Rewaco Pty Ltd v Touroz Trikes Pty Ltd

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FEDERAL COURT OF AUSTRALIA

Rewaco Pty Ltd v Touroz Trikes Pty Ltd [2011] FCA 754

Citation: Rewaco Pty Ltd v Touroz Trikes Pty Ltd [2011] FCA 754
Parties: REWACO PTY LTD (ACN 101 553 351) v TOUROZ TRIKES PTY LTD (ACN 134 784 491), MARTINUS MARIA KROPMAN, ANNA MARIA LAMBERTA KROPMAN, REWACO SPEZIALFAHRZEUGE GMBH and HARALD SCHMITZ
File number: QUD 137 of 2011
Judge: COLLIER J
Date of judgment: 5 July 2011
Catchwords: TRADE MARKS – Injunctions – application for interlocutory relief in respect of alleged trade mark infringement – goods seized by Customs – whether order should be made restraining CEO of Customs from releasing goods – whether goods should be released following removal of all references to trade mark – principles in Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 – usual undertaking as to damages by applicant for interlocutory relief – fourth and fifth respondents in Germany and not served – whether orders should be made ex parte against fourth and fifth respondents
Legislation: Telecommunications Act 1997 (Cth)
The Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth)) s 18
Trade Marks Act 1995 (Cth) ss 20, 120(1),126(a), 133, 137
Federal Court Rules O 4 r 14(2)
Cases cited: Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 applied
Chanel Limited v Kim [2007] FCA 2076 cited
In the application of the ACT Civil Administrative Tribunal v Abbey and Mack [2010] ACTSC 140 cited
Jemella Australia Pty Ltd v Bouobeid [2009] FCA 1567 cited
Kerridge v Foley (1968) 70 SR (NSW) 251 cited
Kirklees Borough Council v Wickes Building Supplies Ltd [1991] 4 All ER 240 cited
National Australia Bank Ltd v Bond Brewing Holdings Ltd (1990) 169 CLR 271 cited
The City Finance Company Ltd v Matthew Harvey & Company Ltd [1915] 21 CLR 55 cited
Thomas A Edison Ltd v Bullock (1912) 15 CLR 679 cited
Westrac Equipment Pty Ltd v Gendredge (Australia) Pty Ltd [2002] WASC 215 cited
Date of hearing: 4 July 2011
Place: Brisbane
Division: GENERAL DIVISION
Category: Catchwords
Number of paragraphs: 45
Counsel for the Applicant: The Applicant appeared in person
Solicitor for the First, Second and Third Respondents: Mr L Fox of Blue Fox Legal
Solicitor for the Fourth, and Fifth Respondents: There was no appearance by the Fourth and Fifth Respondents

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION

QUD 137 of 2011
BETWEEN:

REWACO PTY LTD (ACN 101 553 351)
Applicant
AND:

TOUROZ TRIKES PTY LTD (ACN 134 784 491)
First Respondent

MARTINUS MARIA KROPMAN
Second Respondent

ANNA MARIA LAMBERTA KROPMAN
Third Respondent

REWACO SPEZIALFAHRZEUGE GMBH
Fourth Respondent

HARALD SCHMITZ
Fifth Respondent

JUDGE:

COLLIER J

DATE OF ORDER:

5 JULY 2011

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:

1.On the provision of the usual undertakings as to damages by the applicant, until further order:

(a)Each of the first, second and third respondents is restrained, whether by itself, its agents or howsoever otherwise, from importing, promoting, distributing, advertising, offering for sale,…

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Details
Case
[2011] FCA 754
Decision Date

CaseChat Overview and Summary

Rewaco Pty Ltd sought interlocutory relief against Touroz Trikes Pty Ltd in relation to alleged trade mark infringement. Rewaco lodged a trade mark registration application for the mark “Rewaco” on 16 May 2003, which was registered on 8 January 2004. Rewaco manufactures, distributes and sells trikes in Australia. On 3 May 2011, Customs seized a consignment of four trikes imported by Touroz Trikes Pty Ltd, which infringed the “Rewaco” trade mark. On 23 May 2011, Customs seized a further consignment of eight trikes also imported by Touroz Trikes Pty Ltd, which infringed the “Rewaco” trade mark. Rewaco sought interlocutory relief in the form of an injunction to prevent Touroz Trikes Pty Ltd from importing, promoting, distributing, advertising, offering for sale, communicating, describing, displaying or otherwise using the mark “Rewaco” in relation to trikes, and an order to release the goods seized by Customs on certain conditions.

The court had to decide whether an order should be made restraining the CEO of Customs from releasing goods to the respondents and whether the goods should be released following the removal of all references to the trade mark. The court also had to consider whether orders should be made ex parte against the fourth and fifth respondents who were in Germany and not served. The court considered the principles in Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 and held that the usual undertaking as to damages by the applicant for interlocutory relief should be provided until trial or further order. The court held that the goods seized by Customs should be released forthwith to Touroz Trikes Pty Ltd on the conditions that all instruments, documentation and accessories bearing the mark “Rewaco” are removed and delivered to the Court, and that Touroz Trikes Pty Ltd will maintain all appropriate records in relation to the sale of trikes.

The court made the following orders: (1) each of the first, second and third respondents is restrained from using the mark “Rewaco” in relation to trikes or otherwise infringing the trade mark; (2) the goods seized by Customs be released forthwith to Touroz Trikes Pty Ltd on the conditions set out above; (3) the application for interlocutory relief so far as concerns the fourth and fifth respondents be adjourned to the next directions hearing; (4) costs be reserved; and (5) there be liberty to apply on three days notice.

Orders

Orders of the court

1. On the provision of the usual undertakings as to damages by the applicant, until further order:

(a) Each of the first, second and third respondents is restrained, whether by itself, its agents or howsoever otherwise, from importing, promoting, distributing, advertising, offering for sale, communicating, describing, displaying or otherwise using the mark “Rewaco” in Australia in any way in relation to three wheel motorcycles (“trikes”) or otherwise infringing in Australia the registered trade mark number 954114, which is the word “Rewaco”; and

(b) Each of the first, second and third respondents is restrained, whether by itself, its agents or howsoever otherwise, from using a carriage service as defined in the Telecommunications Act 1997 (Cth) to communicate, publish, promote, inter-link websites, distribute, advertise, offer for sale, display or otherwise use the mark “Rewaco” in Australia in any way in relation to trikes or otherwise infringing in Australia the registered trade mark number 954114, which is the word “Rewaco”.

2. The goods seized by Customs under s 133 of the Trade Marks Act 1995 (Cth) and referred to in the Notices of Seizure to Objector dated 3 May 2011 (being Customs file No. 2011/013923-01) and 23 May 2011 (being Customs file No. 2011/041764-01) be released forthwith to the first respondent on the following conditions:

(a) The first respondent will remove and deliver to the Court:

(i) all instruments (including but not limited to the speedometer, tachometer, battery gauge and temperature gauge) bearing the mark “Rewaco” on the trikes seized by Customs;

(ii) all documentation to which the mark “Rewaco” has been applied in relation to the trikes seized by Customs;

(iii) any other accessory or document to which the mark “Rewaco” has been applied that has been seized by Customs.

(b) The first respondent will maintain all appropriate records in relation to the sale of trikes by the first respondent.

3. The application for interlocutory relief so far as concerns the fourth and fifth respondents be adjourned to the next directions hearing.

4. Costs be reserved.

5. There be liberty to apply on three (3) days notice.

Note:

Background

Background to the litigation

At the hearing Mr Fox also informed the Court that he had been instructed to offer undertakings until trial or further order in respect of use of the trade mark, material and instruments associated with the trikes currently held by Customs bearing the mark “Rewaco”, including an undertaking as to damages. After an adjournment to enable Mr Subloo to consider these undertakings, Mr Subloo informed me that the parties had been unable to reach agreement in respect of the undertakings offered by the first respondent.Background The background to the proceedings is summarised in the affidavit of Mr Subloo sworn 8 June 2011 and also in oral evidence given during the hearing yesterday by the parties. Relevant facts as claimed by Mr Subloo are as follows:·The applicant is a family business, based in Cairns, which is in the business of manufacturing, distributing and selling trikes in Australia.·On 16 May 2003 Mr Subloo lodged on behalf of the applicant the trade mark registration application for the mark “Rewaco”. On 8 January 2004 he was notified of the registration of the trade mark the subject of these proceedings.·On 3 March 2010 Mr Subloo sent a letter by fax to the fourth respondent warning it of the applicant’s registered trade mark and to cease and desist use of the trade mark. He received no reply.·On 4 March 2010 Mr Subloo saw several pictures on the website with the trade mark on them. (I note there is no snapshot of the website at that date in evidence before me.)·On 5 March 2010 Mr Subloo sent a letter to the first respondent by fax and email warning them of the existence of the registered trade mark and to cease and desist use of the trade mark. Several more warnings followed. There was no reply or action taken by Touroz Trikes Pty Ltd.·On 3 May 2011 Mr Subloo received an email from Customs Officer Greg Smith that Customs had located, detained and seized a consignment of four trikes infringing the trade mark, imported by Touroz Trikes Pty Ltd. On 10 May Mr Subloo requested Ms Olivia Doggen to visit the area where the seized trikes were located and take photographs of them. These trikes were accompanied by keyrings bearing the trade mark, as well as documentary material including brochures and owners manuals also bearing the trade mark.·On 8 May 2011 Mr Subloo wrote to Touroz Trikes Pty Ltd regarding the seized shipment and stated that they had infringed the trade mark, and that the applicant did not authorise or permit the first respondent to use the trade mark.·On 13 May 2011 Mr Subloo received an email from the legal representative of the first respondent, Mr Luke Fox of Blue Fox Legal, denying inter alia that the importation of trikes manufactured by the fourth respondent infringed the applicant’s trade mark.·On 23 May 2011 Mr Subloo received an email from Mr Smith that Customs had located, detained and seized a second consignment of eight trikes infringing the trade mark, imported by Touroz Trikes Pty Ltd. On 23 May 2011 Mr Subloo asked Mr Gordon Subloo, another director of the applicant to inspect the second consignment. Mr Gordon Subloo advised that he had detected 40 concealments of the trade mark on the trikes seized. There is evidence before the Court that the trade mark was visible on the trikes, in particular on the instrument panel of each trike.·On 24 May 2011 Mr Subloo saw photographs of goods seized in the second consignment and saw a sophisticated concealment method constructed by the shipper to conceal the trade mark from the detection of Customs – specifically the use of black vinyl to cover the trade mark on the instrument panel of the vehicles. On the same date Mr Subloo wrote to Mr Fox advising that the second consignment had also infringed the trade mark.·On 20 March 2010, 10 April 2010 and 11 May 2011 Mr Subloo saw promotional articles and statements describing trikes imported by the first respondent as “Rewaco” trikes. On 18 August 2010 Mr Subloo saw a statement published on an internet chat forum by a person, suggesting that the applicant “ripped off” the REWACO design.·On 8 June 2011 Mr Subloo saw the website which contained a statement infringing the trade mark.

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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