SociÉTÉ Des Produits NestlÉ SA and Anor v Christian and Anor (No.6)
[2014] FCCA 2368
•17 October 2014
FEDERAL CIRCUIT COURT OF AUSTRALIA
| SOCIÉTÉ DES PRODUITS NESTLÉ SA & ANOR v CHRISTIAN & ANOR (No.6) | [2014] FCCA 2368 |
| Catchwords: PRACTICE AND PROCEDURE – Variation of orders – whether Court should vary injunction to permit the first respondent to use infringing mark on the first respondent’s website but only in relation to persons outside Australia who access the website. TRADE MARKS – Remedies – whether an order should be made requiring first respondent to cancel the registration of a domain name that contains a name that is deceptively similar to a registered trade mark – whether an order should be made requiring the first respondent to cancel the registration of a business name that includes a name that is deceptively similar to a registered trade mark – whether an injunction should be granted that restrains the first respondent from using marks in addition to the marks the first respondent was held to have used and which has been held to constitute an infringement of registered trade marks. |
| Legislation: Federal Circuit Court Rules 2001 (Cth), r.16.05(2) |
| Alexander v Tait-Jamison (1993) 28 IPR 103 Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450 Société des Produits Nestlé SA & Anor v Christian & Anor (No.3) [2014] FCCA 2024 Société des Produits Nestlé SA & Anor v Christian & Anor (No.4) [2014] FCCA 2025 Société des Produits Nestlé SA & Anor v Christian & Anor (No.5) [2014] FCCA 2234 Sports Warehouse Inc v Fry Consulting Pty Ltd (ACN 110 900 564) (2010) 87 IPR 300 |
First Applicant: Second Applicant: | SOCIÉTÉ DES PRODUITS NESTLÉ SA NESTLÉ AUSTRALIA LTD |
| First Respondent: | JAMES WILLIAM CHRISTIAN |
| Second Respondent: | MARK CHARLES CHRISTIAN |
| File Number: | SYG 3214 of 2013 |
| Judgment of: | Judge Manousaridis |
| Hearing date: | 9 October 2014 |
| Delivered at: | Sydney |
| Delivered on: | 17 October 2014 |
REPRESENTATION
| Counsel for the Applicants: | Mr S Burley SC Mr B Mee |
| Solicitors for the Applicants: First Respondent appeared by telephone. | Banki Haddock Fiora |
ORDERS
The first respondent’s application for an adjournment filed on 8 October 2014 is dismissed.
Pursuant to r.16.05(2) of the Federal Circuit Court Rules 2001 (Cth) (FCCR), order 2 of the orders made in these proceedings on 3 September 2014 (3 September orders) be varied by deleting the words “Subject to order 3, the” and substituting the word “The”.
Pursuant to r.16.05(2) of the FCCR, the 3 September orders be varied to read as follows:
(3A)By 31 October 2014 the first respondent take down from the website to which the domain name resolves, and take down from the Facebook account at any content which displays the sign “A-SASHI” and either of the First A-SASHI Device Mark and the Second A-SASHI Device Mark in relation to goods sold or offered for sale in Australia.
(3B)By 31 October 2014 the first respondent restrict the countries in which the Facebook page at can be viewed to block the page from viewers in Australia.
(3C)By 31 October 2014 the first respondent restrict the countries in which the website to which the domain name resolves can be viewed to block the site from IP addresses in Australia.
By 31 October 2014, the first respondent take all necessary and reasonable steps either to:
(a)cancel the registration of the domain name or
(b)vary the registration of the domain name to the extent necessary to prevent its use from resolving to the website to which the domain name resolves.
By 7 November 2014 the first respondent inform the second applicant in writing:
(a)that the steps required by orders 3A, 3B, and 3C of the 3 September orders, as varied by these orders, have been taken; and
(b)which of the steps required by order 4 of these orders has been taken and, if the step taken is the variation of the registration, the details of the variation of the registration that has been made.
By 14 November 2014 the first respondent deliver up to the second applicant, verified on oath, all goods in the possession, power, custody or control of the first respondent that are located in Australia to which any of the A-SASHI Word Mark, the First A-SASHI Device Mark, and the Second A-SASHI Device Mark has been applied.
The first respondent pay the costs of the applicants of the proceedings up to and including the date of these orders, including the costs of the application in these proceedings determined on 28 February 2014 for orders dispensing with the requirements for personal service and taking certain documents to have been served on the first respondent.
There be liberty to apply in relation to the implementation of any of these orders on such notice as the circumstances warrant.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT SYDNEY |
SYG 3214 of 2013
| SOCIÉTÉ DES PRODUITS NESTLÉ SA |
First Applicant
| NESTLÉ AUSTRALIA LTD (ACN 000 011 316) |
Second Applicant
And
| JAMES WILLIAM CHRISTIAN |
First Respondent
| MARK CHARLES CHRISTIAN |
Second Respondent
REASONS FOR JUDGMENT
Introduction
On 3 September 2014 I delivered reasons for judgment (substantive reasons) in which I held the first respondent, Mr Christian, had infringed trade marks owned by the second applicant.[1] I also granted a declaration and an injunction, and made some consequential orders. The applicants, however, made a number of claims I was not prepared to consider without first receiving further submissions from the parties. I ordered the parties file submissions in relation to those claims (outstanding matters).
[1] Société des Produits Nestlé SA & Anor v Christian & Anor (No.4) [2014] FCCA 2025
The applicants filed and served submissions on 17 September 2014. Mr Christian, on the other hand, has not filed submissions. Instead, on 16 September 2014, he filed an application in the Federal Court for leave to appeal against the orders I made on 3 September 2014. In addition, on 22 September 2014, Mr Christian filed in this Court an application in a case to stay the orders I made on 3 September 2014. I heard that application on 25 September 2014, and dismissed it on 26 September 2014.[2] Also on 25 September 2014, I extended the time by which Mr Christian could file submissions in relation to the outstanding matters, and appointed 4.15 pm on 9 October 2014 as the time and date on which I would hear submissions on those matters.
[2] Société des Produits Nestlé SA & Anor v Christian & Anor (No. 5) [2014] FCCA 2234
In the meantime, Mr Christian’s application for leave to appeal to the Federal Court came before Yates J on 2 October 2014. On that day, after hearing the parties, his Honour ordered that Mr Christian’s application for leave to appeal stand over for further hearing at a date and time to be appointed after I dispose of the outstanding matters.
On 8 October 2014 Mr Christian filed an application in a case in which he sought the following orders:
1.Adjournment to proceedings for 90 days for the purpose of allowing the First Respondent time to;
a)Raise funds necessary for securing legal representation; &
b)For counsel to prepare a cross-claim.
2.To stay Order 5 of the 3 September 2014 substantive hearing judgment pursuant to the terms within r.29.04 of the Federal Circuit Court Rules 2001 (Cth).
Although the second of the orders referred to in Mr Christian’s application in a case refers to the “substantive hearing judgment”, I understand Mr Christian intended that to be a reference to the orders I made on 3 September 2014 based on my reasons for judgment on a number of procedural issues (procedural reasons).[3] In these reasons I will refer to the orders I made in my substantive reasons as the “substantive orders”, and the orders I made in my procedural reasons as the “procedural orders”.
[3] Société des Produits Nestlé SA & Anor v Christian & Anor (No. 3) [2014] FCCA 2024
The hearing of the outstanding matters came before me on 9 October 2014, as did Mr Christian’s application for an adjournment and stay. Mr Christian applied for an adjournment of all proceedings for 90 days. I decided that I would hear that application and also submissions in relation to the outstanding matters. I indicated that if I were to be satisfied that Mr Christian had raised an arguable case for the adjournment he sought, I would only publish reasons for judgment that would state my reasons for holding Mr Christian had an arguable case for an adjournment, and allow the applicants an opportunity to file evidence against my making an order granting the 90 day adjournment Mr Christian seeks. If, on the other hand, I were not to be satisfied Mr Christian had an arguable case for the adjournment he sought, I would dismiss his application, and deliver judgment on Mr Christian’s application for an adjournment and stay, and on the outstanding matters.
Application for an adjournment and stay
As he states in his application in a case, Mr Christian seeks a 90 day adjournment to enable him to raise funds to obtain legal representation, and to enable counsel to draft a cross-claim. Mr Christian supports his application for the adjournment on the grounds set out in an affidavit he made on 8 October 2014, and in written submissions dated 9 October 2014.
Mr Christian’s submissions
In his affidavit, Mr Christian deposes to his current financial state. Mr Christian has assets of $400, and liabilities of $250,000. Mr Christian also deposes that, unless he is granted the adjournment he seeks, he will remain unrepresented, and will be unable to comply with order 5 of the procedural orders, and therefore be denied procedural fairness.[4] He deposes he needs time to raise funds to obtain the legal representation he needs in order to comply with order 5 of the procedural orders.[5]
[4] Affidavit of J.W. Christian, 08.10.14, [5]
[5] Affidavit of J.W. Christian, 08.10.14, [6]
In his written submissions, Mr Christian submits that unless he is granted the adjournment he seeks, he will be denied procedural fairness, and be exposed to a miscarriage of justice. He submits that had he been legally represented at the hearings before me on 2 and 3 September 2014, he would have had an opportunity to contest any orders based on the application of incorrect legal principles, and he would have submitted to the Court legal documents at an earlier time than he did that would have ensured a correct outcome according to law. Mr Christian repeated what he had deposed in his affidavit that without the adjournment he will be unable to comply with order 5 of the procedural orders.
Mr Christian also submitted there was no urgency in the Court finalising the outstanding matters, and in any event the necessity of finalising those matters “is outweighed by my right to receiving a fair hearing by observing a course of procedural fairness”.[6] Mr Christian also referred to his suffering from depression and sleep deprivation because of the need “to read non-stop in an attempt to try and file Court documents”.[7]
[6] First Respondent’s Outline of Submissions 9 October 2014 Hearing, [8]
[7] First Respondent’s Outline of Submissions 9 October 2014 Hearing, [9]
Applicants’ submissions
The applicants submit I should not grant the adjournment Mr Christian seeks. Counsel for the applicants referred me to what I said in my procedural reasons, and in particular, what I said in paragraph 55 of those reasons. In short, counsel submitted that Mr Christian has had ample opportunity to obtain legal representation.
Has Mr Christian demonstrated an arguable case for an adjournment or stay?
When determining whether to grant an adjournment or a stay of a hearing, a court identifies and balances two things. The first is the benefit the applicant for the adjournment or stay claims he or she will gain if the adjournment or stay he or she seeks is granted, or the detriment the applicant for the adjournment or stay will suffer if the adjournment or stay is not granted. The second is the detriment the party resisting the adjournment or stay will suffer if the adjournment or stay is granted, or the benefit such party will gain if the adjournment or stay is refused. If an applicant for an adjournment or stay cannot demonstrate that he or she has some prospect of obtaining a benefit if the adjournment or stay is granted, there would be no reason for a court to grant the adjournment or stay.
The benefit Mr Christian submits he will obtain if I grant the adjournment or stay is that he will have the opportunity to raise funds to obtain legal representation, and that way he will be in a position to better protect his interests. The difficulty, however, with Mr Christian’s submission is that he has placed nothing before the Court which indicates he has any prospect of being able to raise funds to obtain legal representation. His affidavit shows he has net liabilities of $249,600. His only stated source of income is a fortnightly Newstart Allowance of $580. He has put nothing before the Court about the attempts he has made to obtain funds, or from where he expects he will obtain funds. He has put nothing before the Court to indicate the amount of funds he believes he needs to obtain legal representation.
For these reasons, Mr Christian has not demonstrated an arguable case for the adjournment and stay he seeks. I propose, therefore, to dismiss Mr Christian’s application for an adjournment and stay. That, then, leads me to consider the outstanding matters.
The outstanding matters
The outstanding matters are identified in paragraph 109 of my substantive reasons for judgment. There is an additional matter, however, that I am required to determine; and that relates to order 3 of the substantive orders. I will first deal with order 3.
Order 3 of the substantive orders
Order 3 of the substantive orders is as follows:
By 10 September 2014 the first respondent take down from the websites to which the domain name and the domain name resolve, and take down from the Facebook account at any content which displays the sign “A-SASHI” and either of the First A-SASHI Device Mark and the Second A-SASHI Device Mark.
In an affidavit filed in support of his application for leave to appeal to the Federal Court, Mr Christian submitted that order 3 impacts on Mr Christian’s ability to conduct his A-SASHI business in the United States of America. The reason is that order 3 prevents Mr Christian from using the A-SASHI name and logo on websites to which the domain names and and the Facebook account at resolve. These are websites that may be accessed by consumers outside Australia and order 3, as it presently stands, prevents Mr Christian from using these websites to promote the A-SASHI business outside Australia, and in particular in the United States of America.
In the same affidavit, however, Mr Christian submitted it was possible for consumers outside Australia to access the websites but not consumers from Australia, and described how that could be done:[8]
The A-Sashi Vitamins Facebook page is on a global social media platform and the page is used in a global market to promote products worldwide, instead of removing the Facebook page, I can simply restrict the countries in which the page can be viewed, which would hide the page from viewers in Australia, and leave the page visible to the 30,000 A-Sashi Facebook fans located in the USA. The A-Sashi Vitamins primary domain name is a top-level domain, not specific to a country & used as my global web address to sell products worldwide and the online store can simply be reset to restrict purchases from Australia.
[8] Affidavit of J. Robb, 08.10.14, annexure B, [9]
The applicants have responded to Mr Christian’s concerns by proposing that I amend order 3 in the manner that will enable persons outside Australia, but not inside Australia, to access these websites. The applicant submits I have the power to amend the order under r.16.05(2) of the Federal Circuit Court Rules 2001 (Cth) (FCCR) which relevantly provides:
The Court may vary or set aside its judgment or order after it has been entered if:
. . .
(c) the order is interlocutory; or
(d) the order is an injunction . . . or
. . .
(f) the party in whose favour the order is made consents.
The applicants propose that order 3 be replaced with the following orders: [9]
3A.By [day] October 2014 the first respondent take down from the website to which the domain name resolves, and take down from the Facebook account at any content which displays the sign “A-SASHI” and either of the First A-SASHI Device Mark and the Second A-SASHI Device Mark in relation to goods sold or offered for sale in Australia.
3B.By [day] October 2014 the first respondent restrict the countries in which the Facebook page at can be viewed to block the page from viewers in Australia.
3C.By [day] October 2014 the first respondent restrict the countries in which the website to which the domain name resolves can be viewed to block the site from IP addresses in Australia.
[9] Draft short minutes of order filed in Court
Mr Christian has not made any submission in relation to the proposed amendments to order 3. Mr Christian, as I understood him, feels the proposed amendments amount to an ambush of him by the applicants, and that he does not understand what is being proposed.
The amendments proposed by the applicants directly address and, in my opinion, remove the difficulty Mr Christian identified with the operation of order 3. The proposed amended orders, if made, will enable Mr Christian to use the A-SASHI name and logo on the Facebook page at and on the web site to which the domain name resolves, provided Mr Christian puts in place restrictions which prevent persons from within Australia accessing those websites. This way, persons outside Australia may be able to access the websites, and Mr Christian will be able to conduct his A-SASHI business outside Australia by use of the websites.
I propose, therefore, to amend order 3 in the manner suggested by the applicants.
Cancellation of domain name type="1"> In the draft short minutes of order to which I refer in my substantive reasons, the applicants proposed an order that Mr Christian take all necessary and reasonable steps to cancel the registration of the Facebook account at and the registration of the domain names and Provided orders to the effect of the proposed amendments to order 3 are made, the applicants do not press for orders for the cancellation of the Facebook account or for the cancellation of the registration of the domain name The applicants, however, press for an order compelling Mr Christian to cancel the registration of the domain name > When connected to the Internet, a computer is assigned a unique address – an IP address[10] - which is represented by a unique ordered set of numbers. IP addresses are assigned to computers according to a set of rules that are administered by the Internet Corporation for Assigned Names and Numbers (ICANN) and other organisations known as “registry operators” or “sponsors”.[11] In addition to the assignment of an IP address to a computer, there may also be assigned to that computer a string of symbols that stands as an alias for the IP address. The string of symbols that may be so assigned is known as a “domain name”. [10] The letters “IP” stand for “Internet Protocol”. [11] accessed 13 October 2014.
The system by which domain names are assigned to IP addresses of computers is known as the “Domain Name System” (DNS), and has been defined as follows:[12]
The Domain Name System (DNS) is a hierarchical, distributed method of organizing the name space of the Internet. The DNS administratively groups hosts into a hierarchy of authority that allows addressing and other information to be widely distributed and maintained. A big advantage to the DNS is that using it eliminates dependence on a centrally-maintained file that maps host names to addresses.
[12] 1996 InterNIC For-Your-Information document FY13, quoted by E and P Rony The Domain Name Handbook R & D Books, 1998, page 38.
The DNS has been more simply described by ICANN as follows:[13]
The Domain Name System (DNS) helps users to find their way around the Internet. Every computer on the Internet has a unique address – just like a telephone number – which is a rather complicated string of numbers. It is called its “IP address” (IP stands for “Internet Protocol”). IP Addresses are hard to remember. The DNS makes using the Internet easier by allowing a familiar string of letters (the “domain name”) to be used instead of the arcane IP address. So instead of typing 207.151.159.3, you can type It is a “mnemonic” device that makes addresses easier to remember.
[13] accessed on 13 October 2014.
The ability to register a domain name with a registry operator or sponsor that is uniquely associated with a computer provides an obvious opportunity to a business that wishes to promote or sell its goods or services over the Internet to choose a domain name that distinguishes its goods or services from those of other businesses. And it is this potential that gives rise to the possibility of a person infringing a registered trademark by registering a domain name. For that person may choose as a domain name a name that is substantially identical with, or deceptively similar to, a registered trademark.
A person’s registering as a domain name a name that is substantially identical with, or deceptively similar to, a registered trade mark, will not constitute an infringement of that trade mark unless the person uses the domain name as a sign to distinguish that person’s goods or services from those of another trader. A person will use a domain name for that purpose if the domain name is used as a sign of that person’s online sales service. In “the context of online services, the public is likely to understand a domain name consisting of the trade mark (or something very like it) as a sign for the online services identified by the trade mark as available at the webpage to which it carries the internet user”.[14]
[14] Sports Warehouse Inc v Fry Consulting Pty Ltd (ACN 110 900 564) (2010) 87 IPR 300 at [153] (Kenny J)
The findings at paragraphs 23 and 24 of my substantive reasons satisfy me that Mr Christian did intend to, and did use the domain name as a sign of his online sales service. But is that, now, a sufficient ground for ordering that Mr Christian cancel the registration of the domain name, given that, as I understand it, Mr Christian has complied with order 3 and has removed from his website all reference to “A-SASHI”?
If order 3 were to remain as I had originally framed it, the domain name could not be used “as a sign for the online services identified by” the A-SASHI name. That is so because order 3 required Mr Christian to remove from the website to which the domain name resolved (A-SASHI website) all references to A-SASHI and, by necessary implication, would prevent him from reinstating on the website any reference to the A-SASHI name or logo. Because, however, the proposed amendment to order 3 will enable Mr Christian to use the A-SASHI name and logo in relation to persons outside Australia who visit the website, and if Mr Christian uses the A-SASHI name and logo on the website, the continued availability of the domain name as currently registered would constitute the use in Australia of the name “A-SASHI”.
The next question is whether, in order to prevent the use of the domain name to resolve to the A-SASHI website, it is necessary to require Mr Christian to cancel the registration of the domain name In my opinion, it is not. Although no evidence has been led on the matter, I assume that it would be open to Mr Christian to associate the domain name to a website that is different from the A-SASHI website. If that is the case, it should remain open to Mr Christian to keep that domain name.
Accordingly, I propose to frame an order which requires Mr Christian either to cancel the domain name or to vary the registration in a way that its use cannot resolve to the A-SASHI website.
Business name
The applicants seek an order that Mr Christian take all necessary and reasonable steps to cancel the Australian Registered Business Name “A-SASHI VITAMINS”. They submit that the business name was used as a trade mark. The applicants submit it has been held in a number of cases that use of a mark in a business name may constitute use of that mark as a trade mark, and that orders for the cancellation or transfer of business names that incorporate infringing trade marks are frequently made where trade mark infringement has been found. The applicants further submit it is difficult to see how the “A-SASHI VITAMINS” business name could be used other than in an infringing way.
The applicants rely on three authorities. The first is the decision of Hearing Officer I Thompson in Alexander v Tait-Jamison.[15] The issue in that case was whether the opponent to the registration of a trade mark had used the same or substantially the same mark before the application for registration was made. One asserted use of the trade mark was as a business name on an invoice. The applicant submitted that did not constitute a use of the mark.
[15] (1993) 28 IPR 103
The applicant apparently submitted that a mark could either function as a business name or a trade mark but not both. That submission was rejected.[16]
If a word is either distinctive or capable of becoming distinctive in terms of the Act, I can see no reason why that word cannot refer to a trading style under which business is carried on and serve so as to indicate an origin in trade of goods or services. . . . However, if the evidence establishes that the word has only been used as a business name and does not function as a trade mark, I would readily agree with the applicant that such use would fatally damage a claim to prior proprietorship.
[16] (1993) 28 IPR 103 at page 109
I do not read this passage, or anything else decided in Alexander v Tait-Jamison, as holding that the mere registration as a business name a name that is substantially identical with, or deceptively similar to, a registered trade mark constitutes a use of the name as a trade mark, and therefore as an infringement of the registered trade mark. The issue in Alexander v Tait-Jamison was whether the use of the business name on an invoice constituted the use of the name as a trade mark. Nor is there anything in Hearing Officer Thompson’s reasons that suggests that the carrying on of a business under the business name that is identical with, or deceptively similar to, a registered trade mark renders the registration of the business name as the use of the name as a trade mark.
The second authority to which the applicants referred is the decision of the Full Federal Court in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co.[17] In that case, the owner of a service mark named “Caterpillar” claimed that the use of the words “Willoughby’s Caterpillar Loader Hire Service” constituted an infringement of the service mark. The words “Willoughby’s Caterpillar Loader Hire Service” were registered as a business name. The primary judge held the service mark was infringed, and made a number of orders, including an order that the word “Caterpillar” be removed from the business name “Willoughby’s Caterpillar Loader Hire Service”.
[17] (1983) 48 ALR 511 (Franki, Lockhart, and Neaves JJ)
On appeal, the substantial issue was whether the appellant’s use of “Willoughby’s Caterpillar Loader Hire Service” was to describe the origin of the machinery that it used in its business rather than to designate the origin of the services it provided. That issue was decided against the appellant. No judge in the Full Federal Court considered the appropriateness or otherwise of the primary judge’s order requiring the removal of the infringing name from the business name. Apart from the general injunction, the Full Federal Court vacated all other orders the primary judge made, including the order in relation to the change in the business name.[18]
[18] (1983) 48 ALR 511 at pages 517 (Franki J), 528 (Lockhart J), and 536 (Neaves J)
The third case on which the applicants rely is the decision of Reeves J in Mantra Group Pty Ltd v Tailly Pty Ltd (No.2).[19] The applicants refer to that case as an example of the cancellation of a business name. In that case, however, although the owner of the trade mark claimed an order for the cancellation of the business name,[20] it did so in relation to claims it brought under the Trade Practices Act 1974 (Cth). The trade mark owner sought no such relief in relation to its claims based on trade mark infringement.[21]
[19] (2010) 183 FCR 450
[20] (2010) 183 FCR 450 at [144]
[21] (2010) 183 FCR 450 at [150]
In my opinion, the continued registration of the business name “A-SASHI VITAMINS” does not by itself constitute the use of the name “A-SASHI” as a trade mark. For that reason, I do not propose to grant an order requiring Mr Christian to cancel the business name.
The applicants further submit that an order should be made compelling Mr Christian to cancel the business name “A-SASHI VITAMINS” as an aid to injunctive relief. They submit that not to grant such an order would equip Mr Christian with an instrument of fraud, and create a temptation to breach the injunction I have granted against infringement. I disagree. There is already in place an injunction that prevents Mr Christian from using the “A-SASHI” name and logos in connection with the supply of supplements and therapeutic products. That injunction should remove any incentive Mr Christian may otherwise have to use the “A-SASHI” name in Australia in connection with any classes of goods for which the MUSASHI mark is registered.
“General injunction”
The applicants also seek an injunction restraining Mr Christian from using the MUSASHI Registered Marks or any mark or sign that is substantially identical to or deceptively similar to the MUSASHI Registered Marks. The applicants submit that I should grant such an injunction because there is some basis for thinking that sometime in the future Mr Christian will use a mark that is identical or deceptively similar to the MUSASHI Registered Marks.
In my opinion, there is no basis in the evidence before me that would lead me to think Mr Christian will use such a mark. The only name and mark Mr Christian used is the A-SASHI name and mark; and I made no finding to the effect that Mr Christian intentionally fashioned the A-SASHI name and logos for them to be deceptively similar to the MUSASHI name and logo. Accordingly, I do not propose to grant the “general injunction” sought by the claimants.
Delivery up of goods
The applicants accept that any order for the delivery up of goods to which there is attached the A-SASHI name and logo should be restricted to goods that are in Australia. Accordingly, I propose to make an order for the delivery up of goods to which any of the A-SASHI name or logos have been applied that are located in Australia, and Mr Christian verify by affidavit that there are no such goods in Australia, if that is the case, or, if there are such goods in Australia, and he has delivered them up, that there are no such other goods in Australia.
Costs
There is no reason why costs should not follow the event. Accordingly, I propose to order that Mr Christian pay the costs of the proceedings, including the costs of the application for orders dispensing with the requirements for personal service.
I certify that the preceding forty-six (46) paragraphs are a true copy of the reasons for judgment of Judge Manousaridis
Associate:
Date: 20 October 2014
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