Nickhun Pty Ltd v Grifkam Pty Ltd - [2004] FMCA 994

FEDERAL MAGISTRATES COURT OF AUSTRALIA

NICKHUN PTY LTD v GRIFKAM PTY LTD

[2004] FMCA 994

TRADE PRACTICES – Misleading and deceptive conduct – passing off.

TRADE MARKS – Whether respondent’s mark substantially identical or deceptively similar to applicant’s trade mark – ‘Sunliner’ – ‘Sunlander’.

Trade Practices Act 1974, ss.52, 82, 86
Trade Marks Act 1995, ss.10, 17, 120

Typing Centre of New South Wales Pty Ltd v Northern Business College Ltd (1989) 13 APR 627
FAI General Insurance Co v RAIA Insurance Brokers Ltd (1992) 108 ALR 479
Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302
Faessler v Neale and Others (1994) 20 IPR 1
Shell Co of Australia v SA Standard Oil (Australia) Ltd (1963) 109 CLR 407
Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd & Anor (2003) 204 ALR 90

Applicant:

NICKHUN PTY LTD (trading as Sunliner Recreational Vehicles) (ACN 005 256 468)

Respondent:

GRIFKAM PTY LTD (trading as Sunlander Caravans) (ACN 104 048 384)

File No:

MLG 931 of 2004

Delivered on:

17 December 2004

Delivered at:

Melbourne (by video link to Brisbane)

Hearing Date:

19 October 2004

Date of Last Submissions:

8 November 2004

Judgment of:

McInnis FM

REPRESENTATION

Counsel for the Applicant:

Mr M Goldblatt

Solicitors for the Applicant:

Kahns Lawyers

Counsel for the Respondent:

Mr A Duffy

Solicitors for the Respondent:

Hinterland Lawyers

FEDERAL MAGISTRATES
COURT OF AUSTRALIA AT
MELBOURNE

MLG 931 of 2004

NICKHUN PTY LTD (trading as Sunliner Recreational Vehicles) (ACN 005 256 468)

Applicant

and

GRIFKAM PTY LTD (trading as Sunlander Caravans)
(ACN 104 048 384)

Respondent

REASONS FOR JUDGMENT

Introduction

In this matter an application was filed on 19 July 2004 by Nickhun Pty Ltd (the Applicant) trading as "Sunliner Recreational Vehicles". The applicant seeks injunctive relief and an account of profits flowing from what was alleged to be passing off of a business associated with that of the applicant by Grifkam Pty Ltd trading as "Sunlander Caravans" (the Respondent).
In its claim the applicant relied as a statutory basis for jurisdiction upon s.52 of the Trade Practices Act 1974 ("the TPA"). Specifically, in terms of remedies it relied upon s.82 and 86 of the TPA and otherwise the accrued jurisdiction of the court to hear a related passing‑off claim.
The applicant subsequently relied upon an amended application filed 19 July 2004. When the matter came before the court on 27 August 2004 orders were made for the parties to file and serve further affidavits to be relied upon and that the trial should proceed on affidavit evidence. The matter was then listed for hearing before the court on 19 October 2004. After a brief hearing the parties were then given the opportunity to provide further written submissions. The applicant had already relied upon an outline of submissions dated 19 October 2004. The respondent relied upon an outline of submissions dated 27 October 2004 with the applicant then providing submissions in reply which were filed on 8 November 2004.
In support…

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: [2004] FMCA 994
Decision Date: 17 December 2004

CaseChat Overview and Summary

Nickhun Pty Ltd (trading as Sunliner Recreational Vehicles) initiated proceedings against Grifkam Pty Ltd (trading as Sunlander Caravans) in the Federal Magistrates Court of Australia, alleging misleading and deceptive conduct and passing off under the Trade Practices Act 1974, as well as trade mark infringement under the Trade Marks Act 1995. The applicant claimed that the respondent's use of the name "Sunlander" was substantially identical or deceptively similar to the applicant's trade mark "Sunliner," leading to potential confusion in the marketplace and damaging the applicant's reputation and business. The respondent denied the allegations and argued that the two names were sufficiently distinct and that there was no evidence of actual or likely damage to the applicant's business.

The court found that the use of the name "Sunlander" by the respondent constituted passing off and/or misleading and deceptive conduct under the Trade Practices Act. The similarity in spelling and sound between the two names, combined with the applicant's established presence in the recreational vehicle market, was sufficient to create a real and tangible danger of confusion. The court also found that the respondent's mark was deceptively similar to the applicant's trade mark, potentially leading to confusion in the marketplace.

In granting the injunctive relief sought by the applicant, the court emphasised the importance of addressing potential confusion and damage at an early stage. The court considered the respondent to be a new entrant in the market, while the applicant had already established a significant presence with the imminent introduction of a "caravan" line of products. The precise wording of the injunctive relief would be determined after hearing submissions from counsel.

Orders