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[2003] FCA 925
Federal Court of Australia
2003-06-06
Emmett J
Original judgment source is linked above.
THE COURT DECLARES THAT: 1. the respondents have infringed the trade marks listed in Schedule A to these Orders (the 'Registered Trade Marks'). AND THE COURT ORDERS THAT: 2. the respondents by themselves, their servants, agents or otherwise within 7 days of the making of the order take all necessary steps to deregister the Northern Territory registered business name BN00910259 'Strictly Harley', or to change that name to a name which does not incorporate any of the Registered Trade Marks listed or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks; 3. the respondents and each of them by themselves, their servants, agents or otherwise, be restrained from registering or using any business or corporate name which incorporates any of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks, including the name Strictly Harley; 4. the respondents and each of them, by themselves, their servants, agents or otherwise be restrained from publishing promotional materials or placing any entries or advertisements in online or hard copy versions of the Yellow Pages or the White Pages or any other directories or publications which incorporate or make reference to Strictly Harley or, without the prior written consent of the applicants, any of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks; 5. the respondents and each of them, by themselves, their servants, agents or otherwise be restrained from applying to register or using any domain name, URL or email address which incorporates Strictly Harley or any of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks; 6. that the respondents and each of them, by themselves, their servants, agents or otherwise, be restrained from: (i) manufacturing; (ii) causing or procuring the manufacture or sale of; (iii) selling or offering or exposing for sale; (iv) advertising or promoting; or (v) otherwise providing motorcycles, motorcycle parts and motorcycle accessories and clothing (the 'Unauthorised Goods') and retail services in connection with the sale of motorcycles, motorcycle parts and motorcycle accessories and clothing (the 'Unauthorised Services') by reference to: (A) the name or mark Strictly Harley; (B) any one or more of the Registered Trade Marks; or (C) any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks without the prior written consent of the applicants; 7. the respondents and each of them by themselves, their servants, agents or otherwise within 14 days of the making of the order deliver up to Baker & McKenzie solicitors at Level 26, 50 Bridge Street, Sydney NSW, on behalf of the applicants, all goods, documents and other materials (the 'Materials') in their possession, custody or control, including clothing, signage, stationery, business cards and brochures which bear, without the authority of the applicants, any one or more of: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; or (iii) any mark which is substantially identical to any of the Registered Trade Marks, and that the applicants may destroy or otherwise dispose of the Materials as they see fit; 8. the respondents and each of them by themselves, their servants, agents or otherwise within 14 days of the making of the order deliver up to Baker & McKenzie solicitors at Level 26, 50 Bridge Street, Sydney NSW, on behalf of the applicants, all moulds, stamps, screen print stencils, decals and other means of applying to goods: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; or (iii) any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks, (the 'Stamps') in their possession, custody or control and that the applicants may destroy or otherwise dispose of the Stamps as they see fit; 9. the respondents and each of them by themselves, their servants, agents or otherwise, be restricted from authorising, aiding, abetting, counselling or procuring any other person or entity to engage in conduct prohibited by orders 3, 4, 5 and 6; 10. pursuant to section 80 of the Trade Practices Act 1974 (Cth) the first respondent be restrained from engaging, in trade or commerce, in conduct that is misleading or deceptive, or is likely to mislead or deceive, by making, promoting by any means, advertising, selling or offering for sale the Unauthorised Services and the Unauthorised Goods by reference to one or more of: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; (iii) the trade mark HARLEY (the 'Harley Mark'); or (iv) any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks or the Harley Mark; 11. pursuant to section 89 of the Consumer Affairs and Fair Trading Act 1990 (NT) the second respondent, by himself, his servants or agents, be restrained from engaging, in trade or commerce, in conduct that is misleading or deceptive, or is likely to mislead or deceive, by making, promoting by any means, advertising, selling or offering for sale the Unauthorised Services and the Unauthorised Goods by reference to one or more of: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; (iii) the Harley Mark; or (iv) any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks or the Harley Mark; 12. the respondents and each of them be restrained by themselves, their servants or agents, from passing off as goods produced by or with the licence, approval, authorisation or sponsorship of the applicants, goods not so produced by making, promoting by any means or advertising, offering for sale or selling without the authority of the applicants, the Unauthorised Goods by reference to one or more of: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; (iii) the Harley Mark; or (iv) any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks or the Harley Mark; 13. the respondents and each of them be restrained by themselves, their servants or agents, from passing off as services provided by or with the licence, approval, authorisation or sponsorship of the applicants, services not so provided, by providing, promoting by any means or advertising, offering for sale or selling the Unauthorised Services by reference to one or more of: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; (iii) the Harley Mark; or (iv) any mark which is substantially identical with or deceptively similar to the Registered Trade Marks or the Harley Mark; 14. the respondents pay the applicants' costs of these proceedings on a party/ party basis, to be taxed if not agreed between the parties; 15. the parties have liberty to apply on 5 days' notice; and 16. the matter be stood over for further directions on 27 June 2003 at 9.30 am before Emmett J.
Schedule A The Registered Trade Marks Registered Trade Mark 221756: HARLEY-DAVIDSON
Registered Trade Mark 752182: HARLEY Registered Trade Mark 846103: HARLEY-DAVIDSON
Registered Trade Mark 850930: HARLEY-DAVIDSON Registered Trade Mark 850931: HARLEY-DAVIDSON Registered Trade Mark 487046: HARLEY-DAVIDSON
Registered Trade Mark 352989: Registered Trade Mark 489022: Registered Trade Mark 489023:
Registered Trade Mark 499424: Registered Trade Mark 506769: Registered Trade Mark 564814: Registered Trade Mark 566941: Registered Trade Mark 566942:
Registered Trade Mark 566944: Registered Trade Mark 576888: Registered Trade Mark 576889: Registered Trade Mark 576890: Registered Trade Mark 576891: Registered Trade Mark 598681:
Registered Trade Mark 607255: Registered Trade Mark 823550: Registered Trade Mark 823555 Registered Trade Mark 869393: Registered Trade Mark 715128: BUELL Registered Trade Mark 736741:
Registered Trade Mark 823552: BUELL Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
AND: MC WORLD LTD TRADING AS STRICTLY HARLEY (IN RECEIVERSHIP) (ABN 098 551 725)
REASONS FOR JUDGMENT 1 I have before me a motion seeking orders under the Trade Marks Act 1995 (Cth) and under the Trade Practices Act 1974 (Cth). The first applicant, H-D Michigan, Inc ('H-D Michigan'), is a company incorporated in Michigan in the United States of America. The second applicant, Harley-Davidson Motor Company, Inc ('H-D Motor Company'), is a company incorporated in Wisconsin in the United States of America. 2 H-D Michigan is the registered owner of a large number of registered trade marks for a wide range of goods and services. The trade marks include the marks 'Harley-Davidson', 'Harley', 'Harley-Davidson Motorcycles' and 'Buell', together with devices relating to those marks. The goods in respect of which the marks are registered include motorcycles, motorcycle parts, T-shirts and caps, and the services in respect of which the marks are registered include retail services in connection with the sale and repair of motorcycles and information services relating to motorcycles. H-D Motor Company is an authorised user of all the marks other than the registrations relating to 'Buell'. 3 The first respondent, MC World Ltd ('MC World'), is incorporated in the Northern Territory. The second respondent is a natural person, Jozsef Kalmar ('Mr Kalmar'). Mr Kalmar is, and has been, since at least January 2002, the facilitator and controlling mind of MC World. MC World carries on business under the name 'Strictly Harley' from premises at 20 Stuart Highway, Stuart Park in the Northern Territory ('the Premises'). MC World has been in receivership since approximately 7 May 2003. 4 Signage has been displayed at the Premises, which includes signage using the name 'Strictly Harley', the names and marks 'Harley', 'Harley-Davidson', 'Buell' and the 'Harley-Davidson Motorcycles Bar & Shield' device. There have also been displayed for sale at those premises goods bearing the registered trade marks of the applicants including T-shirts, caps and business cards. MC World has advertised its business under the name 'Strictly Harley' and using the 'Harley-Davidson' and 'Buell' marks. 5 H-D Michigan and H-D Motor Company have, by reason of extensive sales and advertising of their products, built up a considerable reputation in their name, products and trade marks. Sales by the applicants and their predecessors in title of motorcycles and motorcycle parts and accessories have been extensive and longstanding. The extent of merchandising of their products is all pervading. In particular, the 'Harley-Davidson' and 'Harley' trade marks are well-known marks throughout Australia and throughout the world. The trademark 'Buell', although a newer brand, is also a premium brand with considerable reputation. 6 The conduct of MC World and Mr Kalmar detailed above has not been licensed by H-D Michigan or H-D Motor Company . I am satisfied that the application and the statement of claim and the notice of motion, upon which H-D Michigan and H-D Motor Company move, have been served on MC World and on Mr Kalmar. However, there has been no appearance by either of them and the matter has proceeded ex parte. I am also satisfied that H-D Michigan and H-D Motor Company caused to be served on MC World and Mr Kalmar a notice to admit facts, which includes many of the facts set out above. I have also had regard to affidavits sworn 23 May 2003 by Ian Stuart Fleming, Blair Gerdes and Linda Heban and to an affidavit sworn 26 May 2003 by Beverley Anne Pearce. As a result of that evidence, I am satisfied as to the facts that I have briefly outlined. 7 Section 120 of the Trade Marks Act provides that a registered trademark is infringed by a person who 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. The evidence satisfies me that there has been infringement of trade marks registered in the name of H-D Michigan by MC World and Mr Kalmar. 8 I am also satisfied that, by reason of the reputation of H-D Michigan's marks, the conduct of both MC World and Mr Kalmar has contravened s 52 of the Trade Practices Act and s 42 of the Consumer Affairs and Fair Trading Act 1990 (NT) since it is conduct in trade or commerce that is misleading and deceptive. I am also satisfied that MC World and Mr Kalmar have passed off their products as products of the applicants. 9 In the circumstances, it is appropriate to make declarations that the respondents have infringed the applicants' trade marks and orders restraining them from engaging in conduct that would infringe the trade marks in the future, or would constitute contravention of the Trade Practices Act or the Consumer Affairs and Fair Trading Act, or would constitute passing off. I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.
H-D Michigan, Inc
MC World Ltd