Nintendo Co Ltd v Care

[2000] FCA 1538

FEDERAL COURT OF AUSTRALIA

Nintendo Co Ltd v Care [2000] FCA 1538

INTELLECTUAL PROPERTY – interlocutory injunction – infringement of registered trade marks – passing off – false attribution of affiliation – video game character – simultaneous use of name and get up of registered trade mark – whether use of name alone warranted injunction – registration of business name – delay.

NINTENDO CO LTD & ANOR v DOMINIC CARE & ANOR
V 820 of 2000

GOLDBERG J
25 OCTOBER 2000
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 820 of 2000

BETWEEN:

NINTENDO CO LTD
First Applicant

NINTENDO AUSTRALIA PTY LTD
(ACN 060 566 083)
Second Applicant

AND:

DOMINIC CARE
First Respondent

AUSTRALIA CHAMPIONSHIP WRESTLING PTY LTD (ACN 092 811 839)
Second Respondent

JUDGE:

GOLDBERG J

DATE OF ORDER:

25 OCTOBER 2000

WHERE MADE:

MELBOURNE

UPON the applicants by their counsel undertaking:

(a)to submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by the operation of the interlocutory order hereby made or any continuation (with or without variation) thereof; and

(b)       to pay the compensation referred to in (a) to the person there referred to.

THE COURT ORDERS THAT:

1.Until the trial of the proceeding or further order the respondents and each of them, whether by themselves, their officers, employees or       agents or otherwise, howsoever be restrained from:

(a)conducting or promoting wrestling matches involving (whether as a wrestler or otherwise);

(b)       selling or offering to sell goods which include a representation of;

(c)otherwise promoting by any means;

a character:

(i)called “Da’ Super Mario”;

(ii)called “Super Mario”;

(iii)in a get‑up, or having the appearance, appearing in the schedules hereto; or

(iv)bearing a substantially identical or deceptively similar name or get-up or appearance to any of the above characters.

2.        A directions hearing be held on 6 December 2000.

3.        The costs of this application be reserved.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 820 of 2000

BETWEEN:

NINTENDO CO LTD
First Applicant

NINTENDO AUSTRALIA PTY LTD
(ACN 060 566 083)
Second Applicant

AND:

DOMINIC CARE
First Respondent

AUSTRALIA CHAMPIONSHIP WRESTLING PTY LTD (ACN 092 811 839)
Second Respondent

JUDGE:	GOLDBERG J
DATE:	25 OCTOBER 2000
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. The applicants seek interlocutory relief restraining the respondents from conducting or promoting wrestling matches involving their character “Da’ Super Mario” or selling goods which include a representation of that character.  The first applicant carries on the business of developing, designing, manufacturing and selling video game systems and video games and has been doing so since approximately 1975.  The second applicant is a wholly‑owned subsidiary of the first applicant and is its agent and exclusive distributor in Australia.

2. The applicants have built up a substantial reputation in…