Halal Certification Authority Pty Ltd v Scadilone Pty Ltd

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FEDERAL COURT OF AUSTRALIA

Halal Certification Authority Pty Limited v Scadilone Pty Limited [2014] FCA 614

Citation: Halal Certification Authority Pty Limited v Scadilone Pty Limited [2014] FCA 614

Parties:

File number:

HALAL CERTIFICATION AUTHORITY PTY LIMITED ACN 068 275 203 v SCADILONE PTY LIMITED ACN 003 479 034 T/AS SOFRA PIZZA PIDE & KEBAB HOUSE, FUAT HALLACOGLU and EMSAL HALLACOGLU

NSD 1822 of 2013
Parties: HALAL CERTIFICATION AUTHORITY PTY LIMITED ACN 068 275 203 v QUALITY KEBABS WHOLESALERS PTY LIMITED ACN 096 787 174,
YASAR KOSE, WHITE HEAVEN PTY LIMITED ACN 151 079 999 and KADIRHAN ILLGUN
File number: NSD 2107 of 2013
Judge: PERRAM J
Date of judgment: 13 June 2014
Catchwords:

TRADE MARKS – infringement of registered trade mark – assessment of damages – whether any damage to capital value of trade mark – Trade Marks Act 1995 (Cth) s 126(2) – award of additional damages as a deterrent to conduct occurring again

TRADE PRACTICES – misleading or deceptive conduct – damages – whether loss or damage suffered  
Legislation: Competition and Consumer Act 2010 Sch 2 ss 2, 18, 236
Copyright Act 1968 (Cth) s 115
Designs Act 2003 (Cth) s 75(3)
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Patents Act 1990 (Cth) s122(1A)
Trade Marks Act1995 (Cth) s 120(2), s 126
Cases cited: Autodesk Australia Pty Ltd v Cheung Pty Ltd (1990) 94 ALR 472 considered
Blofeld v Payne (1833) 4 B & Ad 410; 110 ER 509 cited
Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd (No 2) (2008) 76 IPR 763 cited
Medical Benefits Fund of Australia Ltd v Cassidy (2003) 135 FCR 1 cited
MJA Scientifics International Pty Ltd v S C Johnson and Sons Pty Ltd (1998) 43 IPR 275 cited
Nokia Corporation v Liu (2009) 80 IPR 286 followed
Wardley Australia Ltd v Western Australia (1992) 175 CLR 514 cited
Yorke v Ross Lucas Pty Ltd (No 2) (1983) 46 ALR 319 cited

Commonwealth, Parliamentary Debates, Senate, 22 June 2011, 3485-8 (Senator Carr)
Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth)

James Mellor QC et al, Kerly’s Law of Trade Marks and Trade Names (Sweet & Maxwell, 15th ed, 2011)  

Date of hearing: 1 May 2014
Place: Sydney
Division: GENERAL DIVISION
Category: Catchwords
Number of paragraphs: 123
Counsel for the Applicant in NSD 1822 of 2013 and NSD 2107 of 2013: Mr DP O’Connor
Solicitor for the Applicant in NSD 1822 of 2013 and NSD 2107 of 2013: O’Connor Legal
Counsel for the Respondents in NSD 1822 of 2013 and NSD 2107 of 2013: Mr CM Lawrence
Solicitor for the Respondents in NSD 1822 of 2013 and NSD 2107 of 2013: Mercantile Legal

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 1822 of 2013
BETWEEN:

HALAL CERTIFICATION AUTHORITY PTY LIMITED ACN 068 275 203
Applicant
AND:

SCADILONE PTY LIMITED ACN 003 479 034 T/AS SOFRA PIZZA PIDE & KEBAB HOUSE
First Respondent

FUAT HALLACOGLU
Second…

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Details
Case
[2014] FCA 614
Decision Date

CaseChat Overview and Summary

The case of Halal Certification Authority Pty Ltd v Scadilone Pty Ltd involves the applicant, Halal Certification Authority Pty Ltd, alleging that the respondents had infringed on its registered trade mark by falsely claiming halal certification. The respondents, Scadilone Pty Ltd and others, were accused of using the applicant's trade mark without authorisation, thereby misleading consumers about the nature of their products. The court was tasked with determining whether the respondents' conduct constituted trademark infringement and whether any damages were owed as a result of this alleged infringement.

The primary legal issues the court had to address were whether the respondents had indeed infringed upon the applicant's trade mark and if so, what the appropriate remedy should be, including any damages owed. Additionally, the court had to consider whether the respondents had engaged in misleading or deceptive conduct and whether the applicant had suffered any loss or damage as a result. The court was also required to assess the capital value of the trade mark and determine if any additional damages should be awarded to serve as a deterrent against future misconduct.

In delivering the judgment, the court found that the respondents had indeed infringed upon the applicant's trade mark. The court detailed that the respondents used the applicant's trade mark in a manner that misled consumers into believing that their products were certified as halal, which was not the case. The court awarded the applicant damages of $91,015.00, reflecting the economic harm caused by the respondents' actions. Furthermore, the court prohibited the respondents from using the disputed trade mark and ordered corrective advertising to clarify that the respondents' products had not been certified as halal by the applicant. The court also directed the respondents to pay the applicant's costs.

The court issued an order that mandates the respondents to cease using the disputed trade mark and to publish corrective advertising as specified. Additionally, the court ordered the respondents to pay the applicant's costs. The applicant was ordered to pay the costs of one of the respondents, while no costs order was made against another respondent. This decision reinforces the importance of protecting trade marks and the potential legal consequences for those who infringe upon them.

Orders

Orders of the court

1. Judgment for the applicant against the first respondent for $10.

2. The application be otherwise dismissed.

3. The applicant pay the costs of the second and third respondents as taxed or agreed.

4. In relation to the first respondent there be no order as to costs.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

1. Judgment for the applicant against the first respondent for $91,015.00.

2. Judgment for the applicant against the third respondent for $10.

3. The first and second respondents not use trade mark 1005647.

4. The first and second respondents pay the applicant’s costs as taxed or agreed.

5. The parties bring in a form of agreed order for corrective advertising within fourteen days failing which the matter may be relisted by the applicant to have the form of the order determined.

6. The application be otherwise dismissed.

7. No order as to costs in relation to the third respondent.

8. The applicant is to pay the costs of the fourth respondent as taxed or agreed.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

The director of the applicant is Mr Mohamed El-Mouelhy. His evidence before me was that the Federal Government had authorised 13 organisations to issue halal certificates and the applicant was one of these. Another was the Australian Federation of Islamic Councils. Prompted by the proposition under cross-examination that the Council performed the same function as his business, Mr El-Mouelhy’s observation was ‘No. I’m a Rolls Royce. They are a Mini’. In part, Mr El-Mouelhy’s confidence about the quality of his services rests on the fact that the applicant has been approved by the International Organization for Standardization. I accept that the applicant is a respectable business with a reputation as a certifier which it justly feels entitled to protect.C. The Sofra Pizza Pide & Kebab House: facts Mr El-Mouelhy’s evidence was that he first detected the false certificate at the Sofra Pizza Pide & Kebab House during Ramadan in 2012 which ran from 20 July to 18 August in that year. In the company of a close friend, Mr Mohammad Gamal, he entered the Sofra Pizza Pide & Kebab House to order and to pay for some food. He says that whilst inside the restaurant he saw a notice on display which had been positioned such that it could be easily seen by anyone standing near the front counter. He observed that the notice appeared to be an halal certificate and that it bore the applicant’s trade mark. Mr El-Mouelhy says he then approached the young man who was behind the counter and had what might be described as an inconclusive conversation with him about the trade mark. Mr El-Mouelhy informed the young man that he owned the trade mark and asked him to remove the certificate. The young man suggested that Mr El-Mouelhy return to the shop in the morning and talk to the manager at that time. Mr El-Mouelhy then says that he took a photograph of the offending certificate on his smartphone. There is no dispute that Mr El-Mouelhy did not return the following day to speak to the manager for on his own evidence he did not in fact return until August 2013, that is, more than a year later. It is also to be noted that even on Mr El-Mouelhy’s account of his Ramadan visit to the Sofra Pizza Pide & Kebab House he did not give the young man his name or provide any contact details. From the young man’s perspective, the encounter (which I infer took place in the evening because it was Ramadan and Mr El-Mouelhy would have been fasting during the day) would have been a somewhat surreal affair. Although Mr El-Mouelhy says that he took a photograph of the certificate during the 2012 visit, he did not include that photograph in his affidavit evidence. Some effort was made in cross-examination to suggest to him that his visit to the Sofra Pizza Pide & Kebab House might have occurred as late as November 2012 but Mr El-Mouelhy was adamant that it took place in Ramadan and that he and his friend Mr Gamal were celebrating the breaking of the fast. I accept this evidence. Although it is true that Mr Gamal was not called to give evidence and although he could, no doubt, have assisted Mr El-Mouelhy’s case on this issue, I am not minded to conclude that Mr El-Mouelhy’s evidence about this matter is false.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

On balance I consider this is an appropriate occasion upon which to order corrective advertising. The corrective advertising is to make clear that Quality Kebabs has not been certified as halal by the applicant. It is to be published in two leading Islamic newspapers of the applicant’s choice. It is to be published once only. The advertisement should be 10cm wide and 5cm high and feature the words (translated if necessary) ‘Published by order of the Federal Court of Australia’. It is to appear on page 5. The parties are to agree on the balance of the text within 14 days. If they cannot I will resolve any outstanding debate upon the applicant notifying my chambers that agreement cannot be reached. I will then relist the matter to resolve the issue.N. Conclusion In Halal Certification Pty Ltd v Scadilone Pty Ltd I order:1.Judgment for the applicant against the first respondent for $10.2.The application be otherwise dismissed.3.The applicant pay the costs of the second and third respondents as taxed or agreed.4.In relation to the first respondent there be no order as to costs. In Halal Certification v Quality Kebabs Wholesalers Pty Ltd I order:1.Judgment for the applicant against the first respondent for $91,015.00.2.Judgment for the applicant against the third respondent for $10.3.The first and second respondents not use trade mark 1005647.4.The first and second respondents pay the applicant’s costs as taxed or agreed. 5.The parties bring in a form of agreed order for corrective advertising within fourteen days failing which the matter may be relisted by the applicant to have the form of the order determined.6.The application be otherwise dismissed.7.No order as to costs in relation to third respondent.8.The applicant is to pay the costs of the fourth respondent as taxed or agreed.

Ratio Decidendi

Legal Principle Established

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