The Royal Automobile Club of Queensland v Dawe

[1998] FCA 846

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	NO QG2  of  1998

BETWEEN:

THE ROYAL AUTOMOBILE CLUB OF QUEENSLAND LIMITED
APPLICANT

WILLIAM FREDERICK DAWE
FIRST RESPONDENT

JOYCE ELIZABETH DAWE
SECOND RESPONDENT

AND:

WILLIAM FREDERICK DAWE
FIRST CROSS-CLAIMANT

JOYCE ELIZABETH DAWE
SECOND CROSS-CLAIMANT

THE ROYAL AUTOMOBILE CLUB OF QUEENSLAND LIMITED
CROSS-RESPONDENT

JUDGE:

COOPER J

DATE OF ORDER:

26 JUNE 1998

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:

1. The first and second respondents and each of them be restrained from infringing the applicant’s registered trade marks No A446634 and No A502701 a division of No A446634, using or causing to be used, in any way, and whether spoken of, written or depicted, the acronym or initial “RACQ”, alone or in combination with any other words, numerals or symbols, in relation to any business with which either respondent is associated.

1. The first and second respondents and each of them be restrained from engaging in conduct that is misleading and deceptive or likely to mislead or deceive in contravention of s 52 of the Trade Practices Act 1974 (Cth) and/or s 39 of the Fair Trading Act 1989 (Qld); and/or s 42 of the Fair Trading Act 1987 (NSW), by using, in any way, and whether spoken of, written, or depicted, the acronym or initials “RACQ”, alone or in combination with any other words, numerals or symbols, in relation to any business with which either of the respondents is associated.

1. The first and second respondents and each of them be restrained form representing that he or she has a sponsorship, approval or affiliation which he or she does not have in contravention of s 53(d) of the Trade Practices Act 1974 (Cth); and/or s 40(f) of the Fair Trading Act 1987 (NSW); and/or s 44(f) of the Fair Trading Act 1987 (NSW), by using, or causing to be used, in any way, and whether spoken of, written or depicted, the acronym or initials “RACQ”, alone or in combination with any other words, numerals or symbols, in relation to any business with which either of the respondents is associated.

1. The first and second respondents and each of them be restrained from passing off any towing services as an authorised agent of the applicant, by using, or cause to be used, in any way, and whether spoken, of written or depicted, the acronym “RACQ”, alone or in combination with any other words, numerals or symbols, in relation to any business with which either of the respondents is associated.

1. The first and second respondents and each of them be restrained from pursuing the trade mark application No 737972 and that each of them do all things necessary to effect its withdrawal.

1. The first and second respondents and each of them do all things necessary to surrender, terminate or make over to the applicant the registrations in New South Wales of each of the business names :-

(a)“RACQ 24 HR Towing Service”;

(b)“RACQ Breakdown Services”;

(c)“RACQ Smash Repair”.

1. The respondents pay to the applicant nominal damages in the sum of $20.

1. Subject to the injunctive relief lapsing upon proof to the satisfaction of the District Registrar that the relevant telephone numbers have been disconnected or abandoned :-

(a)each of the respondents themselves immediately answer, and each of the respondents cause any servant or agent of his or hers or theirs immediately to answer, any call taken by him or her on any of the telephone services numbers 0755 245 036, 0412 753636, 018 753 636 in these terms :-

“This business is not connected in any way with The Royal Automobile Club of Queensland and does not and cannot provide any services on its behalf.  May I help you?”

(b)The respondents within seven days cause a telephone message to be placed upon the telephone services number 0755 245 036 and keep connected to that service, a telephone message so that any person calling that number will first hear these words :-

“This business is not connected in any way with The Royal Automobile Club of Queensland and does not and cannot provide any services on its behalf.  If you still wish to deal with us please hold.”

1. The respondents’ cross-claim be dismissed.

1. The first and second respondents pay the applicants’ costs of the day and the applicant’s costs of and incidental to these proceedings (including any reserve costs) and of and incidental to the cross claim to be taxed, on an indemnity basis.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	NO QG2  of  1998

BETWEEN:

THE ROYAL AUTOMOBILE CLUB OF QUEENSLAND LIMITED
APPLICANT

WILLIAM FREDERICK DAWE
FIRST RESPONDENT

JOYCE ELIZABETH DAWE
SECOND RESPONDENT

AND:

WILLIAM FREDERICK DAWE
FIRST CROSS-CLAIMANT

JOYCE ELIZABETH DAWE
SECOND CROSS-CLAIMANT

THE ROYAL AUTOMOBILE CLUB OF QUEENSLAND LIMITED
CROSS-RESPONDENT

JUDGE:	COOPER J
DATE:	26 JUNE 1998
PLACE:	BRISBANE

EXTEMPORE REASONS FOR JUDGMENT

This is an application for summary judgment in respect of an application filed by the Royal Automobile Club of Queensland Limited on 7 January 1998 seeking injunctive and other relief against the respondents in respect of several causes of action, including passing off, misleading and deceptive conduct under the Trade Practices Act, breaches of the Fair Trading Act and infringement of the trademarks of the applicant.  A statement of claim was filed at the same time as the application and a defence and cross-claim was filed and served on 6 March 1998.

In their defence, the respondents denied the entitlement of the applicant to conduct its affairs beyond the borders of Queensland and denied that the applicant had a reputation beyond the borders of Queensland.  Importantly, the respondents mounted a positive defence of a right to arrogate for themselves the goodwill and reputation of the applicant and to exploit it in relation to a business of tow-truck operators which they conducted in northern New South Wales and, on the material available to me, across the border into southern Queensland.

Additionally, by cross-claim, the respondents raised allegations of false assertions of a right to use the trademark in contravention of s 129 of the Trademarks Act; conduct in contravention of s 52 of the Trade Practices Act in respect of the activities of Border Automotive Services and Border Smash Pty Ltd displaying livery of the applicant; and finally, allegations of anti-competitive conduct in contravention of s 45 of the Trade Practices Act.

On 27 April 1998 the applicant filed a reply joining issue with all of the matters of defence and cross-claim raised by the respondents.  On 29 May 1998 the matter came before me on an application for interlocutory relief on the part of the applicant, there being evidence that the respondents were continuing to engage in the conduct which was alleged to be in contravention of the rights of the applicant as pleaded in the statement of claim.

On that date, Mr Smith of Messrs Primrose Couper Cronin Rudkin solicitors appeared for the respondents.  On that occasion, I made certain interlocutory orders and ordered that particulars be supplied by the respondents of paragraph 13 of their defence and cross-claim, and in default of the provision of the particulars, that paragraph 13 be struck out.  I also directed that, if the applicant intended to seek summary judgment, it file and serve material for a hearing today.  I also gave instructions as to the filing of any material in opposition.

When the matter was called on today, no material had been filed in opposition and the submissions by Mr Smith on behalf of the respondents were limited to the form of relief and the question of costs.  A perusal of the file shows that the particulars of the cross-claim were never filed.  A written outline of submissions had been provided to the court which sets out in detail the proper basis for the relief which is claimed in final form.  I do not propose to read those into the record, simply to say that I will initial a copy and they will be placed on the file.  I agree with that which is contained in the submissions and I am satisfied that the applicant is entitled to the judgment which it seeks.

In my view, the applicant is entitled to the injunctive relief claimed.  It is entitled, at its election, to nominal damages which I fix in an amount of $20 and it is entitled, in respect of the telephone numbers and the directory, to have the relief which it seeks subject to that injunctive relief lapsing upon proof to the satisfaction of the Registrar that the relevant telephone numbers have been disconnected and abandoned by the respondents.  That leaves outstanding the question of costs. 

In my view the respondents in this case have persisted knowingly to resist what was clearly a strong and proper claim to injunctive relief.

The defences which were raised were not matters of substance and the cross-claim was, likewise, not a matter of substance.  It has only been in recent times that the proceedings, effectively from the respondents’ point of view, have been abandoned with an acceptance that judgment was inevitable.  In my view, such a realisation comes too late and the applicant, having elected not to prove up more than nominal damages, ought not to be in a position where it is limited to party and party costs.  The outline of submissions reviews the authorities.  I am satisfied this is an appropriate case for indemnity costs and I so order.

In the circumstances, I direct the parties to confer with a view to drawing up minutes of order to reflect this judgment.

I certify that this and the preceding two (2) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Cooper

Associate:

Dated:            26 June 1998

Counsel for the Applicant:	R G Bain QC
Solicitor for the Applicant:	Clayton Utz
Solicitor for the Respondents:	M Smith Primrose Couper Cronin Rudkin
Date of Hearing:	26 June 1998
Date of Judgment:	26 June 1998