Mack Trucks Inc. v Satberg Pty Ltd

Re: MACK TRUCKS, INC. and MACK TRUCKS AUSTRALIA PTY LIMITED
And: SATBERG PTY LTD; ABDUL RAHMAN DEEN and SULTAN MOHAMMED DEEN
No. N G696 of 1991
FED No. 810
Trade Marks
(1991) 22 IPR 437

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Lockhart J.(1)

CATCHWORDS

Trade Marks - Infringement - interlocutory injunction - whether infringement of the BULLDOG registered trade mark and composite registered trade mark by use of name "Bulldog Spares" and logo - whether s. 58(1) requires the infringing use to be an identical use - whether predecessor in business under s. 64(1)(c) - personal liability of two persons in the company's infringement of the registered trade marks.

Trade Marks Act 1955: s. 58, s. 62, s. 64.

HEARING

BRISBANE

#DATE 29:11:1991

Counsel for the Applicants: D.M. Yates

Solicitors for the Applicants: Williams Niblett

Counsel for the Respondents: G.L. Litster

Solicitors for the Respondents: Ian Skinner

ORDER

The first respondent by itself, its servants and agents, be restrained from infringing registered trademarks numbered A208482 and A462063.

The second and third respondents and each of them be restrained from infringing the two trademarks aforesaid and from procuring the infringement of or aiding and abetting the infringement of or counselling the infringement of or being directly or indirectly knowingly concerned or party to any infringement of either of the marks aforesaid.

Orders 2 and 3 shall operate until the determination of this proceeding or further order.

The costs of the motion for interlocutory relief be the applicant's costs in the proceeding.

The proceeding be transfered to the Queensland District Registry of the Court.

The matter be listed before the Court in Brisbane on 12 December 1991 at 9.30 am for directions, together with the proceeding number G628 of 1990 between the applicants and Stanmead Pty Limited.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

This is a motion, heard yesterday, for interlocutory injunctive relief by Mack Trucks, Inc., the first applicant, and Mack Trucks Australia Pty. Limited, the second applicant, seeking to restrain the respondents until the final hearing of the proceeding from infringing two registered trade marks. In the course of my reasons for judgment I will make certain findings of fact which are, of course, made solely for the purposes of the motion for interlocutory relief. They are not final and, as is invariably the case with motions for interlocutory injunctions, must not be taken as representing any concluded view of the Court with respect to the facts.

The first applicant is a United States corporation. The second applicant is a wholly owned subsidiary of the first applicant and has carried on business in Australia since about 1963 as the Australian wholesale distributor and retailer of Mack brand trucks, parts and accessories. It has offices located in various states of Australia and in the Northern Territory. Mack brand trucks, parts and accessories are sold to the public by the second applicant and by a number of authorised Mack distributors and dealers located throughout Australia which are supplied by the second applicant. Those distributors and dealers also sell the products of third parties and frequently display the trademarks of the first applicant and those of third parties at their places of business.
The second applicant has extensively promoted and advertised in Australia Mack trucks, parts and accessories. There is evidence from Mr Nix, the national customer support manager of the second applicant, and previously the national parts manager of the second applicant, that the trucks of the first applicant are and have been for many years generally referred to in the trade and by the public in Australia as Mack Trucks, and that the parts and accessories of the first applicant have been generally referred to in the trade and by the public in Australia as Mack parts or Bulldog parts.
The word "Bulldog" has been extensively used by the second applicant on behalf of the first applicant to identify Mack brand trucks, parts and accessories in Australia and it appears that this use has been especially concentrated on identifying Mack brand parts and accessories. Mr Nix has sworn that he is not aware of any use in Australia of the word "Bulldog" or of a representation of a bulldog or, indeed, any other dog, as a trademark in connection with automotive vehicles, including trucks, parts and accessories, other than by or on behalf of the first applicant, and by a company known as Stanmead Pty Limited ("Stanmead"). He has also sworn that from his experience and knowledge of the relevant market and goods, that the trademark, to which I shall refer later, known as "BULLDOG" and the representation of a bulldog exclusively identify products manufactured by or with the licence of the first applicant.
The first applicant is the proprietor of a number of Australian trademarks registered under the Trade Marks Act 1955 ("the Act") for what are described in the evidence as the "Mack Bulldog device" and "BULLDOG" trademarks. The two trademarks with which this case is concerned are numbered A208482 and A462063. The former mark is a composite mark which contains a device in the form of the head of a dog, which has some resemblance to a bulldog, and under it the words "BULL DOG" with a dot between the word "BULL" and the word "DOG". The latter mark consists simply of the word "BULLDOG" in printed form.
In about early 1987, the first applicant became aware that Stanmead, a company incorporated in Queensland, was trading under the name "BULLDOG SPARES" from premises at Ipswich Road and Douglas Street, Oxley, Queensland, ("the Oxley premises") in connection with the sale of vehicle spare parts including truck spare parts bearing the trademarks of third parties. Neither the first or second applicant authorised the use of the business name "Bulldog Spares" by Stanmead.
On 2 November 1990, the applicants commenced proceedings against Stanmead in this Court in the New South Wales District Registry. In those proceedings the applicants sought orders restraining Stanmead from infringing the two marks with which this proceeding is concerned. That litigation has been transferred to the Queensland District Registry for the purposes of setting a hearing date and it is, so far as I can tell, expected to be heard early next year.
It appears that Stanmead ceased to carry on business under various business names including "Bulldog Spares", "Bull Dog Wreckers", and "Bulldog Sales", on 7 October 1991 and that the first respondent, Satberg Pty Limited, announced its intention of commencing business under those business names from that date. Whether or not the first respondent has in fact already commenced business or is simply ready to commence business is not a matter that is entirely clear from the evidence, but certainly it is preparing to carry on business now and probably has already carried on a small amount of business, but I think nothing turns on this fact.
The records retained by the Australian Securities Commission with respect to both Stanmead and the first respondent show that the directors of both companies are the second respondent, Abdul Rahman Deen, and the third respondent, Sultan Mohammed Deen. The same records indicate that Stanmead is under what is described as external administration. A receiver and manager appears to have been appointed to Stanmead.
On 24 and 25 October 1991, Mr Nix attended an auction sale at the Oxley premises of various items of stock pursuant to an advertisement placed in the Courier Mail on 12 October 1991. It appears that the auction sale was conducted under the authority of Mr E.G. Harris as the receiver and manager of Stanmead trading as "Bulldog Spares". During the course of the auction on 24 and 25 October, Mr Nix observed a man whom he recognized as being either the second or the third respondent, or one of their brothers, successfully bidding for a number of lots which included a large number of trucks, spare parts and accessories, stores equipment, spare parts catalogues and stock books.
A photograph of the Oxley premises is in evidence and it indicates that at least on 2 November 1991 this year there was a sign prominently displayed outside those premises stating, amongst other things, "BULLDOG SPARES ... incorporating BULLDOG SALES, BULLDOG WRECKING Replacement Parts PAI To Suit Mack trucks".
On 4 November 1991 an employee of the second applicant attended the Oxley premises and there spoke to a salesperson, as a result of which, the employee of the first applicant purchased from the salesperson for $53 a filter kit for a Mack truck. A receipt was issued by the salesperson and handed to the employee of the second applicant, which is headed "Bulldog Spares, corner Ipswich Road and Douglas Street, Oxley, 4075, phone 3753084 telex 145649". Above that heading it appears that the words "Stanmead Pty Limited trading as" have been struck out in ink. On the following day, 5 November 1991, another employee of the second applicant attended the Oxley premises, and there paid the remaining $3 of the purchase price, because on the previous day the purchaser had been $3 short. The salesperson to whom the second employee of the second applicant spoke said, in response to a question about the telephone number of the Oxley premises, that it would be the same old phone number by the end of the week, 3753084.
Stanmead acquired the name "Bulldog Spares" from a Mr Donald Todd, a Brisbane businessman, in October 1985 and commenced to trade on or about 7 April 1986. The first respondent acquired the business names, "Bulldog Spares", "Bulldog Wreckers", and "Bulldog Sales", from Stanmead on 7 October 1991. There is evidence from the third respondent that the first respondent obtained occupancy of the Oxley premises formerly occupied by Stanmead on 4 November 1991 and that from that date to the date of his affidavit (17 November 1991), the first respondent had not opened its business for dealing with the public.
The first respondent is still preparing its premises for business, and acquiring stock for resale. As I said earlier, there is some evidence which may suggest that the first respondent is already carrying on a small amount of business, but as I said before, nothing turns on this.
The first respondent has incurred liabilities in the sum of about $70,000, and will incur further liabilities in the sum of about another $40,000 in the immediate future associated with the preparation of the Oxley premises for business and the acquisition of stock.
There is also some evidence to the effect that the receipt to which I have already referred for $53 is part of discarded stationery acquired as part of the stock and equipment from the receiver of Stanmead. There is also evidence that as at early November this year the first respondent had not completed the preparation of its own stationery, sales, advertising and accounting material, and that when it is completed it will bear no resemblance to the receipt, and will be in the style formerly used by Stanmead depicting what is described and to which I shall refer later, as the Happy Bulldog, together with words consisting of the business name.
Evidence has been given by a Mr Mohammed Abdul Gaffar Deen, who appears to be a brother of the second and third respondents, to the effect that he is the owner of certain art work, a copy of which is in evidence, and which had been used by Stanmead in connection with its business, and which shows the words, "Bulldog Spares", surmounted by a circle which bears the face of a happy or contented bulldog. Mr Deen has also sworn that Stanmead used in trade certain displays consisting of a length of canvas bunting and that it is proposed by the first respondent to also use it. That bunting is in similar form to the artwork to which I have just referred. There is also evidence that what is described as the Happy Bulldog logo was removed on 31 October 1991 from the Oxley premises by or on the instructions of the receiver of Stanmead. Deen has also sworn that the letterhead and invoices to be used by the first respondent when it comes to trade will be in the style of the letterhead and invoices formerly used by Stanmead, that the first respondent will stock genuine Mack brand parts, together with parts by alternate manufacturers which suit Mack Trucks and that the first respondent intends to market spare parts to Mack truck owners and owners of other makes of trucks.
There are other facts which bear upon the issues in the present proceeding, but I have considered them and do not think it necessary to refer to them.
The evidence consists of the affidavits to which I have referred plus an affidavit in reply by Mr Nix and documents. There was no oral examination of any witness.
The first question is whether there is a serious question to be tried. Again, I emphasise that whatever findings I make for the purposes of the present interlocutory proceedings are tentative and not intended to be final. The final determination of the case may be consistent with my findings now or it may not. It depends, of course, on the evidence that is brought at the final hearing.
The first respondent proposes to carry on a business under the name "Bulldog Spares". This will probably include the use of the Happy Bulldog logo to which I have already referred. The first respondent, in general, proposes to adopt the same style and image and carry on the same business as was carried on by Stanmead but not identical with it. The proposed use by the first respondent of the word "Bulldog" appears to me to differ in size and style of lettering to the registered mark number A462063 and, indeed, A208482, and the face of the bulldog depicted in the registered mark number A208482, being a composite mark, differs from the face of the bulldog appearing on the logo and other material which the first respondent proposes to use. The face of the bulldog proposed to be used by the first respondent depicts a bulldog of a somewhat joyous disposition content with his lot in life. The face of the bulldog which appears in the registered mark A208482 is that of a leaner bulldog with a slightly quizzical demeanour. I am not entirely sure whether he is content with life or not.
It is, in my opinion, seriously arguable that the proposed use by the first respondent of the words "Bulldog Spares" in conjunction with the Happy Bulldog logo and other use of the word "Bulldog" in conjunction with the face of the bulldog will infringe both registered marks of the first applicant. It is true, as I have said, that the style and size of the print of the word "Bulldog" is not the same in the registered marks as in the proposed use. It is also true that the Happy Bulldog logo depicts a bulldog of a happy demeanour whereas the registered mark number A208482 depicts a bulldog of the kind I have described. Nevertheless, the proposed use by the first respondent is, in my opinion, a use of the mark A462063 for the purposes of s. 58(1) of the Act and is a deceptively similar mark to the composite mark in number A208482 within the meaning of s. 62(1) of the Act. Use by the first respondent of the word "Bulldog" without the logo would also be, in my view, prima facie, an infringement of the mark A462063.
I was referred in argument by counsel for the respondents to a number of cases. I find it necessary for present purposes to refer only to one, namely, to Angoves Pty Limited v Johnson (1982) 43 ALR 349, and in particular to a passage from the judgment of Fitzgerald J. at 371, a passage which does not appear to have obtained the endorsement of the other two members of the Court. At 371 his Honour said, after referring to the judgments of the High Court in Mark Foy's Limited v Davies Coop and Company Limited (1956) 95 CLR 190 and The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (the Esso Drop Case) (1963) 109 CLR 407, this:

"If the statements in the High Court in Mark Foy's v Davies Coop and Shell Co v Esso Standard Oil require that it be

accepted that s. 58(1) does provide that use of the

registered mark is an infringement, in my opinion the

relevant operation of s. 58(1) is confined to the use of the exact registered mark, without addition or alteration."

As I read his Honour's judgment, in my view he meant that for a mark to infringe under section 58(1) it must be a use of the exact registered mark in the sense of the entire mark without additions or deletions. He was not saying that a mark cannot infringe under that statutory provision, if, for example, its lettering is of a different size or style to the registered mark. If, however, his Honour was not meaning to convey what I have described, then I would respectfully differ from his decision.
The respondents rely on section 64(1) of the Trade Marks Act, which so far as relevant, provides that the following act does not constitute an infringement of a trade mark:

"the use by a person of a trade mark in relation to goods

... in relation to which that person has, by himself or his predecessors in business, continuously used the trade mark from a date before -

(i) the use of the registered trade mark by

the registered proprietor, by his

predecessors in business or by a

registered user of the trade mark; or

(ii) the registration of the trade mark,

whichever is the earlier;"

Although there is evidence of common directorships of both the first respondent and Stanmead and of close business ties between those two companies, the evidence does not permit a conclusion that Stanmead is a predecessor in business of the first respondent within the meaning of s. 64(1)(c) of the Act. I say this notwithstanding that Mr Nix in one of his affidavits referred to Stanmead as the predecessor in business of the first respondent. He did that in a different context to s. 64, and, in any event, his statement, though it is in evidence, would be of no probative value.

The second and third respondents were personally involved in the business activities of Stanmead and controlled that company, and they were personally involved in setting up the first respondent's business and they promoted the establishment of the first respondent and its business. Also, as I have indicated, the records retained by the Australian Securities Commission show that the second and third respondents are directors of both Stanmead and the first respondent. There is some evidence from the respondents to the effect that at least one or other of the second or third respondents, or perhaps even both of them, are no longer directors of the first respondent, and I take that into account, but I prefer, for present purposes, to act on the basis of the records retained by the Australian Securities Commission. This is not intended to discredit the evidence adduced on behalf of the respondent, as I am only dealing with this matter on an interlocutory footing.
It seems to me that the evidence taken as whole shows that the second and third respondents are persons against whom interlocutory injunctive relief can be granted in accord with the principles enunciated in a number of cases, the most recent of which has been brought to my attention is that of Martin Engineering Co v Nicaro Holdings Pty Limited (1991) 20 IPR 241, a decision of Burchett J. His Honour's statement of the law in that case is a statement with which I would respectfully agree, and I note that his Honour refers to a line of authority to support the proposition to which I have referred.

I turn now to the balance of convenience. The registered marks are being used in association with the business of the applicants in Australia and have been so used for a long time. The first respondent is only at the threshold of its business. Any injunction will not prevent the first respondent from carrying on its business of selling spare parts for trucks. It will only prevent the infringement of the two marks. Accordingly, in my view, the balance of convenience is plainly in favour of the grant of the interlocutory injunctions.
The orders of the Court are as follows: upon the applicants by their counsel giving the usual undertakings as to damages, the Court orders:
(1) that the first respondent by itself, its servants and agents, be

restrained from infringing registered trademarks numbered A208482 and A462063;

(2) that the second and third respondents and each of them be

restrained from infringing the two trademarks aforesaid and from procuring the infringement of or aiding and abetting the

infringement of or counselling the infringement of or being

directly or indirectly knowingly concerned or party to any

infringement of either of the marks aforesaid.

(3) The injunctions shall operate until the determination of this

proceeding or further order.

(4) The costs of the motion for interlocutory relief be the

applicant's costs in the proceeding.

The question arises as to the future conduct of this litigation, namely, whether the proceeding should be transferred to the Queensland District Registry of this Court. The proceeding was instituted in the New South Wales District Registry. The application for interlocutory relief was heard by me in Queensland because it was convenient to the respondents and the Court, and not, I gathered, inconvenient to the applicants that it be heard here. The case has, so far as I can determine, no nexus with New South Wales save that it is where the solicitors for the applicants carry on their practice and where counsel retained by the applicants carries on the basic part of his practice. In all the circumstances, I think the appropriate course to take is to transfer the proceeding to the Queensland District Registry of this Court. Accordingly, the Court orders that the proceeding be transferred to the Queensland District Registry of the Federal Court, and the Court also directs that the matter be listed before the Court on 12 December next for directions, together with the proceeding number NG628 of 1990 between the applicants and Stanmead.

[1991] FCA 810

29 NOVEMBER 1991