Mack Trucks Inc. v Satberg Pty Ltd - [1991] FCA 810

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…

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.

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Details

Case: [1991] FCA 810
Decision Date: 29 NOVEMBER 1991

CaseChat Overview and Summary

The dispute in Mack Trucks Inc. v Satberg Pty Ltd involved a legal challenge brought by Mack Trucks Inc. against Satberg Pty Ltd and two individuals, alleging infringement of two registered trade marks: the BULLDOG mark and a composite mark. The case was heard by the Federal Court of Australia, where Mack Trucks sought an interlocutory injunction to prevent further infringement of its trade marks by the respondents.

The legal issues before the court were primarily centered on whether the use of the name "Bulldog Spares" and the associated logo by the respondents constituted an infringement of the BULLDOG trade mark and the composite mark. Another key issue was the interpretation of section 58(1) of the relevant trade marks legislation, which requires the infringing use to be an identical use, and whether section 64(1)(c) could hold the respondents personally liable for the infringement by Satberg Pty Ltd. The court was also tasked with determining the applicability of the predecessor in business doctrine under section 64(1)(c) of the legislation.

The court ruled in favor of Mack Trucks, finding that the use of the "Bulldog Spares" name and logo by Satberg Pty Ltd did indeed infringe the BULLDOG trade mark and the composite mark. The court clarified that section 58(1) of the legislation does require the infringing use to be an identical use. Additionally, the court held that the respondents could be held personally liable for the infringement by Satberg Pty Ltd under section 64(1)(c), which pertains to the predecessor in business. Consequently, the court granted Mack Trucks an interlocutory injunction to restrain the respondents from further infringement of the trade marks.

The final orders included a restraint on the first respondent from infringing the registered trade marks, as well as a broader prohibition on the second and third respondents from infringing the marks or aiding and abetting such infringement. The injunctions were to remain in effect until the final determination of the proceeding. Additionally, the court ordered that the costs of the interlocutory relief motion would be borne by the applicant, and the proceeding was transferred to the Queensland District Registry of the Court. The matter was subsequently listed for directions in Brisbane on 12 December 1991.

Orders

Orders of the court

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.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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