W Win Engineering Pty Ltd v Wiggins

Case [2016] FCA 967

FEDERAL COURT OF AUSTRALIA

W. Win Engineering Pty Ltd v Wiggins [2016] FCA 967

File number: NSD 346 of 2016
Judge: KATZMANN J
Date of judgment: 17 August 2016
Catchwords: COSTS — application for leave to file a notice of discontinuance and for respondent to pay applicant’s costs in a specified sum — respondent allegedly engaged in misleading or deceptive conduct, passing off and trade mark infringement — proceeding commenced after respondent failed to comply with signed undertakings — whether conduct of both parties reasonable or whether respondent’s conduct unreasonable — whether applicant would almost certainly have succeeded
Legislation:

Federal Court of Australia Act 1976 (Cth) s 43

Federal Court Rules 2011 (Cth) rr 26.12, 26.12(2), 26.12(7), 40.02(a), Sch 1
Cases cited:

Australian Securities Commission v Aust-Home Investments Ltd (1993) 44 FCR 194

Frankenburg v Famous Lasky Film Service, Ltd [1931] 1 Ch 428

Lo v Australian Community Pharmacy Authority [2013] FCA 639

One.Tel Ltd v Commissioner of Taxation (2000) 101 FCR 548

Re The Minister for Immigration and Ethnic Affairs; Ex parte Lai Qin (1997) 186 CLR 622

Société Anonyme Pêcheries Ostendaises v Merchants’ Marine Insurance Co [1928] 1 KB 750

State of Victoria v Sportsbet Pty Ltd (No 2) [2012] FCAFC 174

Date of hearing: Determined on the papers
Registry: New South Wales
Division: General Division
National Practice Area: Intellectual Property
Sub-area: Trade Marks
Category: Catchwords
Number of paragraphs: 56
Counsel for the Applicant: Mr A Jordan
Solicitor for the Applicant: Deutsch Partners
Counsel for the Respondent: The Respondent appeared in person

ORDERS

NSD 346 of 2016
BETWEEN:

W. WIN ENGINEERING PTY LTD

Applicant
AND:

LEONARD MARK WIGGINS

Respondent

JUDGE:

KATZMANN J

DATE OF ORDER:

17 AUGUST 2016

THE COURT ORDERS THAT:

1.Leave be granted to the applicant to file a notice of discontinuance.

2.The respondent pay the applicant’s costs in the amount of $16,854.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.


REASONS FOR JUDGMENT

  1. W. Win Engineering Pty Ltd (“W Win”) is an Australian company in the business of manufacturing and selling concrete pumping accessories and equipment in the construction and mining industries. Leonard Mark Wiggins is a young man who started a company called Win Engineering Pty Ltd in December last year after he quit the family business, Win United Pty Ltd. That company also supplies concrete pumping accessories. On 9 March this year W Win issued proceedings in this Court alleging that Mr Wiggins has infringed its registered trade mark, was passing off his business as its own business, was engaging in misleading or deceptive conduct in contravention of the Australian Consumer Law, and, by failing to honour signed undertakings, was in breach of a contract he had made with W Win. It sought various declarations and injunctions as well as damages or an account of profits.

  2. No defence was filed.

  3. On the first return date Mr Wiggins appeared in person and informed the Court that he had neither the money nor the inclination to…

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AGLC
W Win Engineering Pty Ltd v Wiggins [2016] FCA 967
Case
[2016] FCA 967
Decision Date

CaseChat Overview and Summary

In the case of W Win Engineering Pty Ltd v Wiggins, the plaintiff sought leave to discontinue the proceeding and for the defendant to pay its costs in a specified sum. The plaintiff alleged that the defendant had engaged in misleading or deceptive conduct, passing off, and trade mark infringement. The proceeding was commenced after the defendant failed to comply with signed undertakings. The court was required to decide whether the conduct of both parties was reasonable, whether the plaintiff would almost certainly have succeeded, and whether the plaintiff was entitled to the costs in the amount sought. The court found that the first two questions should be answered in the plaintiff's favour, but the third question should not be. The court awarded costs in the amount of $16,854, not the amount sought by the plaintiff. The court granted leave to the plaintiff to discontinue the proceeding and ordered the defendant to pay the plaintiff's costs in the amount of $16,854.

Orders

Orders of the court

1. Leave be granted to the applicant to file a notice of discontinuance.

2. The respondent pay the applicant’s costs in the amount of $16,854.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Three questions therefore arise for determination in this case. First, was the conduct of W Win reasonable and Mr Wiggins’ unreasonable? Second, is it almost certain that W Win would have succeeded? Third, if so, should costs be awarded in the amount sought? The first two questions should be answered in W Win’s favour, the third not.W Win’s evidence On Monday 1 February 2016 David Deutsch, the principal of Deutsch Partners, wrote a letter addressed to “Mr Leonard Wiggins trading as Win Engineering”. The letter was sent by email to lennie@winengineering.net. The letter began with a description of W Win’s position. It asserted that that since 1991 W Win has been “the leader in the manufacture and sale of concrete pumping accessories and equipment, servicing the construction and mining industries throughout Australia and internationally”; that its marks, brand, domain names and products were distinctive and carry substantial goodwill and reputation; that it was the owner and operator of “the well-known website” at and the registered holder of the domain name wwinengineering.com.au; and that it was the registered owner of a composite mark incorporating its name, reproduced in the letter. It then made a number of factual and legal allegations against Mr Wiggins the substance of which found its way into W Win’s pleading. In summary, those allegations were that Mr Wiggins’ use of the logo, the trading name “Win Engineering” and the domain name of the website he owned and operated was:·deceptively similar to W Win’s registered trade mark and therefore infringed its trade mark (s 120 of the Trade Marks Act);·likely to mislead and deceive consumers into believing that he was distributing W Win’s products when he was not and that his customers were using W Win’s products when they were not (in contravention of s 18 of the Australian Consumer Law):·representing that his products have the performance characteristics of W Win’s products and the approval of W Win (in contravention of ss 29(g) and (h) of the Australian Consumer Law); and·passing off his product as W Win’s, causing damage to W Win’s reputation and the goodwill of its brand. The letter demanded: (a)That the domain name winengineering.com.au located at the URL is immediately transferred to W Win Engineering.(b)That you immediately deregister the business names “Win Engineering” and “Win United Engineering”.(c)That you (including your agents) immediately cease and desist from using “Win Engineering” and/or “Win United Engineering” as a trade mark or name in advertising, promoting or supplying products relating to the classes of goods and services referred to in paragraph 1.5 [of the letter]. If you fail to do so our client will take such further action as may be advised.(d)That you (including your agents) immediately cease and desist from any logo that is substantially identical with or deceptively similar to W Win Engineering’s logo. Mr Wiggins was asked to undertake to attend to each of these matters “by executing” a copy of the letter and returning it to the firm by 5.00pm the following Friday. The “execution” clause was in these terms;I, Mark Leonard Wiggins, give to W Win Engineering Pty Ltd (ACN 054 669 911) the undertakings at paragraph 6(a)–(d) of the letter from W Win Engineering Pty Ltd to me dated 1 February 2016.…………………….Mark Leonard WigginsDate:

Decision

Reasons for decision

Accordingly, there should be a fixed costs order in W Win’s favour, not in the sum proposed, but in the amount of $16,854.Conclusion W Win should have leave to discontinue the proceeding and an order should be made that Mr Wiggins pay its costs in the amount of $16,854.

Ratio Decidendi

Legal Principle Established

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