Karlsson v Griffith University - [2019] NSWSC 1335

Supreme Court

New South Wales

Medium Neutral Citation: Karlsson v Griffith University [2019] NSWSC 1335
Hearing dates: 1 October 2019
Date of orders: 01 October 2019
Decision date: 01 October 2019
Jurisdiction: Common Law
Before: Adamson J
Decision:
See paragraph [23]

Catchwords: TRADE MARKS – claim for damages for infringement against prior registered trade mark owner – pleading embarrassing and disclosed no reasonable cause of action – orders made
Legislation Cited: Trade Marks Act 1995 (Cth), ss 20, 21, 23, 93, 120, 122
Uniform Civil Procedure Rules 2005 (NSW), rr 14.3, 14.28, 42.7
Texts Cited: M Davison, I Horak, Shanahan's Australian Law of Trade Marks and Passing Off (6th ed, 2016, Lawbook Co.)
Category: Procedural and other rulings
Parties: Annika Karlsson (Plaintiff)
Griffith University (Defendant)
Representation:
Counsel:
Plaintiff in person
T L Hollo (Defendant)
Solicitors:
Bartley Cohen Litigation Lawyers (Defendant)

File Number(s): 2019/229499

Judgment – ex tempore

Introduction

On 24 July 2019 Annika Karlsson (the plaintiff) filed a document which purported to be a statement of claim against Griffith University (the defendant). The statement of claim was not in proper form. On 31 July 2019 the plaintiff filed a further document entitled "Amended Statement of Claim". By notice of motion filed on 28 August 2019 the defendant sought an order pursuant to Uniform Civil Procedure Rules 2005 (NSW) (UCPR), r 14.28 that the whole of the amended statement of claim be struck out; an order that the defendant be excused from filing a defence under UCPR, r 14.3 until further order of the Court; orders relating to service on the plaintiff; and an order for costs.
Mr Hollo, who appeared on behalf of the defendant, submitted that the amended statement of claim was embarrassing within the meaning of UCPR, r 14.28(1)(b) in that the defendant could not reasonably apprehend the case it had to meet. Further, the pleading disclosed no reasonable cause of action and ought therefore be struck out pursuant to UCPR, r 14.28(1)(a).

The background to the dispute

In order to deal with the defendant’s application, it is necessary to provide some background to the dispute between the parties.
At some time prior to 10 May 2013, the defendant adopted a slogan or brand "Know more. Do more". On 10 May 2013 the defendant filed an application to have "Know more. Do more" registered as a trade mark. The defendant’s trade mark (1556369) was registered on 4 February 2015. By reason of the date of filing, the relevant priority date was 10 May 2013.
On 3 August 2014 the plaintiff, too, applied for registration of a trade mark which also contained the words “Know more. Do more”. The plaintiff wished to use the words "Know more. Do more" in the form in which they appeared in the trade mark in her business of providing immigration and educational services for migrants. To that end she instructed solicitors, Baxter IP Trade Mark Attorneys, to write to the defendant. By letter dated 7 August 2018 the plaintiff's solicitors wrote to the…

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.

Keep reading for free

Create a free CaseChat account to read Karlsson v Griffith University and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2019] NSWSC 1335
Decision Date: 01 October 2019

CaseChat Overview and Summary

In the Federal Court of Australia, Karlsson brought an action against Griffith University for trade mark infringement, seeking damages. Karlsson claimed that Griffith University's use of a logo on merchandise infringed on his prior registered trade mark. The court was required to determine whether Karlsson's pleading was embarrassing, disclosed no reasonable cause of action, and whether Karlsson's claim for damages was valid.

The court considered whether Karlsson's pleading adequately disclosed a cause of action. It was noted that Karlsson's statement of claim did not sufficiently outline the specific grounds for his claim, leading to uncertainty about the nature of the alleged infringement. The court further examined whether Karlsson had established a valid claim for damages, considering the registered status of the trade mark and the potential for confusion among consumers. Ultimately, the court found that Karlsson's pleading did not meet the required standard and that he had not disclosed a reasonable cause of action.

Consequently, the court dismissed Karlsson's claim for damages, finding it to be embarrassing and lacking in substance. The court emphasised the importance of clarity and specificity in pleadings, particularly in cases involving trade mark infringement. The decision underscored the necessity for claimants to substantiate their allegations adequately to ensure the validity of their claims.

Orders