Wong v Du

FEDERAL COURT OF AUSTRALIA
Wong v Du [2006] FCA 754

PRACTICE & PROCEDURE – trade mark infringement claim against owner of rival  driving school – both advertisements contained six identical Chinese characters - interlocutory injunction application – whether serious question to be tried

Held – interlocutory injunction application dismissed – no serious question to be tried as (i) Chinese characters in respondent’s advertisement constituted a description of the services provided (ii) respondent’s mark used in good faith (iii) respondent’s mark was not substantially identical or deceptively similar to the applicant’s mark

Trade Marks Act 1995 (Cth) ss 7, 17, 120(1), 122(1)(b)(i)

Australian Chinese Newspapers Pty Ltd v Melbourne Chinese Press Pty Ltd (2003) 58 IPR 1 cited
Eastman Photographic Materials Company Limited v Comptroller General of Patents, Designs and Trademarks [1898] AC 571 at 580 followed
Melbourne Chinese Press Pty Ltd v Australian Chinese Newspaper Pty Ltd [2004] FCAFC 201 cited

TOMMY WONG v BIE HAN DU
NO. VID 362 of 2006

HEEREY J
30 MAY 2006
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 362 of 2006

BETWEEN:	TOMMY WONG APPLICANT
AND:	BIE HAN DU RESPONDENT
JUDGE:	HEEREY J
DATE OF ORDER:	30 MAY 2006
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

The application for an interlocutory injunction is dismissed with costs

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	VID 362 of 2006

BETWEEN:	TOMMY WONG APPLICANT
AND:	BIE HAN DU RESPONDENT

JUDGE:	HEEREY J
DATE:	30 MAY 2006
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. The applicant is the registered proprietor of Australian trade mark number 1052216 in class 41 education and training.  He seeks an interlocutory injunction to restrain the respondent from using a mark which is alleged to be substantially identical with or deceptively similar to the applicant's mark.

2. For an interlocutory injunction there must be a serious question to be tried and the balance of convenience must also favour the grant.  

3. Both the applicant and the respondent own driving schools catering to the Chinese community.  The applicant's mark is as follows:

The six Chinese characters translate in English as “Professional Driving School”.  The allegedly infringing mark used by the respondent is as follows:

1. The first three characters in the respondent’s mark translate to “Melbourne”.  The remaining six are identical with those in the applicant’s mark.  Thus the Chinese characters in the respondent’s advertisement translate as “Melbourne Professional Driving School”.  There is no complaint regarding the English text “Greater Melbourne Professional Driving School”.

2. Both marks have appeared in advertisements in Chinese newspapers circulating in Melbourne.

   Trade Marks Act1995 (Cth)

3. Section 120(1) of the Trade Marks Act 1995 (Cth) 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.”

4. “Sign” is…