Mitsubishi Motors Australia Ltd v Ripponlea Motors Pty Ltd

[2013] FCA 627

FEDERAL COURT OF AUSTRALIA

Mitsubishi Motors Australia Ltd v Ripponlea Motors Pty Ltd [2013] FCA 627

Citation:		Mitsubishi Motors Australia Ltd v Ripponlea Motors Pty Ltd [2013] FCA 627
Parties:		MITSUBISHI MOTORS AUSTRALIA LTD v RIPPONLEA MOTORS PTY LTD and GREGORY THOMAS WALLACE
File number:		SAD 139 of 2013
Judge:		BESANKO J
Date of judgment:		18 June 2013
Date of hearing:	18 June 2013
Place:	Adelaide
Division:	GENERAL DIVISION
Category:	No Catchwords
Number of paragraphs:	4
Counsel for the Applicant:	Mr S J Doyle SC
Solicitor for the Applicant:	Thomsons Lawyers
Counsel for the Respondents:	Mr Wallace appeared in person

IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION	SAD 139 of 2013

BETWEEN:

MITSUBISHI MOTORS AUSTRALIA LTD
Applicant

AND:

RIPPONLEA MOTORS PTY LTD
First Respondent

GREGORY THOMAS WALLACE
Second Respondent

JUDGE:	BESANKO J
DATE OF ORDER:	18 JUNE 2013
WHERE MADE:	ADELAIDE

UPON

1.The applicant providing the usual undertaking as to damages within the meaning of practice note CM14 until further order.

THE COURT ORDERS THAT:

2.This application be made specially returnable to 10.00 am on Tuesday 18 June 2013.

3.Until further order, the first respondent must by or before 4.00 pm on Tuesday 2 July 2013, and a mandatory injunction is hereby granted, physically remove any and all signage and other advertising material for new vehicles bearing the name ‘MITSUBISHI’ and any associated trade indicia of the applicant (including, but not limited to, any three diamond device mark) from the premises situated at the common street address 355 – 359 Nepean Highway, Parkdale, Victoria 3195 (“the Site”) and return such signage or advertising material to the applicant.

4.In addition to order 3, the first respondent must by or before 4.00 pm on Tuesday 2 July 2013, and a mandatory injunction is hereby granted, take all necessary steps to comply with clause 10.7.8 of the Franchise Agreement between the applicant and the first respondent.

5.In addition to orders 3 and 4, the applicant or its agent is permitted to enter the Site for the purpose of removing from the Site any and all signage or advertising material for new vehicles bearing the name ‘MITSUBISHI’ and any associated trade indicia of the applicant (including, but not limited to, any three diamond device mark) and the first and second respondents must not prevent such access being provided to the applicant or its agent.

6.The first respondent must by or before 4.00 pm on Tuesday 2 July 2013, and a mandatory injunction is hereby granted, take all necessary steps to deregister or transfer to the applicant the domain name “ and any other domain registered by the first respondent that contains a word or mark that includes ‘MITSUBISHI’ or which is substantially identical with or misleadingly, deceptively or confusingly similar to ‘MITSUBISHI’.

7.The first respondent must not, and an injunction is hereby granted, whether itself, its directors, officers, employees, agents or howsoever otherwise, use the word ‘MITSUBISHI’ or any associated trade indicia of the applicant in connection with the supply of new vehicles.

8.The first respondent must not, and an injunction is hereby granted, display or otherwise communicate words or signs which are substantially identical with or deceptively similar to the registered trade mark “Love That Car” (no. 1250123) in respect of the supply of vehicles or services related to vehicles.

9.The first respondent must not, and an injunction is hereby granted, make any representation to any person to the effect that it is, or remains, an authorised or genuine Mitsubishi dealer or service centre.

10.The directions hearing be adjourned to Wednesday 3 July 2013 at 9.15 am.

11.The parties have liberty to apply.

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

IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION	SAD 139 of 2013

BETWEEN:

MITSUBISHI MOTORS AUSTRALIA LTD
Applicant

AND:

RIPPONLEA MOTORS PTY LTD
First Respondent

GREGORY THOMAS WALLACE
Second Respondent

JUDGE:	BESANKO J
DATE:	18 JUNE 2013
PLACE:	ADELAIDE

REASONS FOR JUDGMENT

1. I refuse the application for an adjournment.  I have considered the submissions and the affidavit material, and in particular the pre-action correspondence in GJB-15 to the affidavit of Gregory John Blanch sworn on 11 June 2013.  I am not satisfied that there are grounds for an adjournment.  There will be liberty to apply, and that can be exercised by the respondents if they consider it appropriate or are so advised. 

2. As to orders 1 to 9 in the applicant’s proposed minutes of order, I am satisfied that there is an arguable case or a prima facie case.  In fact, nothing has been said suggesting that the respondents have a defence.  The balance of convenience favours the applicant, as its business may suffer ongoing damage. 

3. I will extend the date in paragraphs 3, 4 and 6 to 2 July 2013.  I will not make orders in terms of paragraphs 10 and 11 at this stage.  They can be the subject of further submissions, either under the liberty to apply or at the next directions date I will fix.  I propose to adjourn the directions hearing to Wednesday, 3 July 2013 at 9.15 am. 

4. So paragraph 3 in the proposed minutes of order would be changed to 2 July 2013, paragraph 4 would be changed to Tuesday, 2 July 2013, paragraph 6 – there would be a similar change – and paragraph 10 and paragraph 11 would come out.  There would be a new paragraph 10 which would read, “The directions hearing be adjourned to Wednesday 3 July 2013 at 9.15 am”, and old paragraph 12 would be renumbered paragraph 11.

I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko.

Associate:

Dated:        25 June 2013