Playboy Enterprises International Inc v Hiwind Pty Ltd t/as Mylk Lounge

[2006] FCA 1146

FEDERAL COURT OF AUSTRALIA

Playboy Enterprises International Inc v Hiwind Pty Ltd t/as Mylk Lounge
[2006] FCA 1146

PLAYBOY ENTERPRISES INTERNATIONAL INC v HIWIND PTY LIMITED T/AS MYLK LOUNGE AND HAKKI MUSTAFA
NSD 1066 OF 2006

WILCOX J
17 AUGUST 2006
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1066 OF 2006

BETWEEN:

PLAYBOY ENTERPRISES INTERNATIONAL INC
Applicant

AND:

HIWIND PTY LIMITED T/AS MYLK LOUNGE
First Respondent

HAKKI MUSTAFA
Second Respondent

JUDGE:	WILCOX J
DATE OF ORDER:	17 AUGUST 2006
WHERE MADE:	SYDNEY

In these orders the following terms carry these meanings:
           PLAYBOY Trade Marks means the word PLAYBOY and a RABBIT HEAD Device a representation of which is annexed hereto and marked “A”.
           Unauthorised Entertainment Event means entertainment and nightclub services at the First Respondent’s MYLK LOUNGE nightclub under or by reference to the trade mar PLAYBOY MANSION PARTY and PLAYBOY Trade Marks.

THE COURT:

1.DECLARES that the Respondents, and each of them, have by promoting, offering and engaging in an Unauthorised Entertainment Event:

1.1infringed registered trade mark No. 824241 PLAYBOY in Class 41;

1.2infringed registered trade mark No. 867461 RABBIT HEAD Device in Class 41;

1.3infringed registered trade mark No. 780284 PLAYBOY in Class 42;

1.4infringed registered trade mark No. 780283 RABBIT HEAD Device in Class 42

1.5engaged in conduct which contravenes Section 52 of the Trade Practices Act, 1974 (“Act”);

1.6made representations in contravention of Section 53(c) of the Act;

1.7made representations in contravention of Section 53(d) of the Act;

1.8wrongfully passed off the First Respondents’ entertainment and/or club services as and for the services provided by or under the licence of or otherwise associated with the Applicant.

2.ORDERS that the Respondents, and each of them, by themselves, their servants, agents or otherwise be restrained from infringing:

2.1registered trade mark No. 824241 PLAYBOY in Class 41;

2.2registered trade mark No. 867461 RABBIT HEAD Device in Class 41;

2.3registered trade mark No. 780284 PLAYBOY in Class 42;

2.4registered trade mark No. 780283 RABBIT HEAD Device in Class 42

3.ORDERS that the Respondents, and each of them, by themselves, their servants, agents or otherwise be restrained from, in trade and commerce in Australia, providing entertainment and/or club or entertainment establishment service under or by reference to the PLAYBOY Trade Marks or any of them, or any trade mark substantially identical with or deceptively similar thereto.

4.ORDERS that the Respondents, and each of them, by themselves, their servants, agents or otherwise be restrained from passing off the Respondents’ entertainment and/or club services as services provided by or under the licence of or otherwise associated with the Applicant.

5.ORDERS that the Respondents, and each of them, immediately deliver up on oath to the solicitors for the Applicant all stocks of promotional material, corporate stationary and other material bearing or referring to the Unauthorised Entertainment Event.

6.ORDERS that the Respondents pay the Applicant’s costs of the proceedings.

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

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1066 OF 2006

BETWEEN:

PLAYBOY ENTERPRISES INTERNATIONAL INC
Applicant

AND:

HIWIND PTY LIMITED T/AS MYLK LOUNGE
First Respondent

HAKKI MUSTAFA
Second Respondent

JUDGE:	WILCOX J
DATE:	17 AUGUST 2006
PLACE:	SYDNEY

REASONS FOR JUDGMENT

WILCOX J:

1. I note that there is no appearance today by either of the respondents. 

2. I am satisfied by the affidavit of Khajaque Kortian that the application and statement of claim were served in accordance with the orders I made on 20 July 2006.  The served documents drew attention to the fact that the applicant would seek summary judgment today, if no appearance was earlier filed.  No appearance has been filed and, as I say, nobody has attended the court on behalf of either respondent today.  The notice of intention to seek summary judgment was given more than seven days before today, as stipulated by me on 20 July 2006.

3. I propose to make orders in accordance with a document handed to me today by Mr G Drew on behalf of the applicant.  The proposed orders differ slightly from those sought in the application and statement of claim, but they do so in a manner which narrows the scope of relief, rather than the contrary.  Consequently, there can be no prejudice to the respondents by my permitting that variation. 

4. Mr Drew does not press for an account of profits.  Accordingly I will not make proposed order 6; but I make orders 1, 2, 3, 4, 5 and 7, as set out in the draft orders.

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

Associate:

Dated:       31 August 2006

Counsel for the Applicant:	Mr G Drew
Solicitor for the Applicant:	Spruson & Ferguson Lawyers
There was no appearance for the First and Second Respondents
Date of Hearing:	17 August 2006
Date of Judgment:	17 August 2006