Mobileworld Communications Pty Ltd v Q & Q Global Enterprise Pty Ltd

THE COURT: 1. Orders that the respondents and each of them by themselves their servants or agents be permanently restrained from using the names "Crazy John", "Crazy John's", "Crazy Ron", "Crazy Ron's" or "www.crazyrons.com.au" or any names substantially identical therewith or deceptively similar thereto so as to infringe: (a) Australian registered trade mark No 656212 in Class 38 for "telecommunications"; or (b) Australian registered trade mark No 803950 in Class 35 for "business advisory services relating to telecommunications"; retail services relating to "telecommunications products" and Class 38 for "telecommunications services and advisory services relating thereto". 2. Grants leave to the respondents (to the extent necessary) to appeal from: (a) the orders made on 4 December 2003, to the extent that those orders have not been vacated; (b) order 2 made on 8 December 2003; and (c) the orders made on 23 December 2003. 3. Notes the undertaking of the respondents to the Court: (a) to file their notice of appeal on or before 24 December 2003; (b) to prosecute the appeal diligently; (c) to take all steps available to them to have the hearing of the appeal included in the May sittings of the Full Court in Melbourne; (d) to keep full and proper accounts of the sales and expenses of each of the existing stores on the Gold Coast in Queensland carried on under the name "Crazy Ron's"; and (e) pending the determination of the appeal not to destroy any accounting records of the businesses conducted in those stores. 4. Orders that pending the determination of the appeal, order 1 above be stayed but only in connection with the existing stores trading under the name "Crazy Ron's" on the Gold Coast in Queensland, and that the permitted use or advertising shall only be in connection with existing stores on the Gold Coast and limited to use or advertising undertaken, broadcast or published locally in the Gold Coast area north of the Tweed River, by way of local signage, local newspapers, local radio, local television or local pamphlet drops, or otherwise locally. 5. Grants liberty to the applicants to apply in respect of the stay imposed by order 4 above. 6. Orders as conditions of order 1 above: (a) that the applicant pay to the respondents the sum of $50,000 by way of set off against the applicants' costs, to be taxed in default of agreement, save that in the event that the applicants' costs payable by the respondents are less than $50,000, the applicant shall pay the difference between the sum due for their costs and $50,000; (b) that the applicants shall not be entitled to claim in respect of the operation of the Gold Coast stores any sum by way of damages or for an account of profits prior to the date of institution of these proceedings. 7. Orders that the hearing in relation to damages or on account of profits be adjourned to a date to be fixed by the Registrar. 8. Orders that the respondents pay the applicants' costs of the proceedings on 8 and 23 December 2003. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT 1 On 23 December 2003, I made further orders disposing of the proceedings insofar as I have heard them pursuant to an order made earlier under O 29 of the Federal Court Rules. These are the reasons in relation to the issues argued on 23 December 2003 as to the form of the orders made on that date. 2 I made orders on 4 and 8 December 2003 which were supplemented by the orders made on 23 December 2003. 3 Debate took place before me on 23 December 2003 as to certain aspects of those orders. 4 First, there was a debate as to the structural form of the primary trade mark order (order 1). Ultimately there was a measure of agreement between Mr Ireland QC and Mr Shavin QC and no question of principle arose as to the form of order 1. 5 The second aspect of the orders debated was whether the costs orders should be stayed. I refused to stay the cost order. The principles and cases concerning the stay of a first instance order are well known and are exemplified in Powerflex Services Pty Ltd v Data Access Corporation (1996) 67 FCR 65 and Alexander v Cambridge Credit Corporation Ltd (1985) 2 NSWLR 685, 694-5. 6 I need not dwell on any particular aspect of the principles involved. It is a broad discretion, not one requiring special circumstances, but one which recognises the importance of viewing the first instance judgment as final. There was no evidence before me that the respondents or those behind the respondents could not pay a costs order. The ascertainment of the correct amount of costs will take some time. If it be the case that the necessity to pay the costs as taxed arises prior to the appeal and would interfere with the disposition of the appeal in some fashion, an application can then be brought in the appellate jurisdiction to deal with any perceived injustice which might arise at that point. 7 The third aspect debated before me was the question as to whether the trade mark order should stayed in relation to the Gold Coast stores, pending the outcome of the appeal. In this respect, Mr Ireland's clients proffered certain undertakings as to expedition, keeping of accounts and the like. Mr Shavin pressed for the orders to take effect immediately, his clients proffering an undertaking as to damages to ameliorate the respondents' position should their appeal be successful. I think in all the circumstances that Mr Ireland's clients should have their stay as to the Queensland stores, subject to the limitation of any advertising to the Gold Coast area. The applicants have taken some years to attempt to deal with "Crazy Ron's". The controversy really only arose this year with the movement, somewhat unexpectedly, I infer, of the respondents into the Sydney and Melbourne markets. Had it not been for that movement I doubt very much whether, even now, the applicants would be attempting to deal with the respondents' use of the phrase "Crazy Ron's" on the Gold Coast. Nevertheless, they have a trade mark and they have now sought to enforce their rights in relation to the whole of Australia and the orders to which they are entitled covers south east Queensland. I do not think any real injustice will be caused to the applicants by the four shops on the Gold Coast maintaining trading under the current arrangements with a limitation on advertising to the local area pending the outcome of the appeal. 8 The fourth matter was the appropriate condition to an order under s 126 of the Trade Marks Act 1995 (Cth) in final form. Mr Shavin did not submit that the conditions which were discussed in argument were not able, as a matter of principle, to be attached. The applicants have been tardy in enforcing their rights in south east Queensland. I dealt with the reasons why in my reasons published on 4 December 2003. Whilst I do not think that tardiness destroys their rights, it has placed a burden on the respondents which, in commercial terms, is real. Whether he was entitled to or not, Mr Bakir was plainly allowed to put great energy and some money into the development of his goodwill and persona in the south east Queensland area for some years. On the hypothesis that the appeal is not successful, the respondents will have to stop and create a new persona, a new goodwill and spend energy, time and money doing so. I think it appropriate to place two conditions on the order: first, that there be no claim for damages or account of profits up to the date of the filing of the application (on the evidence thus far I see little scope for such, in any event; secondly, that a sum of money by way of reparation or amelioration for the delay be given to the respondents as the price of the Australia wide order. Whilst it is arbitrary, I think a sum of $50,000 for the four shops is a fair amelioration of the costs involved caused by the delay. This sum of money can be set off against any costs the respondents are obliged to pay in relation to the suit. 9 The above are my reasons for the terms of the orders made on 23 December 2003 which were debated before me. I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Allsop.

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