The Cultural Intelligence Project Pty Ltd v The Entourage Education Group Pty Ltd
[2021] FCCA 504
•26 February 2021
FEDERAL CIRCUIT COURT OF AUSTRALIA
The Cultural Intelligence Project Pty Ltd v The Entourage Education Group Pty Ltd [2021] FCCA 504
File number(s): MLG 301 of 2021 Judgment of: JUDGE BAIRD Date of judgment: 26 February 2021 Catchwords: TRADE MARKS – INFRINGEMENT – IINTERLOCUTORY APPLICATION – urgent interlocutory relief sought against the respondent for use of the “MAKE IT HAPPEN” trade mark at upcoming online event – serious issue to be tried – balance of convenience – application granted. Legislation: Trade Marks Act 1995 (Cth), ss 20, 121 Cases cited: Australian Broadcasting Corporation v O'Neill (2006) 227 CLR 57
Australian Associated Motor Insurers Limited v Australian Automotive Motor Inspection Centre Limited & Anor [2003] FCA 1088
Beecham Group Limited v Bristol Laboratories Pty Limited (1968) 118 CLR 618
GlaxoSmithKline Australia Pty Limited v Reckitt Benckiser Healthcare (UK) Limited (2013) 103 IPR 487; [2013] FCAFC 102
Australia Pty Limited v Reckitt Benckiser Healthcare (UK) Limited (2013) 103 IPR 487; [2013] FCAFC 102
Marley New Zealand Limited & Anor v The Iconoclastics Pty Limited [2007] FCA 851
Midas Australia Pty Limited v Ravecroft Pty Limited [2004] FCA 771
Number of paragraphs: 40 Date of hearing: 25 and 26 February 2021 Place: Sydney Counsel for the applicant: L Merrick Solicitor for the applicant: K&L Gates Counsel for the applicant: A Fox Solicitor for the applicant: Holding Redlich ORDERS
MLG 301 of 2021 BETWEEN: THE CULTURAL INTELLIGENCE PROJECT PTY LTD
Applicant
AND: THE ENTOURAGE EDUCATION GROUP PTY LTD
Respondent
ORDER MADE BY:
JUDGE BAIRD
DATE OF ORDER:
26 FEBRUARY 2021
THE COURT:
UPON being satisfied on the evidence read today being the affidavit of Cara Margaret Peak affirmed 23 February 2021 and on the undertaking as to damages proffered by the applicant by its counsel,
1.ORDERS that as and from 5pm on Saturday, 27 February 2021 the respondent be restrained, whether by itself, its directors or officers, its employees, agents or otherwise from promoting or conducting any events (but not including use of the names at (a) and (b) below in pre-recorded presentations to be given at, and to be communicated at the occurrence of “THE MAKE IT HAPPEN SUMMIT” on 2 March 2021) under the names:
(a)"THE MAKE IT HAPPEN SUMMIT";
(b)"MAKE IT HAPPEN MASTERCLASS";
(c)any other name which incorporates the sign MAKE IT HAPPEN or any sign which is substantially identical or deceptively similar thereto,
until the trial of this proceeding or further order.
2.ORDERS that the respondent file a defence to the statement of claim by Friday 5 March 2021.
3.ORDERS that the proceeding be adjourned to 15 April 2021 at 11:00am AEST, or such other time and date as may be advised administratively by the Court after consultation with the parties, to take place in person, by Microsoft Teams or by other means.
4.GRANT liberty to the parties to apply to the Court by email to the Associate to Judge Baird at [email protected] to relist the matter, should either party seek a variation of these orders.
5.RESERVES costs.
6.NOTES the respondent has indicated its intention to file and serve a cross-claim, and the filing of the defence on 5 March 2021 does not preclude the respondent from filing and serving such cross-claim at a later date, being soon thereafter.
REASONS FOR JUDGMENT
Ex tempore
(Revised from transcript)JUDGE BAIRD
This matter has been brought on with extreme urgency because the respondent, The Entourage Education Group Pty Limited, proposes to conduct a “Summit” on 2 March 2021 as an online event, and is proposed to be followed by what are known as online “masterclasses” weekly thereafter through March (for convenience, I refer to these activities together as the Event).
The matter was filed on 24 February 2021, in the afternoon. I listed the proceeding for a first return, and commencement of the hearing for injunctive relief on 25 February 2021, and that hearing has continued today (26 February 2021). I have had the benefit of experienced intellectual property counsel for both the applicant and the respondent, and I thank them for their assistance.
The Trade Mark
The applicant, The Cultural Intelligence Project Pty Limited (CIP), is the owner of registered trade mark number 1838910 for the word mark "MAKE IT HAPPEN" in respect of certain specified services in classes 35 and 41 of the Australian Register of Trade Marks (Mark). The Mark is registered with effect from 18 April 2017. It is registered in respect of:
Class 35: Office functions
Class 41: Education; providing of training; entertainment; sporting and cultural activities; education, training and academic mentoring; arranging, organising or conducting exhibitions, forums, workshops, seminars, conventions or other informational forums; event management services (organisation of educational, entertainment, sporting or cultural events); arrangement, management, organisation and conducting of sporting, cultural, amusement, recreation and entertainment events; information services relating to education; organisation of competitions (education or entertainment), contests (education or entertainment), exhibitions for cultural or educational purposes; providing information, including online, about education, training, entertainment, sporting and cultural activities; online (electronic) publication; providing of: training, classes, lectures, individual instruction; publishing of informational and educational material, including by electronic means; mentoring; lifestyle counselling and consultancy
The applicant relies on the Mark to seek urgent interlocutory relief to prevent, or as has transpired over the course of yesterday and today, to limit, the respondent's proposed use of the Mark, specifically, as the name of and in relation to the Event.
I note that the Mark’s specification in respect of class 41 services specifically includes relevantly, among other services: education; providing of training; … education, training and academic mentoring; arranging, organising or conducting exhibitions, forums, workshops, seminars, conventions or other informational forums; … providing information, including online, about education, training, entertainment, sporting and cultural activities; online (electronic) publication; providing of: training, classes, lectures, individual instruction; … mentoring; lifestyle counselling and consultancy.
It can be seen from the above specification that the services in respect of which the Mark is registered encompass both activities in respect of which the applicant has used and uses the Mark, and the activities – the Event – in respect of which the respondent has, very recently, promoted and intends to conduct under and by reference to the Mark.
The services in respect of which the Mark is registered are, of course, not limited either to what the applicant is actually doing, or what the respondent proposes to do, but encompass more broadly all the services specified in the specification.
The respondent’s conduct
On about 8 February 2021, it came to the applicant’s attention that the respondent was promoting and proposing to run an online forum for entrepreneurs, and persons wishing to become entrepreneurs, under the banner or brand "The Make it Happen Summit". As I have said, the Summit is scheduled to take place online on 2 March 2021. The Summit is free to register for, and free to attend. The evidence shows that some seven or eight thousand persons have registered to attend the Summit.
The Summit appears to be a half-day event (repeated in the afternoon), comprising some introduction, and then four pre‑recorded presentation seminars, which seminars are used, so the evidence shows, to encourage those participating to sign up and register for a masterclass/es to be held subsequently by the respondent. These masterclasses, proposed to be conducted under the brand name “Make it Happen Masterclass”, are to be held on 3 March 2021, 9 March 2021, 16 March 2021 and 23 March 2021. Each of those masterclasses is to be presented by persons who have been described as “well-known entrepreneurs”, and those named include Janine Allis and Michelle Bridges. Each of the masterclasses is a paid event with attendees required to pay a fee of $97. The respondent's evidence shows that the masterclasses themselves are then used by the respondent to engage with, and encourage, attendees to engage in further classes, mentoring, or other one-on-one or small group consultancy services. The focus appears to be very strongly on commercial and individual entrepreneurship across a broad range of industries.
The applicant’s business and use of the Mark
The applicant's principal, Ms Cara Peek, has given evidence by affidavit that the company's use of the Mark is through a platform for First Nations entrepreneurs to, amongst other things, arrange, organise and conduct seminars and workshops to accelerate learning, and to support development in local communities. It supports the First Nation entrepreneurs to pursue their works, ideas, and businesses, striving to accelerate indigenous wellbeing. The Mark has been used as a domain name, and under the umbrella of the applicant, which is described as specialising “in increasing the cultural intelligence of organisations and individuals, with the objective of creating benefit for Aboriginal people and increasing the engagement with Aboriginal people by non‑indigenous people.”
Ms Peek gives evidence that the applicant has developed very considerable goodwill in connection with the “MAKE IT HAPPEN” brand and the activities associated with it, and the critical aspect of that goodwill is that to date the Mark is associated with providing support to Indigenous people, rather than with general commercial activities. It is set to expand the activities under the Mark in 2021, including with the opening of a physical space in Broome. Ms Peek also refers to the difficulties with engagement in this field above the 26th parallel.
OVERVIEW OF RELEVANT LEGAL PRINCIPLES
The principles applicable to the grant of interlocutory injunction are not in dispute between the parties. That is, that there is a serious question to be tried, and secondly, does the balance of convenience favour the grant of an injunction because either damages would be an inadequate remedy or because it is otherwise just in all the circumstances: see Beecham Group Limited v Bristol Laboratories Pty Limited (1968) 118 CLR 618 at 622, 623, cited with approval by Gummow and Hayne JJ in Australian Broadcasting Corporation v O'Neill (2006) 227 CLR 57, and Hurst (by her next friend) (Gail Smith) v State of Queensland [2006] FCAFC 151 at par 20ff (per Ryan, Finn and Weinberg JJ) (I am reciting here Gordon J’s summary in Marley New Zealand Limited & Anor v The Iconoclastics Pty Limited [2007] FCA 851 at [3]).
The principles guiding the exercise of the discretion that the Court undertakes in considering whether or not to grant an interlocutory injunction, and particularly an urgent one such as the present, were summarised by the Full Court in GlaxoSmithKline Australia Pty Limited v Reckitt Benckiser Healthcare (UK) Limited (2013) 103 IPR 487; [2013] FCAFC 102 at [81], and it is appropriate to repeat them here:
(a)the court’s power to grant injunctive relief under either s 122 of the Patents Act 1990 (Cth) or s 23 of the FCA Act [in the present case, s.126 Trade Mark Act 1995 (Cth) and s.15 of the Federal Circuit Court of Australia Act 1999 (Cth)] is expressed in very general terms, but the power to grant interlocutory relief is limited by the purpose for which it is conferred;
(b)it is relevant to take into account the specific statutory context in which interlocutory injunctive relief is sought;
(c)where the merits and the question of balance of convenience are fairly evenly balanced, there will be no injustice in requiring the party seeking interlocutory injunctive relief to demonstrate good prospects of success before imposing almost certain prejudice on the other side;
(d)where an interlocutory injunction is sought in respect of private rights, it is necessary to identify the legal or equitable rights which are to be determined at the trial and in respect of which the final relief is sought;
(e)in a case such of (sic) this, involving an application for interlocutory injunctive relief based on an infringement allegation, an assessment needs to be made of the strength of the probability of that claim succeeding at trial so as to preserve the status quo;
(f)in considering an application for an interlocutory injunction, the court must address itself to two main inquiries, namely whether the applicant has established a prima facie case in the sense explained in Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 and where the balance of convenience lies;
(g)the strength of the probability of ultimate success by the applicant at trial depends upon the nature of the rights asserted and the practical consequences likely to flow from the grant of the injunction which is sought. The extent of the strength required will vary from case to case;
(h)whether or not the applicant will suffer irreparable injury or harm for which damages will not be adequate compensation is one of the matters to be addressed in the court’s consideration of the balance of convenience and justice rather than as a distinct and antecedent consideration;
(i)the court should assess and compare the prejudice and hardship likely to be suffered by the respondent, third persons and the public generally if an injunction is granted, with that which is likely to be suffered by the applicant if no injunction is granted; and
(j)the question of whether there is a serious question or a prima facie case should not be considered in isolation from the balance of convenience because they involve related inquiries and the apparent strength of the parties’ substantive cases will often be an important consideration to be weighed in the balance.
DISCUSSION
Respondent’s business and activities
I have referred briefly to the respondent's business and its activities. The respondent has put on two affidavits in a very short time: an affidavit of its solicitor, Mr Gregory John Wrobel, on information and belief, and an affidavit of Mr Timothy Morris affirmed this morning, who is the chief executive officer of the respondent. It is clear that the affidavits have been put on as a matter of urgency and the respondent has, whilst doing the best it can, not been in a position to put on all of the evidence that it might otherwise wish to put on in relation to such an application.
There is, the respondent's evidence makes clear, an underlying question about whether the respondent would wish to put on a cross-claim for revocation of the Mark, as in Mr Morris' words “the words "Make it Happen" have appeared prominently on the respondent's website, public advertising, events and workshops, training material”, on its social media page, and the phrase is used as one of its statements of value. On the limited information before me, the evidence shows the historical use by the respondent of the phrase to be of an exhortatory nature and used in a descriptive sense.
However, what the respondent is now doing, as it has made clear, is using the Mark as the name for, and promotion of its upcoming Summit and masterclasses (that is, the Event).
The respondent has a business model of promoting, and conducting, summits or events which are followed by paid workshops which are named “masterclasses” or “boardroom sessions”. Mr Morris attests there were, in the seven to eight years prior to 2020, past events held in a physical space several times a year. Usually four to five events were held each year face‑to‑face, such as at a convention centre, with masterclasses being held afterwards also in a face‑to‑face environment.
In 2020, the respondent commenced conducting online events. It has undertaken two such online summits or events in 2020, followed by masterclasses that are also held online. The 2020 events were held on 16 June 2020, and 15 September 2020, and were titled respectively "Reboot" and "Momentum".
In general terms, the respondent has given evidence that, based on previous events, approximately two to four hundred individuals typically attend each event's masterclasses, and a number of individuals then subscribed to one-on-one coaching programs (these are comprehensive services the respondent provides to fee-paying customers over extended periods).
Whilst the respondent has expressed a concern that the effect of an injunction as sought by the applicant would be that the respondent would have to cancel the Event (both the Summit, and the masterclasses), it now appears to recognise that an injunction stopping an entity using a registered trade mark as the name for a particular event does not necessarily stop the event from taking place, nor indeed is the respondent's business going to be stopped.
The respondent in its evidence has expressed a concern that the proximity of the Event to this hearing is such that it would be very difficult for the respondent to rebrand, in its entirety, the upcoming Event. The respondent has identified that the particular speaker presentation sessions communicated at the Summit are pre‑recorded, and that those speakers have used, and when communicated online they will use, the phrase "Make it Happen" during their pre‑recorded sessions. The evidence shows that these pre-recorded uses include uses of the phrase "The Make it Happen Summit" several times, in connection with the Summit and the masterclasses. The pre-recordings of the speaker sessions to be communicated during the Summit portion of the Event were made on the following dates: Mr Michael Fox on 11 February 2021, Ms Janine Allis on 16 February 2021, Mr Tony Nash on 19 February 2021, and Ms Michelle Bridges on 24 February 2021. It is apparent from this chronology that substantial activity by the respondent in the actual preparation and making of these recordings occurred in February.
Applicant’s recent awareness of the use of the Mark in relation to the Event, and respondent’s response
Ms Peek gives evidence that she first became aware of the respondent's promotion of and proposal to run its online forum under the name “Make it Happen Summit” on about 8 February 2021. The applicant approached its solicitors, and a solicitors’ letter was sent to the respondent on 16 February 2021, Mr Morris was responded to on 17 February 2021. The applicant's solicitors’ letter demanded, amongst other things, that the respondent change the name of the Summit to a name that did not include the Mark, and is not deceptively similar to it, and remove the Mark from the Event website, that is, the website that the respondent conducts, and any other Australian‑facing website, or social media account controlled by Entourage Education.
Mr Morris in his response by email on 17 February 2021 at 9:50am denied infringement and stated that the company would not be providing the undertakings the applicant seeks. Mr Morris said that he did not quarrel with the fact of the applicant owning the Mark, but however asserted that the respondent was:
…not infringing that trademark (sic) by naming our convention “The Make it Happen Summit”, noting that we have used a stylised mark and do not use the exact words the subject of your trademark. The allegations of deceptive similarity will likely fail too as there is no similarity between the appearance, layout, content, images of our website to yours, and we would be shocked if any ordinary, reasonable person would think that we have made representations that we somehow enjoy sponsorship, approval or affiliation from the applicant.
In his email Mr Morris refers to a defence under s.120(2) of the Trade Marks Act 1995 (Cth), and says:
If you commence proceedings, we will bring an application for summary dismissal and seek indemnity costs against your client.
We do not wish to enter into further and protracted correspondence in respect of this matter. If you feel you have a justified claim, please commence proceedings and we will vigorously defend any claims made against us.
Overnight, whilst not consenting to any injunction, nor opposing it, the respondent has made enquiries and has now modified its stance.
CONSIDERATION
Strong prima facie case /serious question to be tried
In the present case, I consider that there is a strong prima facie case for the grant of an injunction for relief. The applicant has a registered trade mark. It is prima facie valid. The respondent's proposed use in relation to the Event – in the name of the Summit, and in the name of the masterclass – includes in its entirety the Mark, and adds descriptive material – “summit”, “masterclass”, or non‑distinctive material – “The”.
The Mark is a word mark represented in block capitals. The registration of a (word) mark in block capitals (as in the present case), as said in the long standing authority of Morny Ltd’s Trade Marks (1951) 68 RPC 55; (1951) 68 RPC 131 (CA UK) per Jenkins LJ, at 149-150, ‘must cover use of that word in any clearly legible form of lettering and not be confined to its representation in block capitals. Otherwise the registration … would give virtually no protection at all, for anyone could use the same word in some other form of type …’. Thus various depictions of a word mark, whether they be italicised, or so as to emphasise by different colours, various elements of a mark, may nonetheless fall within the scope of the registration. The respondent’s use is directly within the scope of the registered Mark.
In the present case, I am persuaded that the respondent’s proposed conduct in the use of the Mark as the name of the Event is plainly and directly a use in relation to services within the scope of the class 41 specification for the Mark to which I have referred to above, and within the scope of the Mark’s registration. In my view, the respondent’s conduct falls directly within s.120(1) of the Act. The matter thus turns on the balance of convenience.
Balance of convenience
Turning then to the balance of convenience. In large part, this aspect is what has concerned me in this matter. I have had regard to the observations of the Full Court in GlaxoSmithKline. The respondent has a genuine concern that limiting its use of the Mark for the Event will cause it damage in a financial sense. The applicant has a concern that its exclusive use of the Mark, which is the monopoly granted under the Act, will be irreversibly damaged by this continuing use of the respondent. Indeed, when one has regard to s.20 of the Act, the exclusive right that is afforded the owner of the Mark – to use the Mark, and authorise others to use the Mark in relation to the services in respect of which the trade mark is registered – is an exclusivity that once lost, cannot readily, and in all cases, be either compensated or regained.
The applicant has expressed a concern that the use of the Mark by the respondent for the broader range of commercial entrepreneurship activities, not focused to the indigenous use in respect of which the applicant has built its use of the Mark, would cause a damage that would be irremediable.
Such a concern was expressed by Heerey J in two decisions to which counsel for the applicant, Mr Merrick, has drawn my attention: Midas Australia Pty Limited v Ravecroft Pty Limited [2004] FCA 771 at [7], and Australian Associated Motor Insurers Limited v Australian Automotive Motor Inspection Centre Limited & Anor [2003] FCA 1088 at [34] (AAMI Limited). In AAMI Limited, counsel for the respondents had argued that there was no evidence of damage. His Honour there said, at [34]:
… However, where damage to, or interference with the reputation and goodwill in a product or service is claimed, damages are not usually an adequate remedy given the difficulty of measuring such damages in monetary terms: Parfums Christian Dior (Aust) Pty Ltd v Dimmeys Stores Pty Ltd (1997) 39 IPR 349 at 354-5. Section 126 of the Trade Marks Act specifically provides for the grant of an injunction. Injuries to intellectual property are particularly apt for protection by injunction.
(after referring to Meagher, Gummow & Lehane's Equity: Doctrines and Remedies, his Honour then observed:)
… It is said that the Courts of Chancery had a longstanding jurisdiction to enjoin infringement of patents and copyrights and that a plaintiff became entitled to an injunction prima facie if he proved infringement of his patent or copyright. The learned authors note the introduction of the statutory system for the registration of trade marks commencing in the United Kingdom in 1875 and it is implicit in their treatment of the subject that a similar approach has been adopted in cases of infringement of this form of intellectual property.
In my view, in the present case, there is the possibility, indeed, the probability, of a diminution of goodwill. The loss of exclusivity, the loss of control, and the message sent to the market that may follow from continued use of the Mark by somebody other than the registered owner, for services for which the Mark is registered, is likely to be a matter which is difficult in nature to quantify in monetary terms. Once taken and used, the loss of exclusivity and how that loss of exclusivity reverberates with the use of the Mark, is something which may be irremediable. Adopting what his Honour Justice Heerey said in Midas, at [7]:
Unauthorised use of the Mark would erode its value in a way that may be very difficult to compensate in monetary terms.
On the other hand, the evidence is that the respondent has conducted events in the past, in summits and masterclasses, indeed, very successfully, and under a number of names. That it has done so, and that it has appeared to have done so very successfully, including in the online environment, and in the face of difficulties posed by 2020, are matters I have weighed in the balance to conclude that the Event, with the quality of the speakers that are identified, and the expertise and experience that the respondent has attested to in the affidavit of Mr Morris, can comfortably go ahead with an appropriate alternative branding. I consider that the conversion of attendees into acquiring consultancy and other services for fee, are activities that the respondent can continue to do, and will be able to do with success, under an alternative branding should it engage in the level of energy that it appears to have engaged in in creating and promoting events of similar nature in the past.
The injunction sought will not prevent the respondent from carrying on its business, but only from carrying it on in a way that uses the trade mark.
There is, however, the matter of the pre-recorded seminar presentations to be communicated at the Summit. The respondent has proposed (whilst not consenting to the relief), and the applicant has adopted a delineation as between aspects of the respondent’s conduct which seems to me to draw an appropriate balance between what the applicant seeks, and what is reasonably practicable given the very short time in which the respondent has between now and 2 March 2021 to rebrand.
Accordingly, I consider it is appropriate to grant the injunction retraining the respondent’s use of the Mark, not as sought by the applicant initially, but in a more limited form. That is so as to minimise any re‑filming or re‑videoing of the presentation seminar sessions in communication of the Summit. As I understand it, these are the pre-recorded sessions of each of the entrepreneurial and motivational speakers, that will take place on 2 March 2021 at the Summit, the cost of which has already been incurred, and the scripting of which has, of course, been effected.
Conclusion
In these circumstances, I propose to grant an interlocutory injunction, being satisfied on the affidavit evidence of Ms Peek as to the prima facie case, and as to the damage that would flow were the injunction not to be granted in some form, and also having had regard to the efforts that Mr Morris and Mr Wrobel attest to as the respondent has already done, and the costs it has already incurred.
Whilst this is not ideal, and I am very conscious at least two of the sessions were recorded after Mr Morris, at least, for the respondent, was on notice of the Mark, it appears that at that time Mr Morris had an understanding of the ambit of the registration which does not accord with my view of the Mark, or the strength of the rights subsisting in a word mark.
It is appropriate then to make orders, but limiting the orders so that they do not have effect until, and from, 5pm on Saturday, 27 February 2021. That is, that over the next 32 hours or so, the respondent take steps to ensure that it complies with the order on and from that date and time.
I will so order.
I certify that the preceding forty (40) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Baird. Associate:
Dated: 16 March 2021
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