Virgin Enterprises Ltd v Klapsas

[2001] FCA 1502

FEDERAL COURT OF AUSTRALIA

Virgin Enterprises Ltd v Klapsas [2001] FCA 1502

VIRGIN ENTERPRISES LIMITED v PETER KLAPSAS
N1089 of 2001

MADGWICK J
16 OCTOBER 2001
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N1089 of 2001

BETWEEN:	VIRGIN ENTERPRISES LIMITED APPLICANT
AND:	PETER KLAPSAS RESPONDENT
JUDGE:	MADGWICK J
DATE OF ORDER:	16 OCTOBER 2001
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.The Respondent, whether by himself, his servants or agents or otherwise, be restrained from conducting any business under or by reference to the names:

(i)“VIRGIN LIMOUSINES”;

(ii)“VIRGIN CAR RENTALS”;

(iii)any name which includes the name “VIRGIN” or any colourable imitation thereof,

without the licence of the Applicant.

2.The Respondent forthwith take all steps as are necessary or desirable to cancel the registration in his name of the business names:

(i)“VIRGIN LIMOUSINES”;

(ii)“VIRGIN CAR RENTALS”;

in each State or Territory of Australia in which those names are registered.

3.The Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing:

(i)registered trade mark no. 486336;

(ii)registered trade mark no. 486340;

(iii)registered trade mark no. 751188;

(iv)the Virgin Registered Trade Marks or any of them (as that term is defined in the Statement of Claim),

(collectively, the “Registered Trade Marks”).

4.The Respondent, whether by himself, his servants or agents or otherwise, be restrained from representing by any means whatsoever, in trade or commerce between any of New South Wales, Victoria and the Australian Capital Territory or in trade or commerce in the Australian Capital Territory that:

(i)he is or is connected with the Applicant or one of the companies in the Virgin Group of Companies (as that term is defined in the Statement of Claim); and/or

(ii)any business conducted by him is the Applicant’s business or a business of one of the companies in the Virgin Group of Companies; and/or

(iii)any business conducted by him is one that is connected in trade with the Applicant or one of the companies in the Virgin Group of Companies; and/or

(iv)any business conducted by him is conducted with the permission or under the control or supervision of the Applicant; and/or

(v)his services are the Applicant’s or services of one of the companies in the Virgin Group of Companies; and/or

(vi)his services are connected in trade with the Applicant or one of the companies in the Virgin Group of Companies; and/or

(vii)his services are or will be supplied with the permission or under the control or supervision of the Applicant.

5.The Respondent, whether by himself, his servants or agents or otherwise, be restrained from passing off by any means whatsoever:

(i)himself as being or being connected with the Applicant or one of the companies in the Virgin Group of Companies; and/or

(ii)any business conducted by him as the Applicant’s business or as a business of one of the companies in the Virgin Group of Companies; and/or

(iii)any business conducted by him as one that is connected in trade with the Applicant or one of the companies in the Virgin Group of Companies; and/or

(iv)any business conducted by him as one conducted with the permission or under the control or supervision of the Applicant; and/or

(v)his services as being services connected in trade with the Applicant or one of the companies in the Virgin Group of Companies; and/or

(vi)his services as being services supplied, or to be supplied, with the permission or under the control or supervision of the Applicant.

6.The Respondent forthwith take all steps as are necessary or desirable to effect withdrawal of all advertisements and listings (including, without limitation, proposed advertisements and listings) from all telephone directories in Australia (including, without limitation, all White Pages and Yellow Pages directories) whether maintained in print or electronic or other form including, without limitation, directories which may be accessed by means of the Internet for any business conducted under or by reference to any of the following names:

(i)“VIRGIN LIMOUSINES”;

(ii)“VIRGIN CAR RENTALS”;

(iii)any name which includes the name “VIRGIN” or any colourable imitation thereof.

7.The Respondent deliver up to the Applicant, or its nominee, for destruction all labels, tickets, catalogues, price lists, brochures, business cards, letterhead, signage and all other documents and materials in the possession, power, custody or control of the Respondent or his servants or agents bearing:

(i)the name or mark “VIRGIN LIMOUSINES”;

(ii)the name or mark “VIRGIN CAR RENTALS”;

(iii)any name or mark which includes the name “VIRGIN”;

(iv)any of the Registered Trade Marks, with or without any other names or marks;

(v)any other names or marks which are substantially identical with or deceptively similar to any of the Registered Trade Marks.

8.The Respondent pay the Applicant’s costs of and incidental to the proceedings.

9.The Applicant has liberty to apply, on 48 hours notice, in relation to the Respondent’s usage of mobile telephone number 0419 381 263 and as to any claim for mandatory orders for corrective advertising.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N1089 of 2001

BETWEEN:	VIRGIN ENTERPRISES LIMITED APPLICANT
AND:	PETER KLAPSAS RESPONDENT

JUDGE:	MADGWICK J
DATE:	16 OCTOBER 2001
PLACE:	SYDNEY

REASONS FOR JUDGMENT
(revised from transcript)

HIS HONOUR:

1. The applicant, by notice of motion, seeks default judgment against the respondent.  The respondent, who appeared personally at the first directions hearing, failed to appear at any further directions hearings or to comply with any orders made for the further conduct of the matter.  No defence has been filed.  In these circumstances, the applicant seeks to put its case and move the Court for a default judgment.

   Factual background

2. The applicant is a United Kingdom company which in recent years has become very well known in Australia and is the registered owner of various trademarks each comprising the word “Virgin”.  A good many of the trademarks involve the word “Virgin” being printed with a capital V which has on its left a stylised introductory flourish with the remaining letters of the word printed in lower case and in script which slopes to the right.

3. There are registered trademarks of these kinds in respect of services included in Class 39:  transport and distribution services by road; transportation of and arranging

   
   
   

   transportation of goods and of passengers by road; ground transport services; car and motor cycle hire; arranging of travel; and reservation services.

4. There is a considerable number of associated companies of the applicant, comprising altogether a group of companies and each of them carries on business using the name Virgin, or a name that includes and prominently uses that word.  The applicant controls and supervises the permitted use of these words and marks.  The Virgin group of companies and its founder, Sir Richard Branson, operate in a number of countries as well as Australia and have worldwide knowledge and a substantial and valuable reputation.  The word “Virgin” used in relation to a business has come to signify that that business is a business of at least one of the companies in the Virgin group.  The evidence suggests that each of the Virgin registered trademarks is well known in Australia.

5. Commencing on or about 16 February 2000 the respondent applied for and obtained registration in Victoria, the Australian Capital Territory and New South Wales of the business name “Virgin Car Rentals” for a business said to be in the nature of car rentals and “Virgin Limousines” for a business said to be in the nature of hire car.  Prior to the commencement of the proceedings the respondent had used, and the evidence is continues to use, as a trademark the name “Virgin Limousines”, in both a plain and a stylised script in relation to the provision of hire car services and likewise as a trademark the name “Virgin Car Rentals” in similar scripts in relation to the provision of car rental services.  The stylised script includes an introductory flourish with the left of the letter “V” and the balance of the letters in the word being printed in italics and therefore right sloping script.

   Consideration

6. The applicant relies upon advertisements in a Victorian newspaper of 28 July 2000 for Virgin Car Rentals and on the White Pages Online Internet Database for a business known as Virgin Limousines - Car Rentals, with an address in Newcastle in New South Wales. In my opinion, each of the said names and marks is deceptively similar to each of the applicant’s Class 39 registered trademarks and each of the other Virgin registered trademarks. In consequence the respondent has used as a trademark the names and marks “Virgin Limousines” and “Virgin Car Rentals” in ways that infringe the rights of the applicant under ss 120(1), (2) and/or (3) of the Trade Marks Act 1995 (Cth). In relation to s 120(3), the trade

   
   
   

   marks insofar as they include the word “Virgin” are well known in Australia and it seems to me that that is sufficient to draw an inference that the actual trade marks are well known in Australia.  A good deal of money and effort has been put by the applicant into promoting the various trade marks and the names of the marks sought to be used by the respondent would be likely to be taken as indicating a connection between the services of the respondent and of the applicant.  In my opinion, the interests of the applicant would be likely to be adversely affected. 

7. Further, by the respondent’s so using the names and marks in the manner referred to above it, members of the public could well believe that the respondent and/or his business is connected with the applicant or one of the companies in the Virgin group of companies.  Thus, the respondent has engaged in conduct in trade or commerce that is misleading or deceptive, or likely to mislead or deceive, thereby contravening the relevant sections of the Fair Trading Act 1987 (NSW), the Fair Trading Act 1999 (VIC), the Fair Trading Act 1992 (ACT) and in respect of conduct engaged in the Australian Capital Territory s 52 of the Trade Practices Act 1974 (Cth).

8. The respondent’s conduct also, in my opinion, amounts to his having passed himself off as connected with the applicant and/or having passed his business off as a business connected with the applicant.

9. At the very least the respondent has clearly threatened the aforesaid legal wrongs against the applicant.  On the one occasion he favoured the Court with his appearance and in telephone conversations with the applicant’s solicitor, he asserted his right to engage in such conduct.  In my view it is a proper case for injunctive relief.  The respondent has been given due notice of the notice of motion for the relief now sought and of this hearing date.  He has failed to appear otherwise except on one occasion and it seems to me that the case can be appropriately dealt with under O 11 r 23 of the Federal Court Rules, for the respondent is in default in filing and serving a defence.

   Disposition

10. Accordingly, judgment will be given for the applicant against the respondent in the action.  Orders in accordance with paragraphs 1(a), (b), (c), (d), (e), (f), (h) and (j) of the amended notice of motion will be made.  The applicant will be given liberty to apply, on 48 hours notice, in relation to the respondent’s usage of mobile telephone number 0419 381 263 and as to any claim for mandatory orders for corrective advertising.

I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Madgwick.

Associate:

Dated:             25 October 2001

Counsel for the Applicant:	D Sibtain
Solicitor for the Applicant:	Coudert Brothers
No appearance by the Respondent
Date of Hearing:	16 October 2001
Date of Judgment:	16 October 2001