Star Car Wash CafÉ Holdings Pty Ltd v P&W Group Pty Ltd

[2015] FCCA 1029

FEDERAL CIRCUIT COURT OF AUSTRALIA

STAR CAR WASH CAFÉ HOLDINGS PTY LTD v P&W GROUP PTY LTD [2015] FCCA 1029

Catchwords:
CONSUMER LAW

TRADEMARKS

DEFAULT JUDGMENT – Whether the Court has power to give judgment against the respondent – whether respondent is in default in failing to comply with orders made by the Court – default judgment entered for applicant.

Legislation:
Federal Circuit Court Rules 2001 (Cth) r.13.03B
Competition and Consumer Act 2010 (Cth)
Trade Marks Act 1995 (Cth) s.191A

Applicant: STAR CAR WASH CAFÉ HOLDINGS PTY LTD (ACN 103 237 958)

Respondent: P&W GROUP PTY LTD (ACN 169 291 669)

File Number: SYG 3011 of 2014

Judgment of: Judge Emmett

Hearing date: 23 April 2015

Date of Last Submission: 23 April 2015

Delivered at: Sydney

Delivered on: 23 April 2015

REPRESENTATION

Counsel for the Applicant: Mr David Jay

Solicitors for the Applicant: Adams & Partners Lawyers

No appearance by or on behalf of the respondent

FEDERAL CIRCUIT COURT
OF AUSTRALIA
AT SYDNEY

SYG 3011 of 2014

STAR CAR WASH CAFÉ HOLDINGS PTY LTD (ACN 103 237 958)

Applicant

And

P&W GROUP PTY LTD (ACN 169 291 669)

Respondent

REASONS FOR JUDGMENT

EX TEMPORE

1. This is the applicant’s application for default judgment against the respondent pursuant to r.13.03B(2C) of the Federal Circuit Court Rules 2001 (Cth) in respect of an Amended Statement of Claim filed on 6 February 2015 seeking declarations, damages and other relief arising out of alleged infringement of trademarks owned by the applicant, contravention of s.18 of schedule 2 to the Competition and Consumer Act 2010 (Cth) (“ the Australian Consumer Law”) and passing off.

2. The initiating application and Statement of Claim was filed on 29 October 2014, which provided for a first Court date on 9 December 2014. At that directions hearing there was no appearance by the respondent. The applicant was represented by Mr David Jay, of counsel.

3. On 9 December 2014, relevantly, the respondent was directed to file and serve any defence by 16 January 2015. The matter was stood over for further directions on 29 January 2015. A copy of that Order was served by the applicant on the respondent on 10 December 2014.

4. On 29 January 2015, again there was no appearance by the respondent. The Court made the following orders:

   “1. The applicant file and serve an Amended Statement of Claim fully particularising the relief sought by 12 February 2015.

   2. The respondent file and serve any Defence to any Amended Statement of Claim by 5 March 2015.

   3. In the event that Order 2 is not complied with, any Application in a Case filed by the applicant seeking default judgment, together with any evidence by way of affidavit and submissions in support, may be filed and served by 27 March 2015 to be made returnable for hearing on 23 April 2015 at 9.30am before me.

   4. The applicant serve on the respondent a copy of this Order forthwith.

   5. The matter is otherwise stood over for further directions on 23 April 2015 at 9.30am before me.”

5. On 6 February 2015, the applicant filed an Amended Statement of Claim. No document has been filed by the respondent.

6. On 26 March 2015, in accordance with the Court’s Orders of 29 January 2015, the applicant filed an Application in a Case seeking default judgment against the respondent for the relief sought in paragraphs 36 and 37(a)-(e) and (j) of the Amended Statement of Claim filed on 6 February 2015. That relief is as follows:

   “36. The Applicant seeks a declaration that the Respondent has:

   a. Infringed the Star Car Wash Trade Marks (as defined in paragraph 7 of the Statement of Claim filed in these proceedings) in breach of s.120 of the Trade Marks Act 1995 (Cth);

   b. Contravened s.18 of the Australian Consumer Law as found in Schedule 2 to the Competition and Consumer Act 2010 (Cth); and

   c. Engaged in conduct which constitutes the tort of passing off,

   37. The Applicant seeks Court orders that:

   a. The Respondent, whether by itself, its servants, directors, officers, agents or otherwise howsoever, be restrained from using, displaying or otherwise exhibiting any signage, materials or documents that are substantially identical with, or deceptively similar to, the Star Car Wash Trade Marks or utilise the words “star hand car was” or “star car wash” and/or the star symbol in any combination.

   b. The Respondent, whether by itself, its servants, directors, officers, agents or otherwise howsoever be restrained from engaging in conduct that is likely to lead consumers into the false belief that:

   i. The Respondent’s business and services are provided by or under authority of the Applicant;

   ii. The Respondent has the sponsorship or approval of the Applicant.

   c. The Respondent, whether by itself, its servants, directors, officers, agents or otherwise howsoever, be restrained from passing off or threatening to pass of its business as having the sponsorship, approval or a connection or affiliation in the course of trade with the Applicant and its business.

   d. The Respondent, whether by itself, its servants, directors, officers, agents or otherwise howsoever, be restrained from displaying on its business premises or in connection with its business and on any stationary or promotional material the words “star hand car wash” or “star car wash” and/or the star symbol in any combination.

   e. The Respondent deliver up to the Applicant:

   i. Any and all brochures, pamphlets, advertising, promotional or marketing material and the like it its power, possession, custody or control which bear the “star hand car wash” or “star car was” and/or the star symbol in any combination.

   …

   j. Costs.”

7. At the direction hearing this morning, again there was no appearance by the respondent. There has been no communication received from the respondent seeking an adjournment of today’s directions hearing or for any other reason.

8. Rule 13.03B(c) provides as follows:

   “(c)  if the proceeding was commenced by an application supported by a statement of claim or the Court has ordered that the proceeding continue on pleadings—give judgment against the respondent for the relief that:

   (i)  the applicant appears entitled to on the statement of claim; and

   (ii)  the Court is satisfied it has power to grant;”

9. Counsel for the applicant, Mr Jay, read the affidavit of Heath Adams, solicitor, deposing as to service upon the respondent of the orders made by the Court on 29 January 2015, the Application in a Case and submissions in support and affidavit evidence in support of the applicant’s application. Based on that evidence, I am satisfied that those documents have been properly served upon the respondent by 30 March 2015.

10. In the circumstances, I am satisfied that the respondent is or should be aware of the proceeding this morning and, for whatever reason, has chosen not to participate or attend. I am also satisfied that the respondent has had sufficient time to participate in this proceeding should it have chosen to do so.

11. The applicant relied on the affidavits of Richard Chimes, sworn 26 March 2015, the affidavit of Kevin Gordon, sworn 26 March 2015, and the affidavit of Kwan Kwai, sworn 26 March 2015 in support of the applicant’s entitlement to the relief claimed in the Amended Statement of Claim. As stated above, I am satisfied that the above evidence was duly served upon the respondent.

12. The relevant facts and pleadings are accurately summarised in the written submissions of counsel for the applicant as follows:

    “(3)  RELEVANT FACTS AND PLEADINGS

    11. The Applicant operates a car washing, polishing, cleaning and detailing service.[1] At some of its car washing sites there are also cafés serving food and beverages.[2] It commenced operations in 2003 and operates 39 stores in Victoria, New South Wales, the Australian Capital Territory, Queensland and West Australia.[3]

    [1]     Amended Statement of Claim ¶ 3; Affidavit of Kevin Gordon affirmed 26 March 2015 ¶ 3.

    [2]     Amended Statement of Claim ¶ 4; Affidavit of Kevin Gordon affirmed 26 March 2015 ¶ 4.

    [3]     Amended Statement of Claim ¶ 5; Affidavit of Kevin Gordon affirmed 26 March 2015 ¶ 4 and Ann KG 1.

    12. Since 2005[4] the Applicant has been the registered owner of two trade marks:

    [4]     Amended Statement of Claim ¶ 7.

    12.1 The word mark (1007729, classes 37 and 43) “Star Car Wash Café”; and

    12.2 The word and image mark (1008060, class 37) “Star Car Wash Café”[5] (together the Trade Marks).

    13. The word and image mark uses a distinctive red and black colour scheme and red five-pointed star.[6]

    14. The Applicant licences the right the right to use the Trade Marks to its subsidiaries and franchisees.[7] The Trade Marks are used prominently in the promotion of the Star Car Wash business including use on:

    14.1 Store Signage;

    14.2 Uniforms;

    14.3 Facebook; and

    14.4 Marketing materials – including magazines, television and point of sale promotional materials.[8]

    [5]     The word and image trade mark is pictured at paragraph 7(b) of the Amended Statement of Claim; Affidavit of Kevin Gordon affirmed 26 March 2015 ¶ 5 and Ann KG 2 and 3).

    [6]     Amended Statement of Claim ¶ 14 and 15.

    [7]     Amended Statement of Claim ¶ 10 and 11.

    [8]     Amended Statement of Claim ¶ 13; Affidavit of Kevin Gordon affirmed 26 March 2015 ¶ 7 – 15.

    15. By reason of the use of the Trade Marks the Applicant alleges that it has attained a substantial reputation and goodwill in relation to the provision of car washing and car wash café services.[9]

    16. From at least August 2014 the Respondent operated a car wash from a site at 116 Bell Street, Coburg in Victoria (the Respondent Car Wash).[10] The Respondent Car Wash utilised signage which included the word “star”, “hand car wash”, a red and black colour scheme (the Signage) and the use of a five pointed star (the Logo).[11]

    17. The Respondent used the Signage and Logo at the Respondent Car Wash, on its Facebook page and on promotional flyers.[12]

    [9]     Amended Statement of Claim ¶ 16.

    [10]    Affidavit of Richard Chimes affirmed 26 March 2015 ¶ 2.

    [11]    Amended Statement of Claim ¶ 17; Affidavit of Richard Chimes affirmed 26 March 2015 ¶ 2 and 3 and Ann RC 1.

    [12]    Amended Statement of Claim ¶ 18; Affidavit of Kevin Gordon affirmed 26 March 2015 ¶ 14 and 15.

    18. The Applicant alleges that the Respondent’s use of the Signage and Logo:

    18.1 Infringe its rights under the Trade Marks Act 1995 (Cth);[13]

    18.2 Have the effect of wrongfully passing off the Respondent’s car wash and café services as the services of and connected with the services of the Applicant;[14] and

    18.3 Is misleading and deceptive pursuant to the CC Act by representing to consumers that it has an affiliation with the Applicant and its services.[15]

    19. Mr Chimes contacted the Respondent and requested that it cease using the Signage and Logo. It declined to do so.[16] Recent attendance at the Respondent Car Wash by an employee of the Applicant indicates the Respondent continues to use the Signage and Logo as recently as mid-March 2015.[17] Representations by the Applicant’s lawyers to cease using the Signage and Logo have not resulted in any change of conduct.[18]

    20. It is submitted that the Respondent’s infringement has been deliberate and flagrant. The relevant trademark infringement involves a deliberate, deceitful and calculated disregard for the Applicant’s rights. The Applicant and Respondent offer services in the same market. The Respondent Car Wash is in Melbourne where there are 9 outlets using the Applicant’s branding.[19]  The Respondent has deliberately used a look and feel that is identical or deceptively similar to the Applicant’s intellectual property by using the words “star”, “hand car wash”, a red and black colour scheme and the red five pointed star.

    21. The Respondent has continued to infringe despite being put repeatedly on notice of the Applicants’ registered rights. It appears to have proceeded on the plainly erroneous assumption that the infringement is permitted by reason of the fact that it has registered a business name “Star Hand Car Wash & Sushi Bar” with ASIC.[20]”

    [13]    Amended Statement of Claim ¶ 20.

    [14]    Amended Statement of Claim ¶ 27 – 28.

    [15]    Amended Statement of Claim ¶ 31 – 35.

    [16]    Affidavit of Richard Chimes affirmed 26 March 2015 ¶ 5 and 6.

    [17]    Affidavit of Kwan Kai affirmed 26 March 2015 ¶ 3.

    [18]    Affidavit of Kevin Gordon affirmed 26 March 2015 ¶17 – 25.

    [19]    Affidavit of Kevin Gordon affirmed 26 March 2015 ¶ 4 and KG 1.

    [20]    Affidavit of Kevin Gordon affirmed 26 March 2015 ¶ 19 and KG 17

13. I accept the applicant’s submission that the applicant appears to be entitled to the relief claimed in the Amended Statement of Claim.

14. In relation to the Court’s jurisdiction to grant the relief sought, I am satisfied that the Court has jurisdiction in relation to relief for trademark infringement under s.191A of the Trade Marks Act 1995 (Cth), has jurisdiction in respect of contraventions of s.18 of the Australian Consumer Law for misleading and deceptive conduct.

15. Further, I am satisfied that the Court has power to grant the declaratory relief sought and to make orders restraining the respondent from making further breaches of the same type.

16. The Court notes that the applicant does not otherwise press its claim for relief in respect of damages.

17. Accordingly, the orders sought in the Application in a Case filed on 26 March 2015 should be made, with costs.

18. Otherwise, the matter should be stood over for any costs application and any further orders sought on the Amended Application.

I certify that the preceding eighteen (18) paragraphs are a true copy of the reasons for judgment of Judge Emmett

Associate: 

Date:  23 April 2015