoogleStereo Account has a “shop page” with a single “featured product”, although it is not clear what product is for sale.
Service on the Respondent
The Business Names Act Register maintained by the Australian Securities and Investments Commission (ASIC) for the Google LLC and Google Legacy business names records different physical addresses for Mr Weeks but both under the same ABN that he has registered in his name.
Google’s investigations have identified a Cranbourne address, a Camberwell address, a West Melbourne address, and a St Kilda address, all in the greater Melbourne metropolitan area, and each recorded as being Mr Weeks’ physical address. However, attempts to serve letters of demand on Mr Weeks were unsuccessful. Private investigator inquiries have identified an email address (which I will refer to as the Gmail address) associated with Mr Weeks, and a mobile phone number.
On 11 October 2018, being satisfied on the evidence before me that Mr Weeks was contactable at the Gmail address, and at one or more of the Facebook Accounts, I ordered that service on Mr Weeks be effected by forwarding the originating application, statement of claim and the first affidavit of Mr Mindaugas Skavronskas, affirmed 8 October 2018, and a copy of the orders I made on the day, to the Gmail address and via private message to the Hero, GoogleLegend and ChicagoLegacy Accounts, and at least one of the other Facebook Accounts.
I am satisfied on the evidence before me that the originating application, statement of claim, Mr Skavronskas’ first affidavit and the copy of my orders made 11 October 2018 were successfully sent via private message to the Hero Account, the GoogleLegend Account, the ChicagoLegacy Account and the PixelLegacy Account, and that Google’s solicitors’ covering message was also successfully sent to those Facebook Accounts.
On the evidence before me of a thumb nail image of the profile picture used in relation to the Hero Account, I am satisfied that the covering message and the documents described above were “seen” by a person having user access rights to that Account on Thursday 11 October 2018 at 7.55 pm. Accordingly, I am satisfied that this proceeding has been brought to Mr Weeks’ attention, and that he is aware of the proceeding, and of each of the Court dates that have been listed in respect of this proceeding.
I am satisfied that the application in a case and the supporting affidavit of Ms Rebecca Mary Dunn sworn and filed 24 October 2018 were sent via private message to the Hero Account, GoogleLegend Account, ChicagoLegacy Account and the PixelLegacy Account on 25 October 2018.
The private message to Mr Weeks at the above named Accounts attached the orders I made on 24 October 2018, and informed Mr Weeks that the hearing for summary judgment was set down on 30 October 2018, in the Court at Sydney. As I have said, those orders of 24 October 2018 also provided that if Mr Weeks filed an address for service with a physical address in Melbourne by 25 October 2018, he would be able to appear, by video-link to Sydney, from the Court in Melbourne on 30 October 2018. As I have noted, he did not file any address for service, either by 25 October 2018, or at all.
The affidavit of Mr Thomas Platt, affirmed 30 October 2018, and filed in Court this morning, establishes that there have been some very recent changes made to the Hero Account, the GoogleLegend Account and the GoogleStereo Account.
In relation to the Hero Account, the changes made and observed as at 6pm 24 October 2018 are:
(a)the Hero Account, which formerly featured the screenname “Hero” and a display picture of what appeared to be a driver’s licence of Mr Weeks, was changed so that the Account’s screenname is now “Facebook User”, and the Account features the default Facebook display picture of a white silhouette against a grey background; and
(b)the Hero Account’s landing page displays an error message.
As at 6 pm on 29 October 2018, each of the GoogleLegend Account, the ChicagoLegacy Account, and the PixelLegacy Account were still active.
By 8.30 am on 30 October 2018, however, it appeared that each of the GoogleLegend Account, and the GoogleStereo Account had been deactivated or deleted. In the case of the GoogleLegend Account:
(a)the previous Account screenname was replaced with “Facebook User” and featured the default Facebook display picture, being a white silhouette against a grey background; and
(b)the landing page of the Account now displayed an error message “sorry, this content isn’t available at the moment”.
The GoogleStereo Account also displayed the above landing page error message, default screenname “Facebook User”, and default Facebook display picture. As Mr Pratt had not previously sent any messages to the GoogleStereo Account, he was not able to identify whether the default screenname and Facebook display picture were recent changes or not. What is apparent, however, is that both Accounts are now deactivated or deleted.
As I have said (see at [28] and [29]), Google’s solicitors had been able to serve (and had served) the initiating process and supporting statement of claim and affidavit by email via private message to the Hero Account, the GoogleLegend Account, the ChicagoLegacy Account and the PixelLegacy Account, and, as well as the documents being sent to those Accounts, at least the user of the Hero Account had seen the relevant message by 11 October 2018 at 7.55 pm.
I am satisfied by the deactivation or deletion of the Hero Account by 29 October 2018, and the deactivation or deletion of the GoogleLegend Account and the GoogleStereo Account by 30 October 2018, that Mr Weeks has recently been active on those Accounts. It is reasonable to infer that the recent deletion or deactivation of the Hero Account and the GoogleLegacy account were done in response to the receipt, and subsequent viewing, of the Court documents, and thus by a person having access to those Accounts. On the material before me, I am further satisfied that Mr Weeks is the person who has access to those Accounts, and that he has seen the Court documents sent to one or more of the Facebook Accounts.
The following Facebook Accounts remained active as at my hearing of the application on 30 October 2018, namely:
(a) and
(e)>
As I have summarised at [22] above, in relation to the ChicagoLegacy Account, I note that the about page states that Mr Weeks holds the following positions:
(a)owner and founder at Google Pixel;
(b)owner and founder at Google Arts and Culture; and
(c)owner and founder at google.com.
In relation to the GoogleMatrix Account, the evidence establishes that Mr Weeks states on pages of that Account he “works at Google”, that the about page has been named “Jason Edward Weeks (Google)”, and that a photo of the Google Chrome logo and an image of the Google G logo, the latter the subject of Australian trade mark registration number 1748179 owned by Google appear on pages of that Account.
The timeline page of the GoogleMagic Account shows that the page has been named “Jason Edward Weeks (Google)”. Similarly, the timeline and about pages from the PixelLegacy Account state that Mr Weeks “studied at Google” and “ownage at Google” [sic], and depict an image of the Google G logo. The timeline and about pages of the GoogleInfinite Account state that Mr Weeks is the “owner and operator at Google”, and that the page has been named “Jason Edward Weeks (Google Legacy)”.
The evidence shows that in relation to at least 8 Facebook Accounts, 2 domain names, and at the email address [email protected], each of which include the name Google, Mr Weeks has made various claims of proprietorship, origination and business association with the Applicant, Google . The recent deletion and deactivation of at least 3 of the Facebook Accounts associated with Mr Weeks show that Mr Weeks continues to be active on social media, although it is not clear at what physical address, if any, he resides.
Relevant legislative provisions and legal principles
Business Names Act legislative provisions
Section 16 of the Business Names Act provides, relevantly, as follows:
(1) The objects of this Act are:
(a) to ensure that if an entity carries on a business under a business name, those who engage or propose to engage with that business can identify the entity and how the entity may be contacted; and
(b)to remove the inconvenience caused by the registration of business names under the law of more than one jurisdiction within Australia.
(2) These objects are achieved by requiring an entity that intends to carry on a business under a business name to register the business name on a nationally established and maintained register of business names.
(3)The objects of this Act are also:
(a)to avoid confusion by ensuring that business names that are identical or nearly identical are not registered; and
(b)to ensure that business names that are undesirable (for example, because they are offensive) are not registered; and
(c)to ensure that business names that should be restricted for any other reason (for example, because they might mislead consumers) are not registered.
Further, s.22 of the Business Names Act, pursuant to which ASIC must establish and maintain a Business Names Register, provides in subsection (2) as follows:
(2)The purpose of the Business Names Register is to enable those who engage or propose to engage with a business carried on under a business name to identify the entity carrying on the business and how the entity may be contacted.
Section 51 of the Business Names Act relevantly states:
(1)To avoid doubt, the relief that a Court may grant in an action for an infringement of a registered trade mark includes an order that the registration of a business name to an entity must be cancelled.
(2)ASIC must cancel the registration of the business name to the entity if:
(a)a copy of the Court’s order is lodged with ASIC; and
(b)ASIC is satisfied, within a reasonable period after the order is lodged, that:
(i)no application for the stay of the order is pending; and
(ii)no appeal of the order is pending; and
(iii)the order is not stayed; and
(iv)the order has not been overturned on appeal.
(3)Nothing in this section limits any orders that a Court may make (in an action for an infringement of trade mark or otherwise) in relation to the registration of a business name, or ASIC’s obligations under such orders.
Under the Business Names Act “entity” is broadly defined in s.5, and includes an individual. Further, s.23(1) of the Business Names Act provides that only an entity that intends to carry on a business under a name may lodge an application for that name to be registered to the entity.
The effect of s.51 of the Business Names Act is that this Court, having jurisdiction in relation to infringement of registered trade marks pursuant to s.191A of the Trade Marks Act, as well as granting a mandatory injunction pursuant to s.126 of that Act, may order that the registration of a business name to an entity must be cancelled, and, by reason of s.51(3) of the Business Names Act, may order that the registration of the business name be transferred to another entity.
The Full Court of the Federal Court of Australia in Christian v Societe Des Produits Nestle SA (No.2) [2015] FCAFC 153; (2016) 115 IPR 421 set out a number of principles applicable to quia timet injunctive relief in respect of trade mark infringement and passing off in respect of a business name and a domain name held by a respondent. The Full Court, at [134], referring with approval to the decision of the United Kingdom Court of Appeal in British Telecommunications Plc v One in a Million Ltd (1998) 42 IPR 289, per Aldous LJ, concluded that there was jurisdiction in passing off cases, at least, to grant injunctive relief where a respondent is “equipped with or is intending to equip another with an instrument of fraud”.
The Full Court referred approvingly to the explanation of his Lordship that a name which will, by reason of its similarity to the name of another, inherently lead to passing off is such an instrument. This however, will depend on the similarity of the names, the intention of the respondent, the type of trade, and all the surrounding circumstances. The Full Court observed that these principles are equally applicable to registered trade mark infringement under the Trade Marks Act. The Full Court said that in the case of a business name, leaving the name on the Business Names Register, having regard to the purposes in s.16 of the Business Names Act, could mislead consumers, and that the Court has the power to order the registration of a business name be cancelled (see Christian at [134]-[137], [151], [152]).
Trade mark infringement provisions
Turning to trade mark infringement, s.120(1) to (3) of the Trade Marks Act specifies when a registered trade mark is infringed. The relief that can be obtained from the Court in an action for infringement of a registered trade mark, as I have said, includes an injunction, and, I am satisfied, further to s.51(3) of the Business Names Act, orders for cancellation or for transfer of registered business names.
Pursuant to s.120(1) of the Trade Marks Act, 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. Subsection 120(2) then expands the concept of infringement in relation to goods and services of the same description or that are closely related to the registered goods and services of the Trade Mark.
Subsection 120(3) then provides for infringement of well known trade marks as follows:
(3)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:
(i)goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or
(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.
Consideration
It is apparent that Mr Weeks has no association or affiliation with Google, and it is evident that Google has not authorised Mr Weeks to register either of the business names, or the domain name, or to use any of the Google Trade Marks, nor to incorporate the name Google in the names of any of the Facebook Accounts, or make the various representations about working for, or having founded, or owning Google or supplying products under or by reference to Google, on any of the one or more Facebook Accounts are associated with him.
I am satisfied on the evidence to which I have earlier referred that each of the Google Trade Marks is well known in Australia. I am further satisfied that Mr Weeks, by his registration and holding of the business names Google Legacy and Google LLC, and the domain name googlefoundation.com.au, in each case has armed himself with a sign that is deceptively similar to each of the Google Trade Marks, and that were Mr Weeks to trade using, or by reference to, any of those business names or the domain name, he would be using, in the course of trade, those signs as trade marks in relation to goods or services, or unrelated goods or unrelated services to the goods and services of the specifications of the Google Trade Marks within the meanings of, respectively, ss.120(1) and 120(3)(b) of the Act.
I am further satisfied that, because Google and the Google Trade Marks are each well known, the use by Mr Weeks of any of the business names or the domain name in relation to unrelated goods or services to the goods and services of the specifications of the Google Trade Marks would thereby be likely to be taken as indicating a connection between his unrelated goods or unrelated services and Google, and for that reason, that the interests of the registered owner, namely, Google, are likely to be adversely affected. It is apparent from the use of the name and mark Google in the names of 5 of the Facebook Accounts, and the appearances of the statements on the pages of the Facebook Accounts, and the references to products #Google, that Mr Weeks has brought himself within the situation identified by Aldous LJ in One in a Million, and by the Full Court in Christian.
The evidence establishes that Mr Weeks has used a large number of variants of the word Google in his various Facebook Accounts and that on pages of those Accounts, he has sought by the use of the name Google or names that include the word Google to indicate an association in a commercial sense between him and the Applicant, variously as owner, founder, or having worked at Google, or by depiction of images of the Google Chrome and the Google G logo Australian registered trade marks.
I am satisfied, given the fame of the name Google, and by the conduct of Mr Weeks as evidenced by and on the Facebook Accounts, that there can be no legitimate use of either business name Google Legacy or Google LLC, or the domain name googlefoundation.com.au, by Mr Weeks in the course of trade or commerce, or in relation to any of the goods and services within the specifications of the Google Trade Marks, in relation to the goods or services of the same description or that are closely related within the terms of s.120(2), or in relation to unrelated goods or services within the meaning of s.120(3)(b) of the Trade Marks Act.
On the basis of the evidence of Google’s business activities and its substantial reputation in Australia, and ownership of the trade mark and name Google, prior to 18 June 2015, I have concluded that the business names and the domain name are each inherently likely to lead to passing off, that their use in trade or commerce will be likely to mislead or deceive within the meaning of s.18 of the ACL, and will convey false representations, within the meaning of s.29(1)(g) and 29(1)(h) of the ACL in trade or commerce should Mr Weeks not be restrained, or the names not be cancelled or transferred.
Accordingly, I am satisfied that:
(a)the acts of registering and holding each of the business names and the domain name in his name and under his ABN;
(b)the uses of the name Google on the Facebook Accounts that appeared to be associated with him to which I have referred to above; and
(c)his representations of relationships and history with Google on pages of those Accounts,
establish that Mr Weeks has used, and has in his hands, instruments available to him, which are consistent with an intention to use as badges of origin names which include predominantly Google, and so has equipped himself with an instrument of fraud in the sense identified by the Full Court in Christian.
Further, because Mr Weeks is registered with an ABN and has registered each of the business names, I am satisfied that grounds exist to grant quia timet relief to restrain Mr Weeks from using any names comprising or containing Google as a trade mark, to restrain him from making representations of relationship or history, and association with, the Applicant by the use of the term Google, and to prevent him from thereby further suggesting a connection between the Applicant, Google, and himself.
Conclusion and orders
I have concluded that quia timet relief is appropriate. I have formed the view that no legitimate use could be made of any of the business names, the domain name or the name Google in the hands of Mr Weeks, and that the number of Facebook Accounts and the pages on those Accounts which Mr Weeks has maintained and continues to maintain gives rise to an inference that, although being made aware of this proceeding and the various Court events, Mr Weeks will not voluntarily engage in the Court process or cease to use the name and mark Google.
I have previously made orders requiring Mr Weeks to file and serve a defence and otherwise to file and serve any evidence in answer to the claims set out in the statement of claim, and the evidence in the various affidavits which have been served. Mr Weeks has neither provided any defence or filed and served any evidence.
The inference is reasonably available to the Court that Mr Weeks has received and “seen”, that is “read”, or been in a position where, should he have chosen, he could have read, the messages and the Court documents sent to him via the private messages to the various Facebook Accounts and to the email addresses associated with Mr Weeks. He has chosen not to engage with Google’s solicitors, not to come to Court, and not to communicate with the Court. I am satisfied that Mr Weeks has no reasonable prospect of successfully defending the claim.
Whilst s.51(2) of the Business Names Act is directed to orders for cancellation rather than transfer, I am satisfied that s.51(3) of the Business Names Act makes it clear that the Court’s powers are not limited to making orders only for cancellation, and that s.126 of the Trade Marks Act permits the Court to make orders directing ASIC to transfer business names where the Court has found that there has been infringement of registered trade marks or that the circumstances for quia timet relief arise and the Court considers it an appropriate remedy.
I am further satisfied that it is appropriate to order ASIC to transfer the business name Google LLC from Mr Weeks to Google, following the steps that I have ordered:
(1)to bring the orders to the attention of Mr Weeks and ASIC;
(2)for time in which to file any appeal from the orders I have made to expire; and
(3)for ASIC to be informed on oath by a solicitor for Google, should it be the case, that there is no appeal or stay being sought.
I consider that transfer rather than cancellation is appropriate in the current proceeding because Google LLC is the very name of the Applicant, Google, and an order for transfer limits Google’s exposure to the risk that some other third party might seek to register the same business name should it become available following the cancellation process.
Further, I consider that it is appropriate that an order be made requiring ASIC to effect the transfer in due course because, just as the Full Court held in Christian, requiring ASIC to effect the transfer obviates the need for Mr Weeks to do anything.
Finally, I have made a mandatory order effecting deregistration of the domain name, and following the orders made in Christian (see order 11 in that matter), I am persuaded that it is permissible in this context to make such orders.
It follows that I have concluded that the Applicant, Google, has established the grounds for summary judgment, and I have so ordered.
I certify that the preceding seventy (70) paragraphs are a true copy of the reasons for judgment of Judge Baird
Associate:
Date: 14 November 2018
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