Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd

[2000] FCA 888

FEDERAL COURT OF AUSTRALIA

Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 888

TODDLER KINDY GYMBAROO PTY LTD AND MARGARET KENT KERR SASSE AND HARRY ARTHUR SASSE v GYMBOREE PTY LTD AND GYMBOREE CORPORATION

NG 142 OF 1996

MOORE J
20 JUNE 2000
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 142 OF 1996

BETWEEN:

TODDLER KINDY GYMBAROO PTY LTD
FIRST APPLICANT

MARGARET KENT KERR SASSE AND HARRY ARTHUR SASSE

SECOND APPLICANTS

AND:

GYMBOREE PTY LTD
FIRST RESPONDENT

GYMBOREE CORPORATION
SECOND RESPONDENT

GYMBOREE PTY LTD
FIRST CROSS-CLAIMANT

GYMBOREE CORPORATION
SECOND CROSS-CLAIMANT

TODDLER KINDY GYMBAROO PTY LTD
FIRST CROSS-RESPONDENT

MARGARET KENT KERR SASSE
SECOND CROSS-RESPONDENT

HARRY ARTHUR SASSE
THIRD CROSS-RESPONDENT

JUDGE:

MOORE J

DATE OF ORDER:

20 JUNE 2000

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.   The first applicant, whether by itself, its servants, agents or otherwise howsoever, be restrained from using, or conferring or purporting to confer on others the right to use or authorising others to use, the word "Gymbaroo" or the word "Gymboree" or any other name or word that is deceptively similar to the word "Gymbaroo" or the word "Gymboree" in relation to the provision of education, play, movement, exercise, co-ordination or gymnastic activities or classes, or any closely related activity, for babies, infants and young children and their parents or carers in the local government areas of Bisbane, Logan, Ipswich, Cleveland/Redland Bay, Redcliffe and the Gold Coast and from promoting the availability of franchises to provide under the word "Gymbaroo" or the word "Gymboree" or any other name or word that is deceptively similar to the word "Gymbaroo" or the word "Gymboree", any such activities for babies, infants and young children and their parents or carers in those local government areas.

2.   The first respondent, whether by itself, its servants, agents or otherwise howsoever, be restrained from using, or conferring or purporting to confer on others the right to use or authorising others to use, the word "Gymbaroo" or the word "Gymboree" or any other name or word that is deceptively similar to the word "Gymbaroo" or the word "Gymboree" in relation to the provision of education, play, movement, exercise, co-ordination or gymnastic activities or classes, or any closely related activity, for babies, infants and young children and their parents or carers in the states of New South Wales, Victoria and Western Australia and from promoting the availability of franchises to provide under the word "Gymbaroo" or the word "Gymboree" or any other name or word that is deceptively similar to the word "Gymbaroo" or the word "Gymboree", any such activities for babies, infants and young children and their parents or carers in those states.

3.   The application, and the cross-claim of the first respondent, be otherwise dismissed.

4.   The cross-claim of the second respondent be dismissed.

5.   The first respondent and the second respondent pay the applicants 65 percent of their costs of the proceedings other than as to any aspect of the proceedings for which a costs order has already been made.

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

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 142 OF 1996

BETWEEN:

TODDLER KINDY GYMBAROO PTY LTD
FIRST APPLICANT

MARGARET KENT KERR SASSE AND HARRY ARTHUR SASSE

SECOND APPLICANTS

AND:

GYMBOREE PTY LTD
FIRST RESPONDENT

GYMBOREE CORPORATION
SECOND RESPONDENT

GYMBOREE PTY LTD
FIRST CROSS-CLAIMANT

GYMBOREE CORPORATION
SECOND CROSS-CLAIMANT

TODDLER KINDY GYMBAROO PTY LTD
FIRST CROSS-RESPONDENT

MARGARET KENT KERR SASSE
SECOND CROSS-RESPONDENT

HARRY ARTHUR SASSE
THIRD CROSS-RESPONDENT

JUDGE:	MOORE J
DATE:	21 JUNE 2000
PLACE:	SYDNEY

THE COURT ORDERS THAT:

The orders made on 20 June 2000 are varied to include the following order:

2A. An order pursuant to section 88 of the Trade Marks Act 1995 (Cth), that the Register of Trade Marks be rectified by cancelling the registration of the registered trade mark no. 566771.

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

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 142 OF 1996

BETWEEN:

TODDLER KINDY GYMBAROO PTY LTD
FIRST APPLICANT

MARGARET KENT KERR SASSE AND HARRY ARTHUR SASSE

SECOND APPLICANTS

AND:

GYMBOREE PTY LTD
FIRST RESPONDENT

GYMBOREE CORPORATION
SECOND RESPONDENT

GYMBOREE PTY LTD
FIRST CROSS-CLAIMANT

GYMBOREE CORPORATION
SECOND CROSS-CLAIMANT

TODDLER KINDY GYMBAROO PTY LTD
FIRST CROSS-RESPONDENT

MARGARET KENT KERR SASSE
SECOND CROSS-RESPONDENT

HARRY ARTHUR SASSE
THIRD CROSS-RESPONDENT

JUDGE:

MOORE J

DATE OF ORDER:

20 JUNE 2000

WHERE MADE:

SYDNEY

REASONS FOR JUDGMENT

1. Before pronouncing orders, I intend to give some brief oral reasons firstly for making the costs order I propose and secondly for not making two orders that the parties have variously sought.  The parties have made submissions both orally and in writing on the question of costs which I have considered.  To varying degrees, each party recognises that they have been neither totally successful nor totally unsuccessful in the various applications I dealt with in my judgment of 12 May 2000.

2. In addition, each party recognises that it is desirable that, up to a point, any costs order deal in a global way with the costs of the proceedings.  However, the applicant submitted that, as against the second respondent, they succeeded entirely and were thus entitled to their costs of their application, insofar as it concerned claims against the second respondent and costs of the second respondent's cross-claim.  The approach of the second respondent was to aggregate all trade mark matters and identify the extent to which the parties had failed or succeeded on those issues.  Ultimately, however, each party accepted that if various of their primary submissions failed, an order could be made against both respondents that they pay a portion of the costs of the applicants.  Having regard to the way in which I have decided the matter and that no party has succeeded entirely, as well as the difficulties associated with disaggregating the issues, attributing success or failure by reference to each issue and endeavouring to assess time taken in dealing with each issue with any precision, I have decided to approach the matter on the broader footing.

3. While the first respondent succeeded in its cross-claim, save as to trade mark issues, that cross-claim was plainly defensive and responsive to the applicants' in which the applicants have succeeded, though their success has not been universal.  Much of the hearing was given over to the prosecution of the applicants' application and the applicants are entitled, in my opinion, to be paid some of the costs of the hearing by the first respondent.  To the extent that the hearing concerned trade mark issues, recognition needs to be given, in my opinion, to the proportion of the time taken within the significance of the successful attack on the GC mark and the successful defence of the A mark by the applicants.  I propose to order that the first respondent and the second respondent pay the applicant 65 per cent of their costs of the proceedings.

4. I do not propose to make an order declaring that the first respondent has engaged in conduct in contravention of section 52.  While a finding to that effect has been made, I am not satisfied that it is necessary or appropriate for an order to be made reflecting that finding.  That is so, particularly given that the applicants have secured the injunctive relief they sought based on that finding.

5. Similarly, I am not satisfied it is necessary or appropriate to make an order restraining Mrs Sasse from engaging in contravening conduct.  While the orders finally sought at the hearing did include such an order, the focus of the submissions and my consideration of the evidence and the legal issues was not on whether orders should be directed to accessorial liability of Mr and Mrs Sasse.  Moreover, the relief against the first applicant effectively precludes, in the factual context of this case, Mrs Sasse from engaging in the conduct complained of by the first respondent.

I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Moore.

Associate:

Dated:             3 July 2000

Counsel for the applicants:	Mr D M Yates SC
Solicitor for the applicants:	Deacons Graham & James
Counsel for the first respondent:	Ms J Baird
Solicitor for the first respondent:	Dunhill Madden Butler
Counsel for the second respondent:	Mr A Franklin
Solicitor for the second respondent:	Griffith Hack
Date of Hearing:	7 June 2000
Date of Judgment:	20 June 2000