Two Men and A Truck Aust Pty Ltd v Three Men and A Truck Removals and Storage Pty Ltd & Anor
[2008] FMCA 1333
•26 September 2008
FEDERAL MAGISTRATES COURT OF AUSTRALIA
| TWO MEN AND A TRUCK AUSTRALIA PTY LTD v THREE MEN & A TRUCK REMOVALS AND STORAGE PTY LTD & ANOR | [2008] FMCA 1333 |
| TRADE PRACTICES – Misleading and deceptive conduct. TRADE MARKS – Whether respondents’ mark substantially identical or deceptively similar to applicant’s trade mark. PRACTICE & PROCEDURE – Whether Court has jurisdiction to enforce contract which settles proceedings. COURTS – Accrued and associated jurisdiction. ORDERS – Whether order for specific performance of contract. |
| Evidence Act 1995 (Cth), s.131 Federal Court Rules, o.37, r.3 |
| Alan Chong v Tonka Corporation [1994] ATMO 27 American Optical Corporation and Another v Allergan Pharmaceuticals Pty Ltd (1985) 4 IPR 1 Group 4 Securitas NV v Stonepack Pty Ltd (2000) 49 IPR 397 John Fitton & Co Ltd's Application (1949) 66 RPC 110 Macteldir Pty Ltd v Dimovski and Another (2005) 226 ALR 773 Maclean Corporation Pty Ltd v Pantzer [2006] FMCA 332 Needlework Warehouse Pty Ltd (ACN 101 863 709) v Chansonette Pty Ltd (ACN 092 507 938) and Another (2005) 226 ALR 252 Nickhun Pty Ltd v Grifkam Pty Ltd (2005) ATPR 42-049 Ransom (Inspector of Taxes) v Higgs [1974] 1 WLR 1594 Re Wakim; Ex parte McNally and Another (1999) 198 CLR 511 |
| Applicant: | TWO MEN AND A TRUCK AUSTRALIA PTY LTD |
| First Respondent: | THREE MEN & A TRUCK REMOVALS and STORAGE PTY LTD |
| Second Respondent: | JOSEPH O’LEARY |
| File Number: | SYG 3967 of 2007 |
| Judgment of: | Barnes FM |
| Hearing date: | 29 August 2008 |
| Delivered at: | Sydney |
| Delivered on: | 26 September 2008 |
REPRESENTATION
| Counsel for the Applicant: | Mr M Hall |
| Solicitors for the Applicant: | Banki Haddock Fiora |
| First Respondent: | No appearance |
| Second Respondent: | No appearance |
ORDERS
The first respondent and the second respondent be restrained from themselves jointly or separately, or through their employees or agents or otherwise, selling or promoting removalist services under or by reference to the name or trade mark “Three Men & A Truck” or any name or mark incorporating the words “Three Men & A Truck”, or any other name or mark which is substantially identical with or deceptively similar to the name and mark “Two Men and A Truck”.
The first and second respondents within 14 days deliver up to the applicant all promotional or other materials bearing the name or mark “Three Men & A Truck” in the possession, custody or control of the respondents or either of them, and that they continue to deliver up or destroy any such materials subsequently coming into their possession, custody or control.
The first respondent and the second respondent immediately:
(a)Take all necessary steps to change the company name Three Men & A Truck Removals and Storage Pty Ltd (ACN 125 366 949) to a name not incorporating the words THREE MEN & A TRUCK or any name or mark substantially identical with or deceptively similar to Australian Registered Trade Mark 949361 TWO MEN AND A TRUCK.
(b)Take all necessary steps to procure deregistration of the domain name “threemenandatruck.com.au”.
(c)
Take all necessary steps to procure the cancellation, or transfer to Two Men and A Truck Australia Pty Limited of the telephone numbers appearing in the 2008 hard copy edition of the
Sydney metropolitan Yellow Pages (namely, 0424 951 650 and 9608 3263).
(d)Take all necessary steps to procure the removal from the online edition of the Australian Yellow Pages located at the advertisements for Three Men & A Truck/Removals and Storage Pty Ltd.
(e)Recall from distribution all business cards and all other materials used in connection with the provision or promotion of removals and/or storage services by reference to the mark THREE MEN & A TRUCK.
(f)Cease to use the name or mark “Three Men & A Truck” and/or any other name or mark substantially identical with or deceptively similar to Australian Registered Trade Mark no. 949361 and no. 949362 within any company name, business name, domain name, trade mark or otherwise, for so long as the applicant carries on a removalist and storage business by reference to the Trade Marks or either of them.
If the first and/or second respondents fail to perform any of the obligations provided by Order 3 paragraphs (a) – (d) above within 21 days of the date of this order, any Registrar of the Court is hereby authorised and directed pursuant to Order 37 Rule 3 of the Federal Court Rules and Rule 1.05(3) of the Federal Magistrates Court Rules to take all such steps, perform all such acts and sign all such documents as may be required to carry those obligations into effect.
The respondents pay the costs of the applicant fixed in the sum of $15,000.
| FEDERAL MAGISTRATES COURT OF AUSTRALIA AT SYDNEY |
SYG 3967 of 2007
| TWO MEN and A TRUCK Australia PTY LTD |
Applicant
And
| THREE MEN & A TRUCK REMOVALS & STORAGE PTY LTD |
First Respondent
| JOSEPH O’LEARY |
Second Respondent
REASONS FOR JUDGMENT
These proceedings
The applicant Two Men And A Truck Australia Pty Limited seeks orders against the respondents Three Men & A Truck Removals And Storage Pty Ltd and Joseph O’Leary on the basis that they have infringed registered trade marks of the applicant. In particular it seeks to enforce an agreement in settlement of these proceedings.
The applicant commenced these proceedings on 24 December 2007. It now relies on an amended application and amended statement of claim filed on 27 May 2008 in which it is alleged that the first respondent engaged in conduct that was misleading or deceptive or likely to mislead or deceive in contravention of s.52 of the Trade Practices Act 1974 (Cth) and made false representations in contravention of s.53(c) of the Trade Practices Act. The amended application also alleges that the first respondent passed off or attempted to pass off its services as having a connection with the applicant or its business and infringed the registered trade marks of the applicant under s.120 of the Trade Marks Act 1995 (Cth). Orders were sought in relation to the second respondent on the basis that he was involved in the contraventions of the Trade Practices Act, breached s.42 of the Fair Trading Act 1987 (NSW) engaged in passing off and infringed and procured the infringement of the applicant’s registered trade marks.
When this matter first came before the Court for directions the respondents were represented. However on 13 May 2008 their former solicitor filed a notice of withdrawal. There has been no appearance for either respondent since that time. The respondents have failed to comply with orders of the Court in relation to filing a response, defence, affidavits and submissions. There was no appearance for either respondent on 29 August 2008, the date listed for hearing.
The Court sent copies of orders made after the withdrawal of the respondents’ solicitor to the last known address for the respondents notified by their solicitor. Based on the affidavit of service of Peter Leslie Hennessy sworn on 18 August 2008 and filed on 21 August 2008 I am satisfied that the respondents were served with copies of the amended application and amended statement of claim filed on 27 May 2008, a copy of the affidavit of Richard St John Kuipers affirmed 6 August 2008 and the accompanying exhibit and a letter from the solicitors for the applicant reminding them that the hearing date was 29 August 2008.
Under the Federal Magistrates Court Rules (Rule 13.03) the Court has power not only to make orders sought or any other order it considers appropriate if a party fails to take a step required by the Rules or to comply with an order of the Court (as to which see EME Transport – North Pty Limited v EME (NSW) Pty Ltd & Anor [2008] FMCA 477), but also to proceed with the hearing generally or in relation to any claim for relief in the proceeding under Rule 13.03A(e) if a party to a proceeding is absent from a hearing.
In these circumstances the applicant seeks to press its claims for trade mark infringement and to enforce a settlement agreement said to have been reached between the applicant and the second respondent for himself and on behalf of the first respondent on or about 14 April 2008.
In particular, the applicant relies on the claims pleaded at paragraphs 1 to 17 and 26 to 29 of the amended statement of claim and seeks orders in relation to those claims. It relies on an affidavit of Gabriella Renee Rubagotti affirmed 4 February 2008, affidavits of Lisa Maree Paraska affirmed 28 April 2008 and 13 May 2008, an affidavit of Richard St John Kuipers affirmed 16 August 2008 and affidavits of Peter Leslie Hennessy sworn on 4 February 2008 and 18 August 2008, together with annexures and exhibits to such affidavits and certified copies of Certificates of Registration of Trade Marks number 949361 and no. 949362 tendered in evidence.
Jurisdiction
In the application and amended application the applicant alleged contraventions of ss.52 and 53 of the Trade Practices Act 1974 (Cth) and sought a declaration to that effect and damages under s.82 of the Trade Practices Act as well as seeking declarations as to infringement of trade marks, passing off and contravention of the Fair Trading Act, orders restraining the breaches, delivery-up of material bearing the respondent’s mark and orders enforcing the agreement to settle the proceedings. Counsel for the applicant contended generally that the Court had jurisdiction to determine the claims pressed and make the orders sought by the applicant notwithstanding that in the absence of the respondents the applicant does not now seek to pursue the Trade Practice claims.
Sections 52 and 53 are within Division 1 of Part V of the Trade Practices Act. The Court has jurisdiction to hear and determine any matter arising under certain parts of the Trade Practices Act (including Division 1 of Part V) in respect of which a civil proceeding is initiated (see s.86(1A) of the Trade Practices Act). The Court also has jurisdiction in associated matters under s.18 of the Federal Magistrates Act 1999 to hear and determine federal claims not otherwise within its jurisdiction associated with matters in which its jurisdiction is invoked (see the equivalent provision in s.32(1) of the Federal Court of Australia Act 1976) where both claims arise out of facts substantially the same or closely connected (see Superstar Australia Pty Ltd v Coonan & Denlay Pty Ltd and Another (1981) 57 FLR 110 and American Optical Corporation and Another v Allergan Pharmaceuticals Pty Ltd (1985) 4 IPR 1).
In addition the Court has an accrued jurisdiction to determine the whole of a matter or controversy, including non-federal elements which are part of the one controversy (see generally PhilipMorris Incorporated and Another v Adam P. Brown Male Fashions Proprietary Limited (1981) 148 CLR 457, Fencott and Others v Muller and Another (1983) 152 CLR 570 and Re Wakim; Ex parte McNally and Another (1999) 198 CLR 511). It is also relevant to note that under s.14 of the Federal Magistrates Act the Court has the power to take all steps to determine proceedings completely and finally. The comparable provision in the Federal Court Act (s.22) has been applied to permit that Court to enforce a compromise or settlement of proceedings on the basis that the Court has accrued jurisdiction to determine the action on the agreement to compromise the proceedings (see Darling Downs Investments Pty Ltd v Ellwood (1988) 18 FCR 510 per Pincus and Einfield JJ and Needlework Warehouse Pty Ltd (ACN 101 863 709) v Chansonette Pty Ltd (ACN 092 507 938) and Another (2005) 226 ALR 252).
Once the Court’s jurisdiction is legitimately invoked (and I am satisfied that it is in this case on the basis of the claims made in the amended statement of claim in relation to the provisions of s.52 and s.53(c) of the Trade Practices Act) and given that there is nothing to suggest that such claims are “colourable” in the sense of having been made for the improper purpose of fabricating the jurisdiction (see Burgundy Royale Investments Pty Limited and Others v Westpac Banking Corporation and Others (1988) 18 FCR 212) it is open to the Court and appropriate to proceed as sought by the applicant to determine the claims based on trade mark infringement (see Nickhun Pty Ltd v Grifkam Pty Ltd [2004] FMCA 994) under the Trade Marks Act 1995 (Cth) which arise out of a common substratum of facts within its associated jurisdiction, notwithstanding that in the absence of the respondents the applicant does not now seek to pursue the Trade Practices Act claims.
In addition I am of the view that the Court has power to determine the existence of a compromise of or agreement to settle these proceedings and to enforce such agreement having regard to s.14 of the Federal Magistrates Act and the accrued jurisdiction of the Court (see Darling Downs Investments Pty Ltd v Ellwood, Needlework Warehouse Pty Ltd (ACN 101 863 709) v Chansonette Pty Ltd (ACN 092 507 938), Macteldir Pty Ltd v Dimovski and Another (2005) 226 ALR 773 and Maclean Corporation Pty Ltd v Pantzer [2006] FMCA 332).
Summary of the facts
The applicant is a company incorporated in 1988. As evidenced by certified copies of Certificates of Registration of Trade Marks tendered in these proceedings it is the owner of Australian Trade Mark No. 949361 “TWO MEN AND A TRUCK” and also Australian Trade Mark No. 949362 consisting of the following device:
Both trade marks were registered from 3 April 2003 for a period of ten years for the following services: “Transportation, packing and storage of goods including removalist services; transportation and storage of waste including rubbish removal; rental of storage containers” being services in class 39.
Richard St John Kuipers is the director, secretary and shareholder of the applicant comapny. Since 13 March 1995 Mr Kuipers has conducted a relocation, removals and storage business in Australia under the name “Two Men and a Truck” following registration by his then company Hornidge Couriers Pty Limited of the business name “Two Men and A Truck” in New South Wales. On 2 August 1996 the applicant company’s name was changed to Two Men and A Truck Australia Pty Limited. The “Two Men and A Truck” business name ceased to be registered on 28 May 1998. The applicant has provided a range of commercial and domestic relocation and storage services under that name continuously since 1996 and since 3 April 2003 under the registered trade marks.
Mr Kuipers attests to the fact and I accept that those services include domestic and commercial office relocation, furniture, equipment and antique removal and moving within domestic and commercial premises and furniture storage. Since about 1998 the applicant’s services have also included the sale of removalist materials and since about 2000 yard and site cleaning and maintenance including rubbish removal. The company offers its services throughout Australia. Although not registered until 2003, the applicant continuously used the marks in the plain text form ‘TWO MEN AND A TRUCK’ and in the logo form depicted at [11] above in relation to the provision of its services in Australia from 1995 on. Since 3 April 2003 the applicant has been the owner of the registered trade marks and has offered for sale, sold, promoted and advertised services within class 39 under or by reference to the marks as well as using the registered trade marks in catalogues and packaging price lists, stationery and other promotional material. The trade marks have been used both in the plain text form and also in the device form in relation to the provision of the registered services in Australia.
In about August 2007 Mr Kuipers became aware that the first and second respondents were offering and promoting in Australia a range of home and business transportation and removalist services under and by reference to the name or mark Three Men & A Truck by way of business cards, advertisements in the online editions of the Australian White Pages as well as in the online Yellow Pages and the 2008 hard copy edition of the Sydney Yellow Pages in the category “furniture removals and storage”. The second respondent registered the business name “THREE MEN & A TRUCK / REMOVALS & STORAGE” on 11 November 2005 in relation to a house and business removals and storage business. On 11 May 2007 the first respondent was registered in New South Wales as a proprietary company under the name “THREE MEN & A TRUCK / REMOVALS AND STORAGE PTY LTD”. The business cards and advertisements include the logo depicted at [24] below.
The second respondent was and remains the director and sole shareholder of the first respondent. Some time prior to August 2007 the first respondent also caused to be registered the domain name threemenandatruck.com.au. The second respondent is the domain name registrant contact.
The affidavit evidence of Mr Kuipers and Ms Rubagotti is that the respondents’ use of the mark was without the consent of the applicant.
On Mr Kuipers’ instructions the applicant’s solicitors sent a number of letters to the first and second respondents from 31 August 2007. These proceedings were commenced on 24 December 2007. The second respondent ultimately provided undertakings to the applicant dated 14 April 2008, which are discussed further below. The applicant submits that a settlement of these proceedings was reached between the parties to the proceedings, in essence on the basis that the respondents would change the name of the company and business to a name which did not include and was not deceptively similar to the name Two Men and A Truck in return for the applicant meeting the cost of deregistration of the current business and company names. The applicant has tendered and remains ready to tender payment of the amount it agreed to pay towards such costs. The applicant seeks to enforce such settlement agreement.
The second respondent’s business name was removed from the register on 16 May 2008. Sometime before 5 August 2008 the first respondent’s online White Pages listing was removed. The domain name registration was modified in an unidentified manner on 27 March 2008 and use of the domain name appears to have ceased by 5 August 2008. However the evidence before the Court is that the first respondent’s name has not been changed, other advertisements remain in place and other steps provided for in the undertakings have not been complied with by the respondents.
Trade Marks infringement
Section 120(1) of the Trade Marks Act 1965 provides:
A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
The applicant must establish that its trade marks are registered. I am satisfied on the evidence before the Court that the applicant is the registered owner of Australian registered trade marks no. 949361 and no. 949362 and that trade mark no. 949361 consists of the words TWO MEN AND A TRUCK and trade mark no. 949362 consists of the device depicted at [13] above.
Both trade marks are registered from 3 April 2003 and are currently in force to 3 April 2013 in respect of services in class 39 which is “transportation, packing and storage of goods including removalist services; transportation and storage of waste including rubbish removal; rental of storage containers”.
I am satisfied on the evidence before me, in particular the affidavit evidence of Mr Kuipers and Ms Rubagotti, that the respondents have used the sign “Three Men & A Truck” (also in the form threemenandatruck.com.au), including in the form of the following representation of a truck on business cards, and in Yellow Pages and White Pages advertisements as a trade mark in relation to services in respect of which the applicant’s trade marks are registered:
(See the definition of sign in s.6 of the Trade Marks Act, s.7 in relation to what constitutes trade mark use and s.17 as to what is a trade mark and E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) AIPC 92 – 293 at [19] per Flick J).
On 11 May 2007 the first respondent adopted the corporate name “Three Men & A Truck / Removals and Storage Pty. Ltd.” and has continued under that name since that time. The first respondent has printed, issued and used business cards in the form of the above representation of a truck (except for the omission of the words “Green Valley” in the bottom left-hand corner) on which the words “Three Men & A Truck” appear in a different typeface to the other words and figures.
Some time prior to August 2007 the first respondent placed an advertisement in the online edition of the Australian Yellow Pages telephone directory under the name or mark “Three Men & A Truck” in the category “Furniture Removals and Storage”. As at 27 November 2007 the online Yellow Pages advertisement was in a form which contained the above representation of a truck with the name and three figures and the domain name on it followed in dot points by the words “office removals”; “household removals”; “door-to-door service”; “friendly”; “reliable”; “clean trucks”; and thereafter the words “local and country” and “no job too big or too small – just call” with contact telephone numbers. The evidence is that that advertisement remained current at 5 August 2008 but by that time it took the form of the name “Three Men & A Truck”, address and contact details and the representation of a truck. Some time prior to 27 November 2007 the first respondent placed an entry in the online edition of the Australian White Pages telephone directory under the name “Three Men & A Truck Removal (sic) & Storage Pty Ltd”.
The evidence also establishes that at some time during 2007 the first respondent placed an advertisement in the print edition of the Sydney Yellow Pages under the name or trade mark “Three Men & A Truck / Removals and Storage Pty Ltd” in the category “Furniture Removals & Storage” and that that advertisement, which includes the representation of a truck, remains current.
In addition, some time prior to August 2007 the first respondent registered the domain name “threemenandatruck.com.au” which it has advertised and promoted on business cards and in the online and print Yellow Pages advertisements. The domain name appears on the representation of a truck.
The affidavit evidence also establishes that the second respondent registered the New South Wales business name “Three Men & A Truck / Removals & Storage” on 11 November 2005 and kept that registration current until 16 May 2008. The second respondent is the director, founding and sole shareholder in the first respondent. I accept on the evidence before the Court that he caused the first respondent to be incorporated and also caused the domain name to be registered and listed himself as the registrant contact name on the domain name register, providing an email address in his name as the “registrant contact email” in respect of that domain name.
It is notable that the domain name registration and the online edition of the Australian Yellow Pages contain use of the mark “Three Men & A Truck” and “threemenandatruck.com.au” not just the first respondent’s full corporate name.
The applicant acknowledges that as at 5 August 2008 the online White Pages contains no listing for the first and second respondents under the names referred to above and that the domain name registry website reveals that there was a modification of the domain name registration on 27 March 2008, although the nature of the modification is not apparent. It is also acknowledged that actual use of the domain name as a website appears to have ceased by 5 August 2008. It can be inferred from the evidence before the Court that the respondents, in particular the second respondent, have taken some steps to remove the website but have not removed the registration of the domain name.
I find on the evidence before the Court that both respondents have used the name or mark “Three Men & A Truck” in Australia during the period of at least August 2007 to August 2008.
I am also satisfied on the evidence before me that such use was in relation to furniture removals and storage which are services in respect of which the applicant’s trade marks are registered. In that respect I note that for the purposes of the registration of the business name the second respondent specified that his business was “house and business removals and storage”; that the business cards and the White Pages entry include the words “removals and storage” and “removal and storage” respectively and the Yellow Pages advertisements are in the category “Furniture Removals and Storage”. In addition, the earlier version of the Yellow Pages advertisement specified that the first respondent’s services included “office removals, household removals, door-to-door service”.
“Substantially identical” or “deceptively similar”
The critical question under s.120 of the Trade Marks Act is whether use of the words or name “Three Men & A Truck” and/or the mark consisting of the representation of a truck as trade marks infringes the applicant’s trade marks, in as “substantially identical with” or “deceptively similar to” either or both of the applicant’s registered trade marks.
“Substantially identical with” is not defined in the Trade Marks Act. Deceptively similar is defined in s.10 as follows:
A trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The applicant invited the Court to find that the marks were substantially identical, but submitted that the Court could be satisfied that “Three Men & A Truck” was at least deceptively similar to both of the applicant’s marks and may reach the level of being substantially identical to the word trade mark no. 949361.
Whether marks are substantially identical is a question of fact to be determined by a side by side comparison of the marks (The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414 per Windeyer J at first instance). As his Honour stated the similarities and differences should be noted and the importance of these assessed “having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison” (and see Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107 at [38]).
Such a comparison reveals that there are significant differences in style and composition between the applicant’s trade mark device no. 949362 and the sign used by the respondents consisting of the representation of a truck incorporating a combination of words and images, notwithstanding the similarities in the underlying concept of a truck bearing words referring to a number of “men and a truck” and the incorporation in the sign of representations of two men and three men respectively. Judging “by the eye alone”, as Windeyer J suggested was proper for the determination of substantial identity, a total impression of similarity does not emerge from the comparison of the two marks. They are not substantially identical.
Nor am I satisfied that on a side by side comparison of either of the marks “Three Men & A Truck” (or “threemenandatruck”) in any of the guises described above and the word mark TWO MEN AND A TRUCK a total impression of similarity emerges, such that the word marks can be said to be substantially identical.
However in determining whether a mark so nearly resembles another that it is likely to deceive or cause confusion the marks are not to be compared side by side (see The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited at 415 per Windeyer J and Australian Woollen Mills Limited v F. S. Walton and Company Limited (1937) 58 CLR 641 at 658).
As Allsop J stated in Anheuser-Busch Inc v Budejovický Budvar, Národní Podnik And Others (2002) 56 IPR 182 at [143]:
The question of deceptive similarity must be judged by a comparison different from the side by side comparison undertaken to assess substantial identity; the question being the likelihood of deception or confusion from a recollection or impression of the registered mark. Thus, a side by side comparison is inadequate, and too narrow a test. The comparison is between, on the one hand, the impression based on recollection of the registered mark used in a normal or fair manner that persons of ordinary intelligence and memory would have, and, on the other hand, the impressions that such persons would get from the impugned mark as it appears in the use complained of.
In attempting to estimate the impression produced in the minds of such persons of ordinary intelligence and memory, as Dixon and McTiernan JJ stated in Australian Woollen Mills Limited v F. S. Walton and Company Limited at 658:
The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.
This test allows for a degree of “imperfect recollection” (see Crazy Ron’s Communications Pty Ltd and Others v Mobileworld Communications Pty Ltd and Others (2004) 209 ALR 1 at [21] per Moore, Sackville and Emmett JJ. As French J (as he then was) stated in Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [50] by reference to the principles adopted by Kitto J in Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited (1954) 91 CLR 592 at 594 – 5 it is necessary to show “a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.”
Relevantly to the present case French J went on to state in Woolworths at [50] that:
A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source
Moreover, having regard to the fact that people tend to remember the general impression made by a mark, a mark which appears to be part of a “family” of marks may be thought to be likely to deceive or cause confusion because of the risk that people will see it as being associated with the earlier marks (as discussed in John Fitton & Co Ltd's Application (1949) 66 RPC 110. This principle is apposite in considering whether persons may be caused to wonder about whether furniture removals and storage services of the first respondent come from the same source of those of the applicant given the common use of a number of “men and a truck”.
In considering whether there is a likelihood of deception or confusion it is necessary to take all the surrounding circumstances into consideration, including as French J indicated in Registrar of Trade Marks v Woolworths at [50], the circumstances in which the marks are used, the services bought and sold and “the character of the probable acquirers” of the services. Moreover if the marks in question share a common element they may appear to be related, especially if the common element is particularly prominent or memorable (see Alan Chong v Tonka Corporation [1994] ATMO 27). Hence it is relevant to have regard to whether the “idea” of the mark Three Men & A Truck replicates that represented by the mark Two Men and a Truck and/or the device mark.
It is necessary to determine first whether the marks are visually and orally similar. It is apparent that the word marks “Two Men and
a Truck” and “Three Men & a Truck” are visually and orally similar. The major component, or what may be seen as the common element consisting of the words “Men and a Truck” are identical and they differ only in the manner of representation of the word “and”. As the applicant submitted, it is relevant to have regard to the fact that the phrases are approximately the same length and convey the same idea of removal services provided by men and a truck. Both convey an idea of simplicity and conjure up a similar image, so that even if a customer did notice the difference between “Two” and “Three” such customer may be caused to wonder whether that was simply a variation in the number of workers provided by the same source.
It is also relevant to have regard to the fact that the services in issue consist of domestic and office removals and storage. In that context it can be inferred that many customers will not necessarily have dealt with removalists on a frequent basis and that such services may be purchased by reliance on sources of information other than personal knowledge, such as recommendation or advertisement. Confusion is clearly more likely if potential purchasers are not intimately familiar with the services and the entities that supply them. I am satisfied that a customer with an imperfect recollection of the applicant’s trade mark, which might be based on a recommendation, on seeing one of the applicant’s trucks bearing the trade mark on its side, an advertisement, or past use of the applicant’s services, who saw the respondents’ word mark or representation of a truck bearing the words “Three Men & A Truck” and the domain name “threemenandatruck.com.au” would be likely to be misled into thinking that the services came from the same source. While there are differences in the pictorial representations on the device, in particular as to the number of men and the manner in which they are portrayed, both devices show words and figures as if on the curtain of a removal truck. A comparison of the device mark and the representation of a truck does not remove the deceptive similarity. Both use the same idea of showing the words as if written on the curtain of a removal truck. Both depict the respective number of “men”, albeit that the style and composition differs.
It is not necessary that an actual probability of deception be established (Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited at 595 per Kitto J and Registrar of Trade Marks v Woolworths at [50] per French J). I am of the view that the impression that would be left in the mind of a person of ordinary intelligence is such that the person would be caused to wonder whether the services came from the same source.
Counsel for the applicant referred to a number of reported cases in which marks differed by a number, but were nonetheless held to be deceptively similar. While each case must be decided by comparison of the marks in issue, it is nonetheless notable that it has been held that “8-Up” is deceptively similar to “7-UP” (The Seven Up Company v O.T. Limited and Another (1947) 75 CLR 203 per Latham CJ at 214 – 215) and “Security Group III” is deceptively similar to “Group 4 Securitas” Group 4 Securitas NV v Stonepack Pty Ltd (2000) 49 IPR 397. “G-2” was also said to be deceptively similar to “G-11” in Sindar Corporation Application (1956) 26 AOJP 2248.
Insofar as it might be thought that the marks in question were descriptive of a characteristic of the services provided, the mark “Two Men and a Truck” has attained factual distinctiveness enabling it to be registered. The use of the similar sign “Three Men & A Truck” suggests a trade connection between the source of the services and hence indicates origin rather than simply being used in a descriptive sense (see The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited at 422).
While the distinction between the word “Two” and the word “Three” is sufficient to prevent a finding that the two marks are substantially identical on a side by side comparison (The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414), having regard to all the circumstances I am satisfied that Three Men & A Truck is deceptively similar to both of the applicant’s marks.
The term trade mark appears in s.120 of the Trade Marks Act. The definition of trade mark in s.17 incorporates a requirement that the infringing use of the sign as a trade mark be “in the course of trade”. Trade has been held to encompass acts of selling, advertising and promotion (see The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited) and all operations of a commercial character by which a trader provides to customers for reward some kind of goods or services (Ransom (Inspector of Taxes) v Higgs [1974] 1 WLR 1594 at 1600). The evidence of the ways in which the mark has been used by the respondents satisfies this requirement. Hence it is not necessary to determine whether “mere” use of a domain name is use of a sign as a trade mark in the sense of indicating origin of the services rather than simply an address. I note however that the fact that the business name is incorporated within the domain name would create in the minds of the ordinary member of the public an association or connection between the domain name and the business such as to indicate the requisite use.
On the evidence before me I am satisfied that use of “Three Men & A Truck” in each of the instances described above by the respondents constitutes an infringement of each of the applicant’s registered trade marks.
The settlement agreement
On 14 May 2008 the applicant was given leave to file an amended application and statement of claim to add a claim seeking to enforce an agreement said to have been reached between the parties in settlement or compromise of these proceedings.
Any such agreement can be seen as an attempt to resolve the controversy in relation to which the Court has jurisdiction, in that it would be to settle all of the matters in dispute including the trade practices claims as well as the infringement of trade marks claims. Hence, as Lindgren J suggested in Needlework Warehouse Pty Ltd (ACN 101 863 709) v Chansonette Pty Ltd (ACN 092 507 938) and Another (2005) 226 ALR 252 at [44] – [45] “It is within the accrued jurisdiction of the Court to enforce such a compromise agreement” as part of the same matter (and see Macteldir Pty Ltd v Dimovski and Another (2005) 226 ALR 773 at [43] – [44] and [59] and [63] per Allsop J).
It is necessary first to determine whether there is such an agreement. In that respect reliance is placed on a number of documents, including evidence of settlement negotiations. While s.131 of the Evidence Act 1995 (Cth) excludes evidence of settlement negotiations, in this case the exception in s.131(2)(f) applies. The proceeding in which it is sought to adduce the evidence “is a proceeding to enforce an agreement between the persons in dispute to settle the dispute, or a proceeding in which the making of such an agreement is in issue”. Further, the appearance of the words “without prejudice” on letters between the parties or their legal representatives does not prevent such letters being received as part of the evidence that an agreement of compromise was reached (see Needlework Warehouse at [84] and cases cited therein ).
I accept that the evidence before the Court establishes that Lisa Paraska, the former solicitor for the respondents, was retained to act as solicitor for the respondents in or about early February 2008. As recorded in a letter of 12 March 2008 from Banki Haddock Fiora (the solicitors for the applicant) to Ms Paraska, in a telephone conversation of that day between Ms Paraska and Ms Robb of the applicant’s solicitors, Ms Paraska conveyed an offer to settle these proceedings on the basis that the respondents change the name of their business to a name which did not include and was not deceptively similar to the name “Two Men and A Truck” in return for the applicant meeting the costs of deregistration of their current business and company names. As that letter stated, the applicant indicated that it accepted that offer, but added details such as the amount of costs to be met and the time within which certain steps were to be taken, including signature of undertakings by the second respondent. These more detailed terms were formally accepted by the respondents on 14 April 2008 when Mr O’Leary signed a document headed “Undertakings” which incorporated undertakings to take agreed steps. I am satisfied that the parties to the proceedings reached an agreement on this basis. It is apparent from Ms Paraska’s affidavit evidence that the respondents’ solicitor accepted that a concluded agreement has been reached. In a conversation between the second respondent and Ms Paraska of 28 April 2008 Mr O’Leary did not deny that he made the agreement and had promised to do certain things. However he stated that he was too busy to do what he had undertaken to do.
As part of the agreement the applicant was to pay certain amounts to the respondents within seven days of the last of the agreed events occurring. I accept the evidence of Mr Kuipers that the applicant has offered and remains ready to pay the amounts which are set out in the letter of 12 March 2008, subject to the first and second respondents’ full compliance with the undertakings.
I also accept that the second respondents’ business name of Three Men & A Truck / Removals and Storage was removed from the register on 16 May 2008 and the listing for the first respondent has been removed from the online White Pages (matters provided for in the undertakings) consistent with the conclusion that an agreement was reached (see Brambles Holdings Ltd v Bathurst City Council (2001) 53 NSWLR 153 at [25] per Heydon JA). Otherwise there is no evidence before the Court that the second respondent has complied with the undertakings. I accept Mr Kuipers’ evidence that to the best of his knowledge the respondents have not done so. On the basis of such non-performance the respondents have breached the agreement.
As counsel for the applicant acknowledged, it is unfortunate that this matter was not finally resolved without the need for these proceedings. However, in all the circumstances the applicant seeks that the contract be specifically enforced on the basis that there is a valid enforceable agreement and certainty as to the steps to be taken which the respondents have failed to perform and that once those steps are taken the matter will be at an end with no requirement for further supervision by the Court.
It was acknowledged that in the amended application the applicant had sought damages for breach of the agreement. However the applicant has submitted and I accept that an assessment of damages would be extremely difficult and imprecise and that damages would not be an adequate remedy.
It is relevant to note that the orders in relation to specific performance sought by the applicant reflect (with appropriate modifications to take into account what has been done) the obligations included in the undertakings signed by the second respondent. The applicant seeks to enforce the settlement agreement according to its terms. There is nothing in the evidence before the Court to suggest that enforceability of this agreement was intended to be subject to the parties negotiating and executing a form of deed. There is no suggestion that the undertakings in this case were intended to be undertakings to the Court. I also note that the applicant does not seek a declaration as to the terms of the agreement.
I note that the respondents were given notice (by service of the amended application and statement of claim) of the fact that the applicant intended to seek specific performance. Given the nature of the orders sought, the fact that the agreement does not raise any matter extraneous to the substantive proceedings and that the respondents have not appeared to dispute any of the facts, it is appropriate to enforce the agreement in the present proceeding without the need for the commencement of separate proceedings (see Needlework Warehouse Pty Ltd at [80] – [82] per Lindgren J).
I am satisfied that the steps to be taken under the contract are sufficiently clear and defined to allow the Court’s orders to be conveniently expressed. In light of the nature of the agreement and on the evidence before the Court I consider it is appropriate that I should exercise my discretion to make orders for specific performance as sought by the applicant (and see s.15 of the Federal Magistrates Court Act).
Insofar as it is necessary to have regard to the possibility that either respondent may fail to perform any of the obligations provided for in the proposed orders, an order should be made for a Registrar of the Court to be appointed to do such acts as may appropriately be done by a person other than the second respondent under Order 37 Rule 3 of the Federal Court Rules (which Order is applicable in this Court by virtue of Rule 1.05(3) of the Federal Magistrates Court Rules). Ms Paraska’s affidavit evidence provides a basis for concluding that there is a danger that the respondents would not voluntarily do the things required under any such order and hence recourse to Order 37 Rule 3 is justified.
The applicant also seeks an injunction against further infringement of its trade marks, but does not seek a declaration of infringement. It does seek an order for delivery up of materials such as business cards in support of the injunction. Counsel for the applicant told the Court that the applicant proposed to waive any right to damages as it is seeking specific performance of the settlement agreement as the appropriate remedy.
I consider that it is appropriate to grant the injunctive relief and make the order for delivery up of promotional and other materials bearing the name or mark Three Men & A Truck. It is also appropriate to make the orders for specific performance of the contract as sought by the applicant (omitting reference to those steps which have already been taken by the respondents) and including a provision under Order 37 Rule 3.
The applicant also seeks an order that the respondents pay its costs of these proceedings in the sum of $15,000. The Court has the power under s.79 of the Federal Magistrates Act (and see Rule 21.02(2)(a)) to make such a fixed costs order and I consider that it is appropriate to do so in the circumstances of this case.
I certify that the preceding seventy (70) paragraphs are a true copy of the reasons for judgment of Barnes FM
Associate:
Date: 26 September 2008
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