Vulcan Australia Ltd v M L D'Astoli & Co Pty Ltd
[1995] FCA 579
•4 AUGUST 1995
CATCHWORDS
PRACTICE - Stay of proceedings - Trade mark infringement action - Whether to be stayed pending outcome of respondent's principal's application for registration of similar mark
Trade Marks Act 1955, ss.58(3), 64(1)
Berlei (UK) Ltd v. Bali Brassiere Co Inc [1970] RPC 469
Colibri Lighters Ltd v. Markt & Co (London) Ltd [1959] RPC 8
VULCAN AUSTRALIA LTD (ACN 004 253 605) and CHEF AUSTRALIA PTY LTD (ACN 004 419 210) v M L D'ASTOLI & CO PTY LIMITED (ACN 004 550 789) and
M L D'ASTOLI & CO PTY LIMITED (ACN 004 550 789) and VULCAN AUSTRALIA LTD (ACN 004 253 605) and CHEF AUSTRALIA PTY LTD (ACN 004 419 210) VG 557 of 1993
COURT:Sundberg J
PLACE:Melbourne
DATE:4 August 1995
IN THE FEDERAL COURT OF AUSTRALIA )
VICTORIA DISTRICT REGISTRY ) No VG 557 of 1993
GENERAL DIVISION )
BETWEEN:VULCAN AUSTRALIA LTD (ACN 004 253 605) and CHEF AUSTRALIA PTY LTD (ACN 004 419 210)
Applicants
AND:M L D'ASTOLI & CO PTY LIMITED (ACN 004 550 789)
Respondent
M L D'ASTOLI & CO PTY LIMITED (ACN 004 550 789)
Cross-Claimant
AND:VULCAN AUSTRALIA LTD (ACN 004 253 605) and CHEF AUSTRALIA PTY LTD (ACN 004 419 210)
Cross-Respondent
COURT:Sundberg J
DATE:4 August 1995
PLACE:Melbourne
MINUTES OF ORDER
The Court orders that:
The respondent's application for a stay of the proceeding pending determination of Trade Mark Application No. A587560 be dismissed.
The respondent pay the costs of the application.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA )
VICTORIA DISTRICT REGISTRY ) No VG 557 of 1993
GENERAL DIVISION )
BETWEEN:VULCAN AUSTRALIA LTD (ACN 004 253 605) and CHEF AUSTRALIA PTY LTD (ACN 004 419 210)
Applicants
AND:M L D'ASTOLI & CO PTY LIMITED (ACN 004 550 789)
Respondent
M L D'ASTOLI & CO PTY LIMITED (ACN 004 550 789)
Cross-Claimant
AND:VULCAN AUSTRALIA LTD (ACN 004 253 605) and CHEF AUSTRALIA PTY LTD (ACN 004 419 210)
Cross-Respondent
COURT:Sundberg J
DATE:4 August 1995
PLACE:Melbourne
REASONS FOR JUDGMENT
SUNDBERG J:
In December 1993 Vulcan Australia Ltd. and Chef Australia Pty. Ltd. ("Vulcan") commenced proceedings against M.L. D'Astoli Pty. Ltd. ("D'Astoli") for declarations that the marketing, distribution, offering for sale and selling by D'Astoli of cooking appliances
not manufactured by the Applicants, as "Vulcan" appliances, infringes Vulcan's rights in the registered trade mark "Vulcan", contravenes s.59 and other provisions of the Trade Practices Act, and constitutes the tort of passing off ("the infringement proceeding"). Vulcan also seeks injunctions and damages.
D'Astoli has applied for a stay of the infringement proceeding pending the determination of Trade Mark Application No. A587560 made by Hobart Corporation ("Hobart") in 1992 in respect of the name "Vulcan" ("the stay application" and "the trade mark application"). The Trade Marks Office accepted the trade mark application in April 1995 and it was advertised in the Official Journal on 4 May 1995. In July 1995 Vulcan, under its new name Southcorp Manufacturing Pty. Ltd. ("Southcorp"), gave notice of opposition to the trade mark application.
In support of the stay application D'Astoli contends that it is Hobart's agent, and that if Hobart's trade mark application is successful, D'Astoli will have a defence under s.58(3) and s.64(1)(e) of the Trade Marks Act 1955 to the infringement proceeding. Section 58(3) provides in part:
Where 2 or more persons are proprietors of registered trade marks which are substantially identical or deceptively similar, whether for the same goods or services or other goods or services, rights of exclusive use of either of those trade marks are not ... acquired by any 1 of those persons as against any other of those persons by registration of the trade marks ....
Section 64(1) lists a number of acts that do not constitute infringement of a trade mark. One of them is
(e)the use of a trade mark, being one of 2 or more registered trade marks which are substantially identical, in exercise of the right to the use of that trade mark given by registration as provided by this Act.
Where a person is sued in respect of the use of a mark which is the subject of an application by him to register, the later registration will date back to the date of the application to register, and will provide a complete defence to the action. Accordingly, the defendant can apply for a stay of the infringement proceedings until his trade mark application has been decided. See Halsbury's Laws of England 4th ed., vol.48, par.274, Kerly's Law of Trade Marks and Trade Names 12th ed. (1986), par.15-24 and Shanahan, Australian Law of Trade Marks and Passing Off (1990), p.352. A stay will be granted only where the interests of justice, taking into account the claims of both parties, so require: Berlei (U.K.) Ltd. v. Bali Brassiere Co. Inc. [1970] R.P.C. 469, at p.477. Vulcan has a prima facie right to pursue the infringement proceeding, and the onus is on D'Astoli to show that the interests of justice would be best served by the grant of a stay.
The interests of justice in the present case favour the refusal of the stay applied for. The parties differ as to the time it is likely to take for the trade mark application to be determined, the estimates ranging from twelve months from the date of the advertisement of acceptance to two and a half years. Vulcan relies on evidence from Mr. Ryan, a solicitor and patent attorney who has been a registered patent attorney
since 1958. He has had extensive experience in trade mark matters involving both the Trade Marks Office and the Courts. He has conducted and been responsible for the conduct of many trade mark oppositions. He has surveyed the oppositions conducted by his firm in recent years and has sworn that in a sample of fourteen cases in which the evidence was completed and the matter determined, the average time from the filing of notice of opposition to determination was 38 months. One case took 72 months, and another 77 months. If these two are excluded, the average time was 32 months. The shortest time in the cases surveyed was 16 months. Mr. Ryan then pointed out that there was the possibility of appeals to this Court that would extend the time. Having regard to the fairly advanced stage reached by the infringement proceeding, which as I have said commenced in December 1993, I do not think it in the interests of justice to put that proceeding on hold for 18 months, and very likely longer, while the trade mark application is processed.
In exercising my discretion to refuse a stay I have also taken into consideration the fact that D'Astoli is not in control of the trade mark application. That was a matter thought relevant in Colibri Lighters Ltd. v. Markt & Co. (London) Ltd. [1959] R.P.C. 8, at p.11. D'Astoli sought to counter this consideration by tendering a letter from Vulcan-Hart Company of Louisville, Kentucky in the United States of America which states that "we shall take all reasonable steps to expedite the preparation of evidence in answer and the hearing of the opposition in the Trade Marks Office". I do think this letter answers the fact that D'Astoli is not in control of the trade mark application. The undertaking is not given by Vulcan, but by Vulcan-Hart Company, which I was told was a division of an American entity associated with Vulcan/Southcorp. Further, neither that division nor the American entity is amenable to the control of this Court.
I have also taken into account the fact that during the lengthy stay period sought D'Astoli will be free to use the mark the subject of the infringement proceeding. D'Astoli has offered no undertaking that will protect Vulcan's position during that period. I have also borne in mind that the infringement proceeding is coupled with claims of misleading and deceptive conduct and passing off which must be determined whatever happens to the trade mark part of the infringement proceeding.
Thus far I have assumed in favour of D'Astoli that the relation of principal and agent exists between Hobart and D'Astoli, so that if the trade mark application succeeds D'Astoli will be able to rely on any relevant defences available to Hobart. The evidence of an agency that would entitle D'Astoli to rely on Hobart's registration is uncertain. Counsel for D'Astoli relied on an exclusive licence agreement made in 1959 between Vulcan-Hart Corporation and the Australian company Sterlic Pty. Ltd., pursuant to which Sterlic would manufacture goods of Vulcan-Hart Corporation. But that agreement came to an end in 1990 when, according to a statutory declaration of Henry Coletti made 14 February 1995 and forming part of an exhibit to an affidavit filed on D'Astoli's behalf, it was decided that D'Astoli would simply be an agent for Vulcan-Hart Corporation's appliances and that no manufacture of Vulcan-Hart Corporation's products would be carried out in Australia. That is a rather flimsy support for D'Astoli's contention that it is entitled to rely on any registration Hobart might secure.
For the foregoing reasons I exercise my discretion to refuse the stay application.
I certify that this and the preceding 5 pages are a true copy of the reasons for judgment of the Honourable Justice Sundberg
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Associate
4 August 1995
Counsel for the Applicant: G C McGowan
Solicitors for the Applicant: Davies Ryan De Boos
Counsel for the Respondent: B J Hess
Solicitors for the Respondent: Mahony Galvin Rylah
Date of Hearing: 28 July 1995
Place of Hearing: Melbourne
Date of Judgment: 4 August 1995
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