Skill Tiling Pty Ltd v Quality Skill Tiling Pty Ltd

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FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA

(DIVISION 2)

Skill Tiling Pty Ltd v Quality Skill Tiling Pty Ltd [2022] FedCFamC2G 177

File number(s): MLG 3126 of 2021
Judgment of: JUDGE FORBES
Date of judgment: 16 March 2022
Catchwords:

PRACTICE AND PROCEDURE – application for default judgment under r 13.05 of the Federal Circuit and Family Court of Australia (Division 2)(General Federal Law) Rules 2021 – default by respondents - where failure of respondents to engage with proceeding – whether applicant entitled to relief on statement of claim – deemed admissions by reason of default - whether Court has power to grant relief sought

TRADE MARKS -  infringement of applicant’s registered trade mark – declaration of infringement – permanent injunction restraining further infringement – costs

Legislation:

Competition and Consumer Act 2010

Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Act 2021 (Cth)

Trade Marks Act 1995  
Cases cited: Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2006] FCA 1427
Australian Competition and Consumer Commission v MSY Technology Pty Ltd [2012] FCAFC 56
Engineered Thermal Systems Pty Ltd v Salmon, In the matter of Salmon and Speck Pty Ltd (In. Liq) [2012] FCA 1159
Ex parte McNally (1999) 198 CLR 511
Fair Work Ombudsman v Sails Waterfront Bar & Grill Pty Ltd [2021] FCCA 1511
Geneva laboratories Ltd v Prestige Premium Deals Pty Ltd (No.4) [2016] FCA 867
Maggie Sottero Designs LLC v Loner [2018] FCA 1151
Speedo Holdings BV v Evans (No.2) [2011] FCA 1227
Toll Transport Pty Ltd & Ors v Erikson [2017] FCCA 3120
Division: Division 2 General Federal Law
Number of paragraphs: 43
Date of hearing: 11 March 2022
Place: Melbourne
Counsel for the Applicant: Mr Thompson
Solicitor for the Applicant: Furman+Furman
The Respondent: No appearance

ORDERS

MLG 3126 of 2021

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)

IN THE MATTER OF SKILL TILING PTY LTD V QUALITY SKILL TILING PTY LTD & ANOR
BETWEEN: SKILL TILING PTY LTD
Applicant
AND:

QUALITY SKILL TILING PTY LTD
First Respondent

NAZARI KHADIM
Second Respondent

ORDER MADE BY:

JUDGE FORBES

DATE OF ORDER:

11 MARCH 2022

PURSUANT TO SECTION 141(1) OF THE FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA ACT 2021 (CTH) (FCFCOAA) AND UPON ADMISSIONS THAT THE FIRST AND SECOND RESPONDENT ARE TAKEN TO HAVE MADE, CONSEQUENT UPON DEFAULT OF THEIR NON-COMPLIANCE PURSUANT TO RULE 13.04(2) OF THE RULES, THE COURT DECLARES PURSUANT TO RULE 13.05(2)(c) THAT:

1.The First Respondent has infringed the Applicant’s registered trade mark number 2114771 (Applicant’s Registered Mark) under s. 120(1) of the Trade Marks Act 1995 (Cth) (TMA).

2.The Second Respondent is liable for the First Respondent’s infringement under the TMA as a joint tortfeasor with the First Respondent.

THE COURT ORDERS PURSUANT TO RULE 13.05(2)(c) THAT:

3.Pursuant to s 126(1)(a) of the TMA that the Respondents be permanently restrained whether by themselves, their servants, agents or howsoever from continuing to infringe the Applicant’s Registered Mark.

4.The Respondents jointly and severally pay the…

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Details
Case
[2022] FedCFamC2G 177
Decision Date

CaseChat Overview and Summary

Skill Tiling Pty Ltd, the plaintiff, filed a claim against Quality Skill Tiling Pty Ltd and Mr Nazari, the defendants, in the Federal Circuit and Family Court of Australia. The plaintiff alleged that the defendants had infringed on its registered trademark, engaged in misleading and deceptive conduct under the Australian Consumer Law, and committed passing off. The plaintiff claimed damages, injunctive relief, and other orders. The defendants failed to engage in the proceedings or respond to the plaintiff’s claims, leading the plaintiff to apply for default judgment.

The primary legal issues the court had to address were whether the defendants' use of their trading name and logo infringed upon the plaintiff's registered trademark, whether their actions constituted misleading or deceptive conduct, and if they engaged in passing off. The court also had to determine whether the plaintiff was entitled to default judgment due to the defendants' lack of participation in the proceedings.

The court found that the defendants' use of their trading name and logo was substantially identical or deceptively similar to the plaintiff's registered trademark, thereby constituting trademark infringement under section 120(1) of the Trade Marks Act. Additionally, the court determined that the defendants' actions misrepresented the source of their tiling services, leading to misleading and deceptive conduct under sections 18 and 29(1)(g) of the Australian Consumer Law. The court also found that the defendants engaged in passing off by using a similar trading name and logo, leading to confusion among customers. Given the defendants' failure to respond or participate in the proceedings, the court granted the plaintiff's application for default judgment.

The court ordered that Quality Skill Tiling Pty Ltd and Mr Nazari pay the plaintiff's costs of and incidental to the proceeding, amounting to $9,798, including disbursements. The court also granted the plaintiff the relief it sought, including declarations, injunctions, and damages.

Orders

Orders of the court

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Background

Background to the litigation

These are the reasons for making those orders.BACKGROUND The applicant, Skill Tiling has since 20 February 2007 been a corporation registered in Victoria. Skill Tiling is the registered owner under the Trade Marks Act of trademark registration number 2114771 (the ST Registered Mark). The precise form of the registered mark is reproduced at paragraph 4 of the applicant’s statement of claim filed on 6 December 2021. In its statement of claim filed in this proceeding, the applicant states that it has since 2007 been carrying on a business in Victoria of providing tiling services to the trade and general public under and by reference to the distinctive trading name and style “Skill Tiling” (the ST Trading Name) and the ST Registered Mark. The applicant also asserts in its statement of claim that it has developed a good and valuable reputation and substantial goodwill amongst trade customers and consumers in Australia in relation to the tiling services represented and symbolised by the ST Trading Name and the ST Registered Mark. The applicant alleges that the first respondent, Quality Skill Tiling, has since at least 2017 been providing tiling services to the trade and public in Victoria under and by reference to the trading name “Quality Skill Tiling” (the QST Trading Name) and a common law trademark (the QST Name and Logo), the form of which is reproduced at paragraph 8 of the statement of claim. The applicant alleges that the QST Trading Name and the QST Name and logo are marks which are substantially identical or deceptively similar to the ST Registered Mark and that by using those marks as trademarks in respect of tiling services, QST has thereby infringed the ST Registered Mark under section 120(1) of the Trade Marks Act. Moreover, the applicant also alleges that QST has misrepresented to the trade and public that its tiling services are or are associated with the tiling services supplied by the applicant and has thereby contravened sections 18 and 29(1)(g) of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010) and engaged in passing off. The applicant also alleges that the second respondent, Mr Nazari, is a common law joint tortfeasor with QST in relation to its impugned conduct. In making that allegation at paragraph 10 of the statement of claim, the applicant relies upon the facts pleaded in paragraph 3 of the statement of claim, namely that Mr Nazari was the sole director, secretary and sole shareholder of QST, was aware of QST’s conduct, was instrumental in its actions, was in effective control of the QST business and was its guiding mind. By reason of the above, Skill Tiling seeks various forms of relief against the two respondents including declarations, injunctions restraining them from engaging in the infringing conduct, damages or alternatively an account of profit and other orders. The respondents have not engaged in the proceeding and have not taken any step to respond to or defend it. I am satisfied on the evidence filed in support of this application that the respondents have been served with relevant documents including the statement of claim and the application for default judgement. The respondents have not filed any documents in the proceeding and they have not appeared in any case management hearing in the proceeding. The applicants accordingly sought an order for default judgement against the respondents.HISTORY OF THIS PROCEEDING

Evidence

Evidence Before The Court

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Decision

Reasons for decision

At the hearing, counsel for the applicant submitted that I should order costs fixed in the sum of $9,798 (including disbursements) calculated in accordance with Schedule 2 of the Rules. Counsel submitted to my chambers immediately after the hearing a schedule of the costs sought and having considered that document I am satisfied that it is appropriate to make the costs order. I am satisfied that the costs incurred by the applicant are fair and reasonable and proportionate to the nature and complexity of the matter. I will make an order that the respondent’s jointly and severally pay the applicants costs of and incidental to the proceeding.CONCLUSION AND ORDERS For the reasons explained above, the respondents are in default for the purposes of the Rules, the Court has jurisdiction in respect of the applicant’s claims and I am satisfied that the applicant is entitled to the relief it seeks. The respondents have had an opportunity to remedy the default but have totally ignored this proceeding and have failed to engage with it. In all the circumstances of the case, I am satisfied that an order should be made pursuant to rule 13.05(2)(c) of the Rules giving judgement against the respondents for the relief claimed in its application. I have considered the draft form of orders proposed by the applicant. The orders I have made depart slightly from them but conform with the reasons set out above.

Ratio Decidendi

Legal Principle Established

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