Hoser v Eleftheriou

1. This is an application in relation to alleged trade mark infringement and defamation.
2. The applicant is Raymond Hoser. He has been involved in many legal proceedings in various courts relating to alleged trade mark infringement and defamation. Following an unsuccessful action, Mr Hoser has also been issued with a bankruptcy notice, which he is in the process of challenging.
3. The respondent in the present matter is Stelios Eleftheriou. He did not file any documents in this proceeding or appear at any of the hearings in this proceeding. However, for the reasons discussed below, I am satisfied that he was personally served with the initiating documents and numerous other documents relating to the proceeding. I am also satisfied that he was given adequate notice of the final hearing.

1. In relation to the initiating documents, Matthew John Stephens swore an affidavit on 18 October 2024 in which he said that:

(a) he handed to Mr Eleftheriou on 8 October 2024:

(i) the application;

(ii) the statement of claim;

(iii) the affidavits sworn by Mr Hoser on 31 July 2024 and 23 September 2024; and

(iv) the genuine steps statement; and

(b) he identified Mr Eleftheriou based on the following conversation:

(i) "Are you Stelios Eleftheriou the person named as the first respondent in this matter involving Raymond Hoser?"

(ii) "Yes, I know what this is about, this guy is harassing me."

1. The application served on Mr Eleftheriou showed that the matter was listed for directions on 5 September 2024. Mr Hoser appeared in person. Mr Eleftheriou did not appear. It seems that, at that stage, he had not been served. The second respondent, JC Decaux International Pty Ltd, did not appear either. Orders were made:

(a) adjourning the matter to 15 October 2024 for directions;

(b) requiring Mr Hoser to file and serve an amended application, an amended statement of claim, and a further affidavit in support; and

(c) requiring Mr Hoser to serve a copy of the order made on 5 September 2024 on the respondents.

1. On 15 October 2024, Mr Hoser again appeared on his own behalf. Neither of the respondents appeared. It seems that, by this time, Mr Eleftheriou had been personally served with the initiating documents listed above, but not with the order made on 5 September 2024 which adjourned the matter to 15 October 2024. On that date, orders were made:

(a) removing the second respondent as a party;

(b) requiring Mr Hoser to ensure that a copy of the order made on 15 October 2024 was personally served on Mr Eleftheriou; and

(c) adjourning the matter to 15 November 2024 for directions.

1. Mr Stephens swore a second affidavit on 18 October 2024 in which he said that he had handed to Mr Eleftheriou on 16 October 2024 the order made on 15 October 2024. On that occasion, the following conversation occurred:

(a) "Hi Stelios, I have some more documents for you in regards to that last matter I spoke to you about regarding Raymond Hoser."

(b) "OK, no worries."

1. On 15 November 2024, Mr Hoser again appeared on his own behalf and Mr Eleftheriou did not appear. Mr Hoser was ordered to file and serve a further amended statement of claim and serve a copy of the order on Mr Eleftheriou. Mr Eleftheriou was ordered to file and serve a defence. He did not do so. The matter was adjourned to 17 March 2025 for directions.
2. On 28 January 2025, Mr Stephens swore a further affidavit in which he said that he had personally handed to Mr Eleftheriou on 25 January 2025 a copy of the further amended statement of claim dated 22 January 2025. On that occasion, the following conversation occurred:

(a) "Hi Stelios, I have some more documents for you in regards to the matter I spoke to you about on previous occasions regarding Raymond Hoser."

(b) "OK thanks."

1. On 2 March 2025, Mr Hoser filed an application for default judgment against Mr Eleftheriou and an affidavit in support. The application was made returnable on 17 March 2025. Mr Stephens swore an affidavit on 11 March 2025 in which he said that he personally handed to Mr Eleftheriou on 7 March 2025 a copy of the application filed on 2 March 2025 and the affidavit in support. On that occasion, the following conversation occurred:

(a) "Hi Stelios, I have some more documents for you in regards to the matter I have spoken to you about previously regarding Raymond Hoser."

(b) "OK thanks."

1. Mr Eleftheriou did not attend the hearing of the default judgment application on 17 March 2025. The court heard Mr Hoser's application for default judgment, but dismissed it for the reasons given in Hoser v Eleftheriou [2025] FedCFamC2G 392. In brief terms, the application for default judgment was dismissed on the basis that:

(a) Mr Hoser's alleged trade marks of "Snakeman" or "Snake man" were descriptive terms; and

(b) the defamation claim did not arise from substantially the same or closely related facts to those in the trade mark claim, so the court did not have associated jurisdiction.

1. On 17 March 2024, as well as dismissing the application for default judgment, the court listed the matter for final hearing on 30 May 2025, and required Mr Hoser to file and serve any further affidavit.
2. Mr Hoser did not personally serve on Mr Eleftheriou the orders made on 17 March 2025. However, Mr Hoser did file an affidavit of service on 27 May 2025 in which he said that he had served on Mr Eleftheriou, by email, the orders made on 17 March 2025 and his affidavit sworn on 30 April 2025. Mr Hoser said he sent the email on 25 May 2025 to Stelios.eleftheriou05@gmail.com.
3. In another affidavit sworn by Mr Hoser on 27 May 2025, he said that he had used an email checker to confirm that the email had been received by Mr Eleftheriou. Mr Hoser also said in his affidavit that he had heard Mr Eleftheriou say on a TikTok channel that he had received emails from Mr Hoser at Stelios.eleftheriou05@gmail.com. Mr Hoser also noted at the final hearing that the court had sent emails to Mr Eleftheriou at the Stelios.eleftheriou05@gmail.com address, and they had not bounced back. That is true.
4. All in all, I accept that Mr Eleftheriou was given adequate notice of the final hearing on 30 May 2025. He did not attend the final hearing. Therefore, Mr Hoser's evidence is unchallenged. I accept it, except where otherwise stated.

(a) his amended application filed on 24 September 2024;

(b) his further amended statement of claim filed on 22 January 2025;

(c) the affidavit sworn by him on 31 July 2024;

(d) the affidavit sworn by him on 23 September 2024;

(e) the affidavit sworn by him on 2 March 2025;

(f) the affidavit sworn by him on 30 April 2025;

(g) the affidavit sworn by him on 27 May 2025;

(h) the affidavit sworn by Paul Woolf on 21 March 2025 in MLG 440/2023 and marked as exhibitRH1 to the affidavit sworn by Mr Hoser in this proceeding on 30 April 2024;

(i) the affidavit sworn by Timothy Hudson on 24 March 2025 in MLG440/2023 and marked as exhibit RH2 to the affidavit sworn by Mr Hoser in this proceeding on 30 April 2024;

(j) exhibit 1, being the adverse examination report regarding canine snake avoidance;

(k) exhibit 2, being Mr Hoser's letter dated 19 July 2024 to IP Australia;

(l) exhibit 3, being the email dated 19 July 2024 from IP Australia to Mr Hoser;

(m) exhibit 4, being a paper by T J Hawkeswood;

(n) exhibit 5, being a paper by Frank Thorsten Krell;

(o) exhibit 6, being the websites referred to in paragraphs 75 to 81 of Paul Woolf's affidavit;

(p) exhibit 7, being the trade mark registration number 1214301;

(q) exhibit 8, being the trade mark registration number 1175589;

(r) exhibit 9, being Mr Eleftheriou's trade mark for STEL_THE SNAKEMAN; and

(s) exhibit 10, being the applicant's substantive rejection regarding his application for the trade mark STEL_THE SNAKEMAN to be revoked.

1. As noted above, Mr Eleftheriou did not file any material or appear at the final hearing.

RIGHT TO SUE FOR INFRINGEMENT OF REGISTERED TRADE MARK

1. Mr Hoser claimed that he was entitled to sue for the infringement of the trade marks, "Snake man" and "Snakeman".
2. Exhibit 7 is the trade mark registration extract dated 30 May 2025 for "Snake man", which is as follows:

Number: 1214301

Words: Snake man Status: ● Registered: Snake man

Registered/protected Priority date: 07 Dec 2007 (Filing)

Classes: 41, 44 Kind: Word

Goods & Services

Class 41:: Study and demonstration in all forms and all media type, of snakes, reptiles and other wildlife, including plants and animals; also animal related entertainment in person or other forms and other activities covered by this class

Class 44:: Capture and handling, in all forms and all media type, of snakes, reptiles and other wildlife, including plants, and animals; also the removal of unwanted snakes, reptiles and other wildlife from private premises of persons, companies and other entities in accordance with state and federal wildlife laws, as well as provision of information on such reptile related matters, including general zoological and reptile-related consultancy work and publications in books, journals and the like

Endorsements

Provisions of subsection 41(5) applied.

[image of drop-down arrow] Endorsements as at 10 November 2018

Opposition details

No oppositions information available.

History and Publications v

Dates

Renewal due: 07 Dec 2027

Registration advertised / published: 16 Oct 2008

Entered on Register: 29 Sept 2008

Acceptance advertised / published: 19 Jun 2008

Acceptance: 06 Jun 2008 Filing: 07 Dec 2007

Registered from: 07 Dec 2007

Owner

Adelyn Kimberley Hoser

Address for Service

KOTABI PTY. LIMITED

Indexing Constituents

Word

SNAKE MAN

Image

1. Exhibit 8 is the trade mark registration extract dated 30 May 2025 for "Snakeman" which is as follows:

Number: 1175589

Words: snakeman Status: ● Registered: snakeman

Registered/protected Priority date: 11 May 2007 (Filing)

Class: 41 Kind: Word

Goods & Services Class 41:: Distribution (other than transportation) of television programmes; distribution of radio and television programmes (rental of programme material); distribution of television programmes (rental of programme material); hire of televisions; pay television entertainment; production of cable television programmes; production of radio and television programmes; production of television programs; rental of facilities for the production of television programmes; rental of lighting apparatus for theatrical sets or television studios; rental of radio and television sets; rental of television programmes; rental of television sets; syndication of television programmes; television entertainment; television programme distribution (other than transportation); television studio services; television viewing guide services

Opposition details

No oppositions information available.

History and Publications v

Dates

Renewal due: 11 May 2027

Registration advertised / published: 10 Jan 2008

Entered on Register: 19 Dec 2007

Acceptance advertised / published: 06 Sept 2007

Acceptance: 19 Jul 2007 Filing: 11 May 2007

Registered from: 11 May 2007

Owner

Adelyn Kimberley Hoser

Address for Service

KOTABI PTY. LIMITED

Indexing Constituents

Word

SNAKEMAN

Image

1. As can be seen, the owner of the trade marks relied on by Mr Hoser is Adelyn Kimberley Hoser. Ms Hoser is Mr Hoser's daughter. She attended the final hearing with him.
2. Mr Hoser said that he was licenced by Ms Hoser to use both trade marks. Mr Hoser evidenced that claim with the last page of appendix 1 to his affidavit sworn on 23 September 2024, which is as follows:

Adelyn Kimberley Hoser [address deleted]

I,

Adelyn Kimberley Hoser, hereby license for use, to Raymond Hoser, of [address deleted], full non-transferable use and rights to all my registered trademarks as listed at IP Australia (at any time in the relevant period), in as much as he is able to exercise full rights as owner and the like, including to take actions for trademarks infringement against third parties from this date, 1 October 2021 to 1 December 2025, (being the relevant period) after which all rights revert back to myself, unless I have licensed otherwise.

I also indemnify Reptile Party Pty Ltd ABN 24 648 990 121, ACN 648 990 121 from any registered trademarks infringement actions if they use any of my registered trademarks in the same period.

None of these trademarks or rights are licensable in any, shape or form to any other person, party, business, organisation or entity and they would be liable for infringement actions by either Raymond Hoser on his own undertaking (as if owner) or myself in his absence if breaches of trademarks rights are detected, and or alternatively to continue pending actions launched by one or other (Adelyn Hoser or Raymond Hoser) if one or other die before matters are resolved.

Therefore I also license Raymond Hoser to take actions against or make representations to third parties, including Google, Facebook or others as if the licensed and registered trademarks owner, including for the purposes of business listing and listings and having trademark infringing business pages, accounts and the like deleted or removed.

Signed [A Hoser]

Adelyn Hoser

Date: 1/10/21

1. Under the Trade Marks Act 1995 ("the TMA"), a licensee of a trade mark is known as an authorised user. Section 26 of the TMA provides that:

(1) Subject to any agreement between the registered owner of a registered trade mark and an authorised user of the trade mark, the authorised user may do any of the following:

...

(b) the authorised user may (subject to subsection (2)) bring an action for infringement of the trade mark:

(i) at any time, with the consent of the registered owner; or

(ii) during the prescribed period, if the registered owner refuses to bring such an action on a particular occasion during the prescribed period; or

(iii) after the end of the prescribed period, if the registered owner has failed to bring such an action during the prescribed period;

(2) If the authorised user brings an action for infringement of the trade mark, the authorised user must make the registered owner of the trade mark a defendant in the action. However, the registered owner is not liable for costs if he or she does not take part in the proceedings.

1. That means that an authorised user may bring an action for infringement of a trade mark if the authorised user makes the owner of the trade mark a defendant in the action. In the present case, that would mean that Mr Hoser was entitled to bring an action for trade mark infringement but only if he joined Ms Hoser as a defendant. He did not do so. That means that Mr Hoser's claim for infringement of registered trade marks is fatally flawed.
2. Additionally, Mr Hoser did not plead or give evidence that Ms Hoser consented to him bringing this infringement action, or, alternatively, had refused or failed to bring a relevant infringement action. For this reason also, Mr Hoser's claim for infringement of registered trade marks is fatally flawed.
3. Mr Hoser faces another difficulty in the trade marks claim. The term, "authorised user", is defined in s.8 of the TMA. That section provides that:

(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3) If the owner of a trade mark exercises quality control over goods or services:

(a) dealt with or provided in the course of trade by another person; and

(b) in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(4) If:

(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

(b) the owner of the trade mark exercises financial control over the other person's relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

1. There is nothing in the agreement set out above between Mr Hoser and Ms Hoser that indicates that Ms Hoser has any right to control Mr Hoser's use of her trade marks.
2. Nor does the further amended statement of claim ("FASOC") plead that Ms Hoser has any right to control Mr Hoser's use of the trade marks. On the contrary, paragraph 12 of the FASOC pleads that Mr Hoser was licensed to use the trade marks "as if owned by him".
3. Similarly, the affidavit evidence filed by Mr Hoser does not disclose any control by Ms Hoser over the use of her trade marks. On the contrary, in paragraph 12 of his affidavit sworn on 23 September 2024, Mr Hoser said that Ms Hoser assigned to him by deed (which the document set out above is not) the right to use her trade marks "as if owned by myself".
4. It follows that Mr Hoser does not have a licence to bring this action for infringement of his daughter's trade marks.

1. Mt Hoser claimed at paragraph 13 of his FASOC that he owned all the common law rights to the trade marks, "snakeman" and "snake man". He said that he had been widely known as the "snake man" since the 1970s. As can be seen from the registrations set out above, the trade marks, "snakeman" and "snake man", were registered in 2007. Mr Hoser said at paragraph 15 of his affidavit sworn on 31 July 2024 that he transferred the trade marks to Ms Hoser on 1 October 2021, who then licensed Mr Hoser to use them. It is implicit in that evidence that Mr Hoser was the owner of the trade marks, "snake man" and "snakeman", at the time of their initial registration in 2007.
2. Be that as it may, Mr Hoser's common law rights have now been overtaken by the registration of the trade marks, "snakeman" and "snake man".

In spite of section 120, a person does not infringe a registered trade mark when:

...

(b) the person uses a sign in good faith to indicate:

(i) the kind ... of ... services;

1. This is generally understood as meaning that, if a supposed trade mark is a descriptive term, it is not infringed by another person using the same descriptive term.
2. Mr Hoser said that "snakeman" and "snake man" were not descriptive terms for what he does, which is catching snakes, and displaying snakes. He said that "snakeman" and "snake man" were descriptive terms for a man who dresses up as a snake. That might be one understanding of the terms "snakeman" and "snake man". However, words can have multiple meanings and describe multiple different things.
3. In a scientific environment, a snake man might be a man who studies snakes, just as Jane Goodall was known as the chimpanzee lady and Dian Fossey was known as the gorilla lady.
4. In an occupational sense, the term, fireman, is descriptive of a man who puts out fires. The term, garbageman, is descriptive of a man who collects garbage. The term, postman, is descriptive of a man who delivers the post.
5. Mr Hoser said that the terms, "snakeman" and "snake man", were not descriptive of what he does, because he is called a snake catcher or a snake displayer. That might be technically correct. However, just because there is a technically correct descriptive term for a particular occupation does not mean that other terms are not also descriptive of that occupation. For example, it is technically correct to describe a person who forecasts the weather as a meteorologist. However, that person might also be known in common parlance, and be accurately described, as a weatherman.
6. Similarly, if someone found a snake in their backyard, they could quite properly shout out, "Quick, call a snake man!" Everyone would know that what was required was a snake catcher. Hence, "snakeman" and "snake man" are perfectly adequate descriptions for a snake catcher.
7. If someone wanted to host a snake display or exhibition, perhaps for a children's birthday party, they might say, "We should call that snake man". While "snake displayer" or "snake exhibiter" might be more technically correct, "snake man", in context, is a perfectly clear description of the relevant occupation.
8. As to the good faith requirement of s.122 of the TMA, exhibit 9 is the respondent's trade mark registration extract dated 30 May 2025 for "STEL_THESNAKEMAN", which is as follows:

Number: 2327902

Words: STEL_THESNAKEMAN Status: ● STEL_THESNAKEMAN

Registered: Registered/protected Priority

date: 15 Jan 2023 (Filing) Class: 35 Kind: Word

Goods & Services

Class 35:: social media marketing; promotional services; marketing; marketing consultancy; advertising; publicity; advisory services relating to corporate identity; marketing research; business management; corporate image studies; public relations; demographic survey services for marketing purposes; consumer profiling for commercial or marketing purposes; business consultancy services for digital transformation; development of advertising concepts; corporate communications services; literary agency services being publicity services and the negotiation of contracts for authors; brand creation services; development of marketing concepts; business management of a retail enterprise for others; promotion of entertainment events; administration of consumer loyalty programs; development of advertising plans; business consultancy; business management and administration services for charitable purposes; commissioned writing services for advertising purposes; providing user rankings for commercial or advertising purposes

Opposition details

No oppositions information available.

History and Publications v

Dates

Renewal due: 15 Jan 2033

Registration advertised / published: 23 Aug 2023

Entered on Register: 23 Aug 2023

Acceptance advertised / published: 16 Jun 2023

Acceptance: 31 Mar 2023 Filing: 15 Jan 2023

Registered from: 15 Jan 2023

Owner

STELIOS ELEFTHERIOU

Address for Service

Trademark Planet limited

Indexing Constituents

Word

STELTHESNAKEMAN

STEL_THESNAKEMAN

Image

1. From this extract, it can be seen that Mr Eleftheriou added "Stel_the" before the words, "snakeman" and added "Stel" before the words "thesnakeman". I infer that the addition of "Stel_the" and "Stel" was an effort by Mr Eleftheriou to distinguish his services from Mr Hoser's. The various alleged infringements nominated by Mr Hoser all show that Mr Eleftheriou used the term, "Stel the snake man", or equivalent. I consider that the addition of "Stel_the" is indicative of good faith on Mr Eleftheriou's part.
2. It follows that the trade marks, "snakeman" and "snake man", were not infringed by Mr Eleftheriou because they are descriptive terms that he used in good faith to indicate the type of services he provided.

1. There are further reasons that Mr Hoser cannot succeed in his infringements claim. Subsection 120(1) of the TMA provides that:

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.

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. Mr Hoser argued that "Stel_thesnakeman" was substantially identical with "snakeman" and "snake man". This is obviously a question of degree and perception. However, the test is objective, as explained by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186; (2023) 408 ALR 195; (2023) 97 ALJR 388; (2023) 171 IPR 120; [2023] HCA 8 at [28]:

The question to be asked under s 120(1) is artificial - it is an objective question based on a construct. The focus is upon the effect or impression produced on the mind of potential customers. The buyer posited by the test is notional (or hypothetical), although having characteristics of an actual group of people. The notional buyer is understood by reference to the nature and kind of customer who would be likely to buy the goods [or services] covered by the registration. However, the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods [or services] the owner produces, any acquired distinctiveness arising from the use of the mark prior to filing or, as will be seen, any reputation associated with the registered mark.

(Footnotes omitted)

1. The test for substantial identity was expressed in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414; [1963] ALR 634; (1963) 37 ALJR 82; 1A IPR 484; 1B IPR 523; [1963] HCA 66 as follows:

[the two marks are] compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from that comparison.

1. There are many cases on this issue, but they all turn on their own facts. By way of example, it was held that the following terms were not substantially identical:
   1. "BED & BATH" versus "BED BATH N'TABLE": Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd (2023) 182 IPR 393; [2023] FCA 1587 at [409] - [414];
   2. "OPTUS" versus "OPTUM": Singtel Optus Pty Ltd v Optum Inc (2018) 140 IPR 1; [2018] FCA 575 at [13] - [14];
   3. "SAPIENT AUSTRALIA" and/or "SAPIENT" versus "SAPIENT COLLEGE": SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 169 ALR 1; (1999) 48 IPR 593; (2000) AIPC 91-536; [1999] FCA 1821 at [41]; and
   4. "SOLAHART" versus "SOLARHUT": Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 281 ALR 544; 92 IPR 165; [2011] FCA 700 at [47].
2. It was held that the following terms were substantially identical:
   1. "KWIK KERBER", "KWIK KERB ER" and/or "KWIK KERBING" versus "KWIK KERB": Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd (2012) 98 IPR 1; [2012] FCA 281 at [17]; and
   2. "LIVING WATER" versus "LIVING WATERS": Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438; (2004) 61 IPR 242 at 249; (2004) AIPC 91-983; [2004] FCA 438.
3. Objectively, "Stel_thesnakeman" is not substantially identical to "snakeman" or "snake man". The former refers to a particular snake man by the name of Stel, and not any other snake man.
4. The test for deceptive similarity was expressed in Shell at 109 CLR 415-6 as follows:

The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity ... the comparison ... is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant's [alleged trade mark]...

[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.

1. It was held that the following terms were not deceptively similar:

(a) "JAZZ CORNER HOTEL" versus "CORNER HOTEL": Swancom Pty Ltd v Jazz Corner Hotel Pty Ltd (No 2) (2021) 157 IPR 498; [2021] FCA 328 at [225]; and

(b) "THE AGENCY" and "THE NORTH AGENCY": Agency Group Australia Limited v HAS Real Estate Pty Ltd (2023) 174 IPR 153; [2023] FCA 482 at [77].

1. It was held that the following terms were deceptively similar:

(a) "CRAZY RON'S" versus "CRAZY JOHN'S": Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1; 61 IPR 212; (2004) AIPC 92-015; [2004] FCAFC 196 at [108]; and

(b) "STAR REALTY" versus "STARR PARTNERS": Starr Partners Pty Ltd v Dev Prem Pty Ltd (2007) 71 IPR 459; (2007) AIPC 92-246; [2007] FCAFC 42 at [25].

1. In my view, the present case is more like the first two cases than the second two cases. As in the first two cases, the addition of "Stel_the" effectively distinguishes Mr Eleftheriou from "the snakeman" and the "snake man". That is different from the Crazy John's case, because "Crazy John's" sounds a lot like "Crazy Ron's". Similarly, "Star Realty" and "Starr Partners" sound as though they could be the same entity.
2. In summary, I do not accept that "Stel_thesnakeman" is substantially identical to, or deceptively similar to, "snakeman" or "snake man".

1. This court does not ordinarily have jurisdiction in relation to defamation claims. However, in PCS Operations Ltd v Maritime Union of Australia (1998) 153 ALR 520; (1998) 72 ALJR 863; [1998] 8 Leg Rep 20; (1998) 80 IR 469; [1998] HCA 29, Gaudron J explained three ways in which the jurisdiction of the Federal Court, and, by extension, this court, may be expanded. Her Honour said at [5]:

The first is specific statutory provision, such as that which confers jurisdiction with respect to the claimed breaches of Award and contravention of the Workplace Relations Act[1]. It is well settled that that jurisdiction may extend to the determination of the entire matter or controversy and, thus, include non-federal claims which involve the same transactions and facts[2]. However, it does not extend to "a 'completely disparate claim constituting in substance a separate proceeding' ..., a non-federal matter which is 'completely separate and distinct from the matter which attracted federal jurisdiction' ... or 'some distinct and unrelated non-federal claim'"[3].

[1] See, for example, s 412(1) of the Workplace Relations Act.

[2] See Fencott v Muller (1983) 152 CLR 570 at 607; 46 ALR 41 per Mason, Murphy, Brennan and Deane JJ.

[3] Fencott v Muller (1983) 152 CLR 570 at 607-608; 46 ALR 41 referring to Felton v Mulligan [1971] HCA 39; (1971) 124 CLR 367 at 373 per Barwick CJ, Philip Morris Inc v Adam P Brown Male Fashions Pty Ltd (1981) 148 CLR 457 at 521; 33 ALR 465 per Murphy J, Moorgate Tobacco Co Ltd v Philip Morris Ltd [1980] HCA 32; (1980) 145 CLR 457 at 482; [1980] HCA 32; 31 ALR 161 per Stephen, Mason, Aickin and Wilson JJ.

1. In Fencott v Muller (1983) 152 CLR 570 at 607-608; (1983) 46 ALR 41; (1983) 57 ALJR 317; (1983) ATPR 40-350; (1983) NSW ConvR 55-134; (1983) Q ConvR 54-095; (1983) V ConvR 54-105; [1983] HCA 12, the High Court (Mason J (as his Honour then was), Murphy J, Brennan J (as his Honour then was) and Deane J) held that:
   1. It follows also that, though the facts upon which a non-federal claim arises do not wholly coincide with the facts upon which a federal claim arises, it is nevertheless possible that both may be aspects of a single matter arising under a federal law. Mason J. in Philip Morris (1981) 148 CLR, at 512, following what was said in Moorgate Tobacco [1980] HCA 32; (1980) 145 CLR 457, gave an indication of a non-federal claim which would not be severable:

Likewise, it may appear that the attached claim and the federal claim so depend on common transactions and facts that they arise out of a common substratum of facts. In instances of this kind a court which exercises federal jurisdiction will have jurisdiction to determine the attached claim as an element in the exercise of its federal jurisdiction.

His Honour's reference to a dependence of federal and non-federal claims upon common transactions and facts approximates the test in United Mine Workers of America v. Gibbs (1966) 383 US, at p 725 (16 Law Ed (2d), at p 228) that the claims "must derive from a common nucleus of operative fact". ...

1. Perhaps it is not possible to devise so precise a formula that its application to the facts of any controversy would determine accurately what claims are disparate and what claims are not. Whatever formula be adopted as a guide - and the formula of "common transactions and facts" is a sound guide for the purpose - it must result in leaving outside the ambit of a matter a "completely disparate claim constituting in substance a separate proceeding" (per Barwick C.J. in Felton v. Mulligan (1971) 124 CLR, at p 373), a non-federal matter which is "completely separate and distinct from the matter which attracted federal jurisdiction" (per Murphy J. in Philip Morris (1981) 148 CLR, at p 521) or "some distinct and unrelated non-federal claim" (per Stephen, Mason, Aickin and Wilson JJ. in Moorgate Tobacco (1980) 145 CLR, at p 482).
2. ... But in the end, it is a matter of impression and of practical judgment whether a non-federal claim and a federal claim joined in a proceeding are within the scope of one controversy and thus within the ambit of a matter.

1. In Philip Morris Inc v Adam P Brown Male Fashions Proprietary Limited (1981) 148 CLR 457; (1981) 33 ALR 465; (1981) 55 ALJR 120; (1981) ATPR 40-197; [1981] HCA 7, Mason J (as his Honour then was) said in (1981) 148 CLR 457 at 512:

The classification of a claim as "non-severable" does not necessarily mean that it is, or must be, united to the federal claim by a single claim for relief, though this is a common illustration of a non-severable claim. The non-severable character of the attached claim may emerge from other aspects of the relationship between the federal and the attached claim. For example, it may appear that the resolution of the attached claim is essential to a determination of the federal question. Likewise, it may appear that the attached claim and the federal claim so depend on common transactions and facts that they arise out of a common substratum of facts. In instances of this kind a court which exercises federal jurisdiction will have jurisdiction to determine the attached claim as an element in the exercise of its federal jurisdiction.

1. In the present case, Mr Hoser said this court had jurisdiction in relation to his defamation claim because Mr Eleftheriou defamed him after Mr Hoser sent him a cease and desist letter in relation to the alleged trade mark infringement, and used the name, "Stel_thesnakeman", in subsequent defamatory posts. However, the alleged trade mark infringement was simply the background to the defamation claim, or the context in which it occurred. The determination of the defamation claim is not essential to the determination of the trade mark claim. The trade mark claim, and the defamation claim do not share a "common substratum of facts", or at least, of material facts. Mr Hoser's argument is like saying that the trade mark claim and the defamation claim are non-severable because Mr Eleftheriou was wearing the same jacket when he allegedly infringed the trade marks and when he allegedly defamed Mr Hoser. The context (being the alleged trade mark infringement) in which the defamation claims arose does not impact on the matters that need to be determined in the defamation claim (being what words Mr Eleftheriou used and what the imputations of those words might be).
2. Gaudron J continued in PCS at [6]:

The second source of jurisdiction is s 32(1) of the Federal Court of Australia Act 1976 (Cth) ("the Federal Court Act"). That sub-section confers additional jurisdiction in these terms:

To the extent that the Constitution permits, jurisdiction is conferred on the court in respect of matters not otherwise within its jurisdiction that are associated with matters in which the jurisdiction of the court is invoked.

In Philip Morris Inc v Adam P Brown Male Fashions Pty Ltd, Barwick CJ expressed the view that "the word 'associated' [in s 32] embraces matters which may be disparate from each other"[4], a view which is implicit in other judgments in that case[5].

[4] (1981) 148 CLR 457 at 476; 33 ALR 465.

[5] Philip Morris Inc v Adam P Brown Male Fashions Pty Ltd (1981) 33 ALR 465;148

CLR 457 at 494-495 per Gibbs J, 518 per Mason J, 521-2 per Murphy J.

1. Subsection 32(1) of the Federal Court of Australia Act 1976 is in substantially the same terms as s.134 of the Federal Circuit and Family Court of Australia Act 2021 which provides that:

To the extent that the Constitution permits, jurisdiction is conferred on the Federal Circuit and Family Court of Australia (Division 2) in respect of matters not otherwise within its jurisdiction that are associated with matters in which the jurisdiction of the Federal Circuit and Family Court of Australia (Division 2) is invoked.

... Accordingly, the question whether, if the conspiracy claims are not part of the one controversy, they fall within s 32(1) of the Federal Court Act involves no more than a question of practical judgment as to whether they are associated with the claims alleging the breaches and contraventions earlier referred to.

1. In Philip Morris Inc v Adam P Brown Male Fashions Proprietary Limited (1981) 148 CLR 457; (1981) 55 ALJR 120; (1981) ATPR 40-197; (1981) 33 ALR 465; [1981] HCA 7, Gibbs J, as his Honour then was, said in (1981) 148 CLR 457 at 495-496:

... Speaking generally it may be said that, given identity of parties, one matter is associated with another if the two matters arise out of substantially the same, or closely connected, facts ...

1. There would appear to be no constitutional impediment to the court exercising jurisdiction in Mr Hoser's defamation claim against Mr Eleftheriou and there is also an identity of parties in the trade mark matter and the defamation matter. The remaining issue is whether the trade mark matter and the defamation matter "arise out of substantially the same or closely connected facts". I do not consider that they do.
2. The trade mark matter arises out of the alleged fact that Mr Eleftheriou infringed Mr Hoser's supposed trade marks. The defamation matter arises out of the alleged fact that Mr Eleftheriou defamed Mr Hoser.
3. The trade mark matter had subsidiary facts such as that the trade mark was registered, that Mr Hoser was licensed to use the trade mark, and that Mr Eleftheriou allegedly used the trade mark without permission. The defamation matter had subsidiary facts such as that Mr Eleftheriou published certain statements about Mr Hoser, and those statements carried certain imputations.
4. The trade mark matter cannot, on any view, be regarded as "arising out of substantially the same or closely connected facts" as the defamation matter. It is immaterial that the defamation matter coincided with the trade mark matter at their inception. That was just background and context, that played no operative part in either matter. The trade mark matter arose out of the alleged trade mark infringement by Mr Eleftheriou. The defamation matter arose out allegedly defamatory statements published by Mr Eleftheriou.
5. Gaudron J noted in paragraph 7 of PCS that the third source of jurisdiction is the cross-vesting scheme. Mr Hoser did not seek to rely on the cross-vesting scheme.
6. All in all, I consider that this court does not have jurisdiction in the present case in relation to Mr Hoser's defamation claim.

1. For the reasons stated above, the application must be dismissed.

I certify that the preceding seventy (70) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Riley.