Wang v Anying Group Pty Ltd

Case [2011] FCA 1196

FEDERAL COURT OF AUSTRALIA

Wang v Anying Group Pty Ltd [2011] FCA 1196

Citation: Wang v Anying Group Pty Ltd [2011] FCA 1196
Parties:

HUA WEI WANG, XINYING PTY LTD (ACN 118 548 977) and NEW CENTURY 2001 PTY LTD TRADING AS ANYING SYDNEY COMPANY (ACN 114 661 568) v ANYING GROUP PTY LTD (ACN 126 282 657), YANYAN SUN and YUN CHEN;
ANYING GROUP PTY LTD (ACN 126 282 657), YANYAN SUN and YUN CHEN v HUA WEI WANG, XINYING PTY LTD (ACN 118 548 977), NEW CENTURY 2001 PTY LTD TRADING AS ANYING SYDNEY COMPANY (ACN 114 661 568), REGISTRAR OF TRADE MARKS, CHUANG WANG and ANYING INTERNATIONAL FINANCIAL PTY LIMITED (ACN 105 067 990)
File number: NSD 768 of 2008
Judge: FOSTER J
Date of judgment: 21 October 2011
Catchwords:

TRADE MARKS – whether one of three applicants was the owner of a registered trade mark comprising a word, a logo and several Chinese characters – whether, in the event that that applicant was not the owner of that trade mark, the trade mark should be cancelled pursuant to s 88 of the Trade Marks Act 1995 (Cth)

TRADE PRACTICES – whether, by using a trade mark and trade name identical to those used by one or more of the applicants, a corporation was guilty of misleading and deceptive conduct and misrepresentation in contravention of s 52 and s 53(d) of the Trade Practices Act 1974 (Cth) and the tort of passing off – whether those individuals responsible for establishing and managing that corporation should, in the circumstances of the case, be held liable as accessories to the contraventions by the corporation pursuant to s 75B of the Trade Practices Act 1974 (Cth)

Legislation: Corporations Act 2001 (Cth), s 109X(1)
Fair Trading Act 1987 (NSW), s 42, s 43
Fair Trading Act 1999 (Vic), s 8A, s 9
Trade Marks Act 1995 (Cth), ss 44(3)(b), 58, 62, 62A, 88, 122(1)
Trade Practices Act 1974 (Cth), ss 51AA, 51AC, 52, 53, 75B
Cases cited: Australian Competition and Consumer Commission v Allphones Retail Pty Limited (No 2) (2009) 253 ALR 324 cited
Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171 applied
Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 applied
Data Access Corporation v Powerflex Services Pty Ltd (1999) 202 CLR 1 applied
Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 followed
James v Ash Electrical Services Pty Ltd (2008) 73 NSWLR 95 applied
James North (Aust) Pty Ltd v Blundstone Pty Ltd (1978) 1b IPR 596 followed
Jin Xin Investment and Trade (Aust) Pty Ltd v ISC Property Pty Ltd (2006) 196 FLR 350 cited
Yorke v Lucas (1985) 158 CLR 661 applied
Dates of hearing: 28–30 June 2010, 1 July 2010, 1–2 September 2010
Place: Sydney
Division: GENERAL DIVISION
Category: Catchwords
Number of paragraphs: 147
Counsel for the Applicants/First, Second and Third Cross-Respondents: Mr C Harris SC
Solicitor for the Applicants/First, Second and Third Cross-Respondents:

Continue reading Wang v Anying Group Pty Ltd

Sign in free to access the full text

Details
AGLC
Wang v Anying Group Pty Ltd [2011] FCA 1196
Case
[2011] FCA 1196
Decision Date

CaseChat Overview and Summary

The case of Wang v Anying Group Pty Ltd involved multiple parties and complex disputes regarding the ownership of a registered trade mark and allegations of misleading and deceptive conduct under the Trade Practices Act 1974 (Cth). The central dispute revolved around the ownership of a trade mark, which included a word, a logo, and several Chinese characters. The court was tasked with determining whether one of the applicants was the rightful owner of this registered trade mark and whether the trade mark should be cancelled if it was found that the applicant was not the owner. Additionally, the court had to decide if the use of the trade mark by Anying Auburn constituted misleading and deceptive conduct under the Trade Practices Act, and whether the individuals responsible for managing Anying Auburn were liable for these actions.

The legal issues that the court needed to resolve included the validity of the ownership claims made by the applicants, the effectiveness of the assignments and licences of the trade mark, and the applicability of statutory provisions that could lead to the cancellation of the trade mark. The court also needed to assess whether Anying Auburn's use of the trade mark amounted to misleading and deceptive conduct under the Trade Practices Act and whether the individuals involved were liable under the Act. The reasoning of the court involved a detailed examination of the evidence and documentation provided, including Deeds, licence agreements, and other relevant transactions.

The court found that Harry Wang did not misrepresent the future use of the trade mark as claimed. It concluded that the registered trade mark must be cancelled as Anying Auburn was not the owner. The court held that New Century was entitled to relief against Anying Auburn for contraventions of the Trade Practices Act and passing off, and also entitled to relief against Andrew Chen and Yan Yan Sun under section 75B of the Trade Practices Act. All other claims were rejected. The court proposed to direct the parties to prepare Short Minutes of Order to give effect to these reasons, including a retrospective order for the separate trial of all questions other than the parties' claims for pecuniary relief, and to provide directions for the future conduct of the matter. The parties were also given an opportunity to address submissions on costs.

The court's decision was based on the lack of evidence supporting the claims of misrepresentation and the ineffectiveness of the assignments and licences of the trade mark. It found that Anying Auburn was not the owner of the trade mark and that the Share Buy-Back Agreement and internal changes at An Ying Melbourne were valid. The court ordered that the parties confer to agree on Short Minutes of Order and, in the absence of complete agreement, submit their suggested orders and written submissions by a specified date. All questions of costs were reserved for argument in light of the final orders.

Orders

Orders of the court

1. Within fourteen (14) days of this day (21 October 2011), the legal representatives of the parties confer and, to the extent that it is possible, agree on Short Minutes of Order to give effect to these Reasons for Judgment.

2. In the absence of complete agreement amongst the parties as to those orders, each party is to submit to the Associate to Foster J by no later than 11 November 2011 that party’s suggested Short Minutes of Order together with a Written Submission of no more than four (4) pages in length in support of that party’s version of the appropriate orders.

3. All questions of costs be reserved for argument in light of final orders.

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

Full text does not contain this section.

Decision

Reasons for decision

This agreement and the subsequent variation thereof do not advance Harry Wang’s position. It only preserved Harry Wang’s position in respect of the Registered Trade Mark to the extent that he was otherwise entitled to maintain that registration. The Deeds do not impair or affect New Century’s capacity to bring its TPA case and passing off case against Anying Auburn.CONCLUSIONS The Registered Trade Mark must be cancelled and removed from the Register. New Century is entitled to relief against Anying Auburn in respect of Anying Auburn’s contraventions of s 52 and s 53(d) of the TPA. It is also entitled to s 75B relief against Andrew Chen and Yan Yan Sun. All other claims for relief are rejected. I propose to direct the parties to bring in Short Minutes of Order in order to give effect to these Reasons. Those orders should include a retrospective order for the separate trial of all questions other than the parties’ claims for pecuniary relief and should provide directions as to the future conduct of the matter. I will give the parties an opportunity to address submissions on costs in light of these Reasons. There will be orders accordingly.

Ratio Decidendi

Legal Principle Established

I am not satisfied that Harry Wang misrepresented the position concerning future use of the trade mark the subject of his application. There is no evidence to support such a contention.Issues (e), (f) and (l): Registration in favour of Anying Auburn or Andrew Chen (s 44(3)(b) and s 122(1)(f) of the Trade Marks Act and the Global Forex NZ transactions) The owner of the Anying trade mark was, at least until January 2010, An Ying Group NZ, not Andrew Chen personally. Anying Auburn was never the owner of that mark. However, Anying Auburn submitted that:(a)Whichever New Zealand company was the true owner of that trade mark, that mark was assigned to Global Forex NZ on 25 January 2010;(b)In May 2010, Global Forex NZ granted to Anying Auburn a licence to use the mark in Australia; and(c)It is therefore entitled to the benefit of s 44(3)(b) of the Trade Marks Act and s 122(1)(f) of that Act. The only property sold and transferred under the 25 January 2010 Deed was the Anying name. Neither the alleged copyright in the name or the Anying logo was assigned. Nor was the second Anying mark or the Anying trade mark. Under its licence agreement with Anying Auburn, Global Forex NZ purported to licence much more than it ever secured under the 25 January 2010 Deed. The purported licence was ineffective. In any event, I would not be disposed to fetter any future decision that might be under consideration by the Registrar pursuant to s 44(3)(b) of the Trade Marks Act by making the declaration sought by the cross-claimants. Nor am I convinced that the requirements of s 122(1)(f) are satisfied in the present case. Issues (e), (f) and (l) must be decided against the cross-claimants.Issue (g): The Cross-Claimants’ Challenges to the 2006 Transactions The first of these transactions is the Share Buy-Back Agreement dated 28 July 2006. The parties to that agreement were An Ying Group NZ and Anying Sydney No 1. The relevant part of that agreement is the buy-back by Anying Sydney No 1 of all of the shares held in it by An Ying Group NZ. An Ying Group NZ is not a party to these proceedings. Anying Sydney No 1 has been joined as the sixth cross-respondent but it has never been served with any relevant process. If the Share Buy-Back Agreement is to be impugned, it must be attacked by one of those corporations or by a shareholder which can bring itself within the relevant statutory provisions enabling it to sue on behalf of the corporation. None of the cross-claimants has standing to do so. Andrew Chen contends that he executed that agreement on behalf of Anying Sydney No 1, having been misled by Chuang Wang. I am far from satisfied that he was misled. He had every reason to co-operate in the disengagement of Anying Sydney No 1 from the New Zealand companies in the middle of 2006, given the parlous financial condition of those companies. For the above reasons, I am not prepared to interfere with the Share Buy-Back Agreement. Similarly, I am not prepared to interfere with the internal changes at An Ying Melbourne effected during 2006.