Nasib Baik Pty Ltd v Sydney Ridelender Pty Ltd - [2022] FCA 301 - FCA 2022 case summary — Zoe

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Nasib Baik Pty Ltd v Sydney Ridelender Pty Ltd

[2022] FCA 301

Federal Court of Australia|2022-03-30|Before: Markovic J

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At a glance

Source facts

Court

Federal Court of Australia

Decision date

2022-03-30

Before

Markovic J

Catchwords

misleading or deceptive conduct under the Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth))

Source

Original judgment source is linked above.

Catchwords

misleading or deceptive conduct under the Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth))

Judgment (17 paragraphs)

[1]

By using the sign SYDNEY RIDELENDER in relation to car rental services in the course of trade in Australia without the permission or authority of the applicant, the first and second respondents have infringed Australian Trade Mark Registration No. 1733063 pursuant to section 120(1) of the Trade Marks Act 1995 (Cth) (TM Act).
By using the sign SYDNEY RIDELENDER in relation to car rental services in the course of trade in Australia without the permission or authority of the applicant, the first and second respondents have engaged in misleading or deceptive conduct in contravention of s 18 of the Australian Consumer Law that is Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL).
By using the sign SYDNEY RIDELENDER in relation to car rental services in the course of trade in Australia without the permission or authority of the applicant, the first and second respondents have engaged in the tort of passing off.
In respect of the first and second respondents' use of the sign SYDNEY RIDELENDER in relation to car rental services, the third respondent has: (a) directed or procured or entered into a common design with the first and second respondents' infringement of Australian Trademark Registration No. 1733063 pursuant to s 120(1) of the TM Act; (b) aided, abetted, counselled, procured, induced or been directly or indirectly knowingly concerned in the first and second respondents' contravention of s 18 of the ACL; and (c) directed or procured or entered into a common design with the first and second respondents in engaging in the tort of passing off.
In respect of the first and second respondents' use of the sign SYDNEY RIDELENDER in relation to car rental services, the fifth respondent has: (a) directed or procured or entered into a common design with the first and second respondents' infringement of Australian Trademark Registration No. 1733063 pursuant to s 120(1) of the TM Act; (b) aided, abetted, counselled, procured, induced or been directly or indirectly knowingly concerned in the first and second respondents' contravention of s 18 of the ACL; and (c) directed or procured or entered into a common design with the first and second respondents in engaging in the tort of passing off. THE COURT ORDERS THAT:

[2]

MARKOVIC J: 1 Nasib Baik Pty Ltd, the applicant, is the owner of registered trade mark No. 1733063 for "RideLender" in class 39 for "car rental; motor car rental" with a priority date of 6 November 2015 (RideLender Mark). It provides car rental services, particularly for ride share drivers. 2 Sydney Ridelender Pty Ltd, the first respondent, was registered as a company on 14 March 2018. Its registered office and principal place of business are 145 O'Riordan Street, Mascot, New South Wales, 2020 (Mascot Address). 3 Sydney Towing Service Pty Ltd, the second respondent, was registered as a company on 16 May 2014. Its registered office and principal place of business are also at the Mascot Address. In the period 14 March 2018 to 1 July 2020 Sydney Towing was a shareholder of Sydney Ridelender. 4 Ghanzafar Ali, the third respondent, was the sole director and secretary and a shareholder of Sydney Ridelender from 14 March 2018 to 1 July 2020 and was the sole director and shareholder of Sydney Towing from 16 May 2014 to 30 April 2020. 5 Azhar Iqbal, the fourth respondent, was the sole director and shareholder of Sydney Towing from 30 April 2020 to 1 June 2021. 6 Babar Tubarik Butt, the fifth defendant, was the sole director and shareholder of Sydney Ridelender from 1 July 2020 to 1 June 2021 and since 1 June 2021 has been the sole director and shareholder of Sydney Towing. 7 Nasib Baik commenced this proceeding on 30 April 2021. On 21 June 2021 it filed an amended originating application and amended statement of claim and on 12 August 2021 it filed a further amended statement of claim. 8 Nasib Baik seeks declarations, injunctions and damages for alleged infringement of its RideLender Mark pursuant to ss 120 and 126 of the Trade Marks Act 1995 (Cth) (TM Act) as well as relief under the Australian Consumer Law being Sch 2 to the Competition and Consumer Act 2010 (Cth) (ACL) for, among other things, alleged misleading or deceptive conduct and for passing off. In summary, the basis for these claims is Nasib Baik's allegation that since at least September 2017 Sydney Ridelender and/or Sydney Towing have provided car rental services under or by reference to the unregistered trademark "Sydney RideLender" which is substantially identical with or deceptively similar to the RideLender Mark. 9 By amended interlocutory application filed on 19 January 2022 Nasib Baik now seeks orders pursuant to r 5.23(2)(c) of the Federal Court Rules 2011 (Cth) for the entry of default judgment against Sydney Ridelender, Sydney Towing, Mr Ali and Mr Butt (collectively, Respondents). In particular, Nasib Baik seeks declarations and injunctions against the Respondents in relation to their use of the sign "Sydney Ridelender" in relation to car rental services, substantially mirroring the relief sought in its amended originating application. No such relief is sought against Mr Iqbal as, to date, Nasib Baik has been unable to serve him.

[5]

Sydney Ridelender 17 In or about late 2017 to early 2018 Nasib Baik received a number of telephone calls with queries or complaints about vehicles which were not its vehicles. It was at about that time, when undertaking website enquires, that Mr Hewitt noticed a website for Sydney Ridelender at www.sydneyridelender.com.au (Sydney Ridelender Website). Screenshots of some of the pages of that website taken on 9 September 2021 at the request of Ian Neil Aldridge, principal lawyer at Progressive Legal, the solicitors for Nasib Baik, appear as follows: 18 A further screen shot taken of the Sydney Ridelender Website on 12 January 2022 by Rebecca Jane Campbell, a solicitor in the employ of Progressive Legal, shows that Sydney Ridelender has 64 vehicles in its fleet with rental for the vehicles ranging between $165 and $300 per week, depending on the vehicle. 19 In about early 2018 Mr Hewitt telephoned the number on the Sydney Ridelender Website and spoke to a male who informed him that they were offering car rental services to drivers for ride share companies. Mr Hewitt informed that person that Nasib Baik owned the RideLender Mark and asked him to stop infringing that mark. The person he was speaking to hung up. 20 There was evidence before me, obtained by Mr Aldridge, showing the use of the sign Sydney Ridelender on the Facebook page https:www.facebook.com/Sydney.ridelender.7 and on signage at the Mascot Address. The latter appears as follows: 21 Sydney Towing is the registered owner of the domain name "sydneyridelender.com.au" and Mr Ali is the registered contact for that domain name. 22 Mr Hewitt has also received a number of emails from Toyota chasing payment of an invoice addressed to Sydney Ridelender. By way of example in evidence before me was an invoice dated 17 February 2021 addressed to Sydney Ridelender at Belmore, New South Wales from Canterbury Toyota. The invoice: (1) was sent by email by Canterbury Toyota to the email address "info@ridelender.com.au" which I understand to be Nasib Baik's email address; (2) named the contact as "Mr Ali"; and (3) had as its subject line "Parts Invoice For ALI - SYDNEY RIDELENDER Attn: Mr Ali".

[6]

Steps taken by Nasib Baik prior to commencement of this proceeding 23 Since June 2018 Nasib Baik has taken the following steps: (1) on 21 June 2018 Nasib Baik sent a cease and desist letter addressed to Sydney Ridelender at the Mascot Address demanding that it cease and desist from trading under the RideLender Mark. Nasib Baik did not receive any response to its letter; (2) on 15 November 2018 Nasib Baik instructed ATA Legal to send a further cease and desist letter. Once again no response was received to that letter; (3) on 9 July 2020 Nasib Baik lodged an application for mediation with the New South Wales Small Business Commissioner. By email dated 11 September 2020 the office of the Commissioner informed Mr Hewitt that (as written): In the context of mediation, I am writing to let you know that our office has spoken with the respondent of the above matter. The respondent has advised our office that his business Is no longer in operation and hasn't been for several months. The company now trades under a new name. As such, the respondent feels there is no further reason to mediate. In the event that you would like to proceed with mediation, please let us know. Otherwise, we will presume that matter has been resolved. Despite the representations made by Sydney Ridelender to the Commissioner and communicated to Mr Hewitt, Sydney Ridelender has continued to conduct its business using the "Sydney Ridelender" sign; (4) in about August 2020 Nasib Baik instructed Progressive Legal to act on its behalf. On or about 24 November 2020 Nasib Baik sent a further cease and desist letter to Sydney Ridelender; and (5) on 23 March 2021 a final cease and desist letter was served at the Mascot Address on Sydney Ridelender, Sydney Towing, Mr Ali and Mr Iqbal annexing draft pleadings. No response was received to that letter from any of those parties or anyone on their behalf. 24 As set out at [7] above, on 30 April 2021 Nasib Baik commenced this proceeding. At the time of its commencement there were four respondents: Sydney Ridelender, Sydney Towing, Mr Ali and Mr Iqbal. Mr Butt was joined to the proceeding by the filing of the amended originating process on 21 June 2021.

[7]

THE CONDUCT OF THE PROCEEDING 25 Based on the evidence before me I am satisfied that: (1) the originating application and statement of claim have been served on Sydney Ridelender, Sydney Towing and Mr Ali; (2) the amended originating application and amended statement of claim have been served on each of the Respondents; (3) the further amended statement of claim has been served on each of the Respondents; (4) orders made by this Court on 11 August 2021 and 24 August 2021 have been served on each of the Respondents; and (5) the interlocutory application filed on 13 September 2021 seeking default judgment and supporting affidavits have been served on each of the Respondents. 26 The proceeding has been before the Court on a number of occasions including as described below. 27 On 23 September 2021 Nasib Baik's interlocutory application seeking default judgment was listed before the Court for hearing. On that occasion Arsalan Moosa, who has been the sole director of Sydney Ridelender since 1 June 2021, sought leave to appear on behalf of Sydney Ridelender. Messrs Ali and Butt appeared for themselves and Mr Butt also sought leave to appear on behalf of Sydney Towing in his capacity as a director. This was the first occasion on which there had been any appearance by or on behalf of any of the Respondents. The following orders (23 September Orders) were made: 1. The first, second, third and fifth respondents are to file and serve any: (a) defence to the further amended statement of claim filed by the applicant on 12 August 2021; or (b) any affidavits in response to the interlocutory application filed by the applicant on 13 September 2021 seeking an order pursuant to r 5.23(2)(c) of the Federal Court Rules 2011 (Cth) for default judgment to be entered in its favour, by 8 November 2021. 2. The applicant is to file and serve any amended interlocutory application seeking relief against the first, second, third and fifth respondents and any further affidavits by 22 November 2021. 3. The applicant's interlocutory application filed on 13 September 2021 or, if filed, any amended interlocutory application filed pursuant to Order 2 above be listed on 25 November 2021 at 10.15 am AEST. 4. The proceeding be listed for case management hearing on 25 November 2021 at 10.15 am AEST. 5. The respondents are to pay the applicant's costs of today. 6. The applicant is to serve a copy of these Orders on each of the first, second, third and fifth respondents by sending it to the last known email addresses and postal addresses for those respondents known to it. 28 Nasib Baik caused the 23 September Orders to be served on the Respondents. 29 On 25 November 2021 the proceeding was next listed before the Court. As at that date, the Respondents were in default of the 23 September Orders because they had failed to file and serve their defences as required by those Orders. There was no appearance by or on behalf of any of the Respondents. Orders were made (25 November Orders) including: 1. The first, second, third and fifth respondents are to file and serve any defence to the further amended statement of claim by 3 December 2021. 2. Pursuant to r 5.21 of the Federal Court Rules 2011 (Cth), and subject to any further order, unless the first, second, third and fifth respondents file and serve their defences pursuant to Order 1 above, then the applicant have judgment against the first, second, third and fifth respondents with remedies to be determined. 3. The applicant is to file and serve any amended interlocutory application in relation to the relief sought against the first, second, third and fifth respondents and any further affidavits by 19 January 2022. 4. The applicant's interlocutory application filed on 13 September 2021 or, if filed, any interlocutory application filed pursuant to Order 3 above be listed for hearing on 1 February 2022 at 10.15 am AEDT. 5. The applicant is to serve a copy of these Orders on the first, second, third and fifth respondents by sending them to the last known email and postal addresses of those respondents. 30 Nasib Baik caused the 25 November Orders to be served on the Respondents. 31 As set out at [9] above, on 19 January 2021 Nasib Baik filed its amended interlocutory application seeking default judgment. 32 On 1 February 2022 the proceeding was listed before the Court for hearing of Nasib Baik's amended interlocutory application. Messrs Ali and Butt appeared. On that occasion, over Nasib Baik's objection, I adjourned the hearing of the amended interlocutory application to 3 February 2022 and, among others, made the following orders: 1. The third and fifth respondents are to serve on the solicitors for the applicant, by email at ian@progressivelegal.com.au, a copy of the material that they say they attempted to lodge with the Court in late 2021, and any evidence that they have attempted to join case management or other hearings listed in this proceeding and which proceeded by way of the online platform known as Microsoft Teams, by midday on 2 February 2022. 2. The third and fifth respondents are to file, and serve by email at ian@progressivelegal.com.au, any affidavits they wish to rely on in response to the applicant's amended interlocutory application seeking default judgment against the first, second, third and fifth respondents filed on 19 January 2022 (Amended Application) by midday on 2 February 2022. 3. Any application to be made for or by those respondents which are corporations to proceed other than by representation by a lawyer in accordance with r 4.01 of the Federal Court Rules 2011 (Cth), together with any affidavits in support, is to be filed and served on the solicitors for the applicant, by email at ian@progressivelegal.com.au, by midday on 2 February 2022.

[9]

LEGAL PRINCIPLES 34 Rule 5.21 of the Rules concerns self-executing orders and relevantly provides: A party may apply to the Court for an order that, unless another party does an act or thing within a certain time: … (d) the party have judgment against the other party. 35 Rule 5.22 of the Rules relevantly provides that a party is in default if the party fails to comply with an order of the Court. Rule 5.23(2) relevantly provides that: If a respondent is in default, an applicant may apply to the Court for: … (c) if the proceeding was started by an originating application supported by a statement of claim or an alternative accompanying document referred to in rule 8.05, or if the Court has ordered that the proceeding continue on pleadings - an order giving judgment against the respondent for the relief claimed in the statement of claim or alternative accompanying document to which the Court is satisfied that the applicant is entitled; or (d) an order giving judgment against the respondent for damages to be assessed, or any other order 36 In order to be satisfied that an applicant is entitled to the relief sought in r 5.23(2)(c) of the Rules, the Court must be satisfied that a respondent has been served with the relevant documents and that the Court has jurisdiction to grant the relief: see Speedo Holdings B.V. v Evans (No 2) [2011] FCA 1227 at [18]. 37 In Chamberlain Group Inc v Giant Alarm System Co, Ltd (No 2) [2019] FCA 1606 at [13]-[14] Yates J summarised the principles applicable to the power to enter default judgment as follows: 13 The power to give judgment against a defaulting party is undoubtedly discretionary. The discretion must be exercised cautiously. Where the defaulting party is a respondent to a pleaded claim, the giving of judgment for final relief on the application will deliver complete success to the applicant without investigation of the merits of the pleaded claim: ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577 at [27]. There is no requirement that the act or acts of default be intentional or amount to contumelious conduct. There is no requirement that the act or acts of default result in inordinate or inexcusable delay. That said, such features, if present, will be relevant to the exercise of the Court's discretion. So too will conduct that persuades the Court that the defaulting party is manifesting an inability or unwillingness to cooperate with the Court and the other party or parties to the proceeding. 14 Rule 5.23(2)(c) requires the Court to be satisfied that the applicant is entitled to the relief claimed in the statement of claim. This requirement has been interpreted as meaning that the Court must be satisfied that "on the face of the statement of claim" the applicant is entitled to the relief that is claimed. It is not a requirement that the applicant prove its claim by way of evidence. Put another way, the facts alleged in the statement of claim are taken to have been admitted: Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd [2007] FCAFC 146; 161 FCR 513 at [42]. If, on inspection of the statement of claim, the Court is satisfied that the applicant would be entitled to the relief sought then this requirement of r 5.23(2)(c) will be met: CNIP Pty Ltd v Chan & Naylor Norwest Pty Ltd (No 2) [2011] FCA 1170 at [18] - [19]; Speedo Holdings B.V. v Evans (No 2) [2011] FCA 1227 at [23]. The Court may permit further evidence to be adduced, but not evidence that would alter the pleaded case: Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd [2006] FCA 1427; 236 ALR 665 at [45], [48] - [50]; United Broadcasting International Pty Ltd v Turkplus Pty Ltd (No 2) [2010] FCA 1413 at [42] - [44]; Australian Competition and Consumer Commission v Yellow Page Marketing BV (No 2) [2011] FCA 352; 195 FCR 1 at [62] - [63].

[10]

CONSIDERATION 38 As set out at [25] above, the evidence before me establishes that Sydney Ridelender, Sydney Towing and Mr Ali have each been served with the originating application and the statement of claim and that each of the Respondents has been served with the amended originating application, amended statement of claim and the further amended statement of the claim. In addition, the Respondents have been served with orders made at various times by the Court including the 23 September Orders and the 25 November Orders. 39 Despite that, the Respondents are in default as defined in r 5.22 of the Rules in that they have failed to do an act required by the Rules and failed to comply with numerous orders made by the Court. In particular they have failed to: (1) file a notice of address for service as required by r 5.02 of the Rules; (2) file a defence to the amended statement of claim by 20 July 2021 as required by Order 2 of the Orders made on 1 June 20201; (3) file a defence to the further amended statement of claim by 27 August 2021 as required by Order 2 of the Orders made on 11 August 2021; (4) file a defence by 8 November 2021 as required by Order 1(a) of the 23 September Orders; and (5) file a defence by 3 December 2021 as required by Order 1 of the 25 November Orders. 40 The statements provided by Messrs Ali and Butt (see [33] above) do not amount to defences. 41 Given the defaults set out at [39] above, the Court is empowered to make orders pursuant to r 5.23(2)(c) of the Rules. Further, by reason of the failure to file defences, the facts alleged by Nasib Baik in the further amended statement of claim against the Respondents are taken to have been admitted. 42 In the alternative, the Respondents failed to comply with the 25 November Orders by failing to file their defence by 3 December 2021 pursuant to Order 2 of those Orders. Thus, subject to further order, judgment was entered against the Respondents pursuant to r 5.21 of the Rules (see [29] and [34] above). That judgment, based on the self-executing order, entitles Nasib Baik to have remedies determined for trade mark infringement and the other causes of action included in its further amended statement of claim: see Take Two Interactive Software, Inc v Anderson [2021] FCA 1024 at [19]. 43 Before proceeding to consider the relief which Nasib Baik claims in its further amended statement of claim it is convenient to address the assertions made by Messrs Ali and Butt in their respective statements. 44 In summary Mr Ali says that presently he has nothing to do with the Sydney Ridelender business and has not for some time and that he is not responsible for changing the details on the Sydney Ridelender Website. However, those assertions are not borne out by the evidence before me which establishes that: (1) Mr Ali was: (a) a director and shareholder of both Sydney Ridelender and Sydney Towing (see [4] above); (b) between 4 February 2019 and 25 February 2021 a director, secretary and shareholder of A H M Fleet Pty Ltd, the company that owns some of the vehicles advertised on the Sydney Ridelender Website; (2) Mr Ali's photograph appears on the Sydney Ridelender Website with the title "director"; (3) On a number of occasions Mr Ali answered the telephone number which is advertised on the Sydney Ridelender Website as the number for Sydney Ridelender and sent text messages from the number; (4) the invoices from Toyota nominate Mr Ali as the contact for Sydney Ridelender (see [22] above); and (5) based on the searches in evidence before me, the registered address and principal place of business for Sydney Ridelender is the same as Mr Ali's residential address. 45 In summary, Mr Butt says that neither he nor his company, Sydney Towing, has anything to do with Sydney Ridelender. Again the evidence before me is contrary to that assertion: (1) since 1 June 2021 Mr Butt has been the sole director and shareholder of Sydney Towing; (2) from 21 February 2021 to 1 June 2021 Mr Butt was a director, secretary and shareholder of A H M Fleet; (3) based on searches in evidence before me, Mr Butt has, at times, listed his address as the Mascot Address; and (4) on 12 November 2021: (a) Amy Elliot, a licensed private investigator, having completed a driver registration form on the Sydney Ridelender Website requesting to lease a vehicle, called the number on the Sydney Ridelender Website and spoke to a male who informed her that his name was "Ali" and that she needed to SMS her details so that he could have someone return her call; and (b) after sending an SMS as directed, Ms Elliot received a telephone call from a different mobile number which she said belonged to Mr Butt who informed her that he would pass on her details to the best person to lease a vehicle closest to Alexandria, the suburb in which she said she lived.

[12]

Declarations for trade mark infringement, breach of s 18 of the ACL and passing off 47 Nasib Baik seeks declarations that Sydney Ridelender and Sydney Towing have: (1) breached s 120(1) of the TM Act which 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; and (2) breached s 18 of the ACL which prohibits a person, in trade or commerce, from engaging in misleading conduct or conduct that is likely to mislead or deceive; and (3) engaged in the tort of passing off by using the Sydney Ridelender sign in relation to car rental services. 48 As I have already observed, by their failure to file a defence, Sydney Ridelender and Sydney Towing are taken to have admitted the facts pleaded against them in the further amended statement of claim. Thus they are taken to have admitted that they have: (1) used the Sydney Ridelender sign as a trade mark in relation to services in respect of which the Ridelender Mark is registered and that the Sydney Ridelender sign is substantially identical with, or deceptively similar to, the Ridelender Mark in contravention of s 120(1) of the TM Act; (2) given their use of the Sydney Ridelender sign in trade or commerce in connection with the supply of car rental services, engaged in conduct that is misleading or deceptive or likely to mislead or deceive in contravention of s 18 of the ACL; (3) passed off themselves, their business or their car rental services as those of, or as being associated with, Nasib Baik or the RideLender Business or as having Nasib Baik's sponsorship, licence or approval; and (4) caused Nasib Baik to suffer loss and damage by reason of the conduct at (1)-(3) above. 49 Accordingly, Nasib Baik has established the requirements of s 120(1) of the TM Act and s 18 of the ACL and that Sydney Ridelender and Sydney Towing have engaged in the tort of passing off. It is entitled as against Sydney Ridelender and Sydney Towing to the relief it seeks in the amended interlocutory application pursuant to s 126 of the TM Act, ss 232 and 236 of the ACL and ss 21 and 23 of the Federal Court of Australia Act 1976 (Cth). 50 The Court has a wide discretionary power to make declarations under s 21 of the Federal Court Act. But before making a declaration the Court should be satisfied that the question is real, not hypothetical or theoretical, that the applicant has a real interest in raising the issue, and that there is a proper contradictor: see Australian Building and Construction Commissioner v Construction, Forestry, Mining and Energy Union (2017) 254 FCR 68 at [92]. 51 Insofar as a requirement for there to be a proper contradictor is concerned, in Geneva Laboratories Ltd v Prestige Premium Deals Pty Ltd (No 4) [2016] 120 IPR 133; FCA 867; at [80]-[82] Bromwich said: 80 The Full Court considered the requirement of a contradictor in Australian Competition and Consumer Commission v MSY Technology Pty Ltd [2012] FCAFC 56; (2012) 201 FCR 378 in the context of the grant of power in s 21 of the Federal Court of Australia Act 1976 (Cth) (the Federal Court Act). Their Honours noted at 382 [14] that "[t]here is a difference between having an interest to oppose the granting of declaratory relief and, having that interest, choosing whether or not to oppose the granting of that relief". 81 The Full Court in MSY Technology held at 387 [30] that the requirement for a contradictor was met if there is a party who had an interest to oppose the declaratory relief sought. This was necessary as well because it went to the existence of federal jurisdiction to exercise the power under s 21 of the Federal Court Act, due to the jurisdictional need for a controversy between the parties, even if resolved after commencement of proceedings: MSY Technology at 385 [20]. 82 I interpret the requirement for no more than a joined party having an interest to oppose declaratory relief as encompassing a range of responses from a respondent, from outright opposition, to not turning up despite knowing that a declaration was to be sought, especially if there was precise knowledge of the date of the hearing of the application. It cannot be that a choice made not to participate puts a respondent in a better position than one who attends and presents arguments against relief being granted. Fortunately, that was not a question that I had to resolve as both parties were represented at the hearing of the application for default judgment by solicitors and counsel. 52 Here the Respondents each had notice of the proceeding and of Nasib Baik's amended interlocutory application. While Mr Butt is a director of Sydney Towing, he failed to make any application in accordance with the Orders made on 1 February 2022 to appear for that company at the adjourned hearing of the amended interlocutory application or otherwise. In those circumstances, I did not grant him leave to appear for Sydney Towing on that latter occasion. 53 I am satisfied that there is utility in making the declarations sought. The conduct is real and Sydney Ridelender and Sydney Towing's ongoing conduct is derogating from and affecting the rights of Nasib Baik. As Nasib Baik submitted it can use the declarations to ameliorate any issues of actual confusion between it and, in particular, Sydney Ridelender. 54 Nasib Baik also seeks declarations of breach against Messrs Ali and Butt as joint tortfeasors in relation to the use of the Ridelender sign by Sydney Ridelender and Sydney Towing in that they each: (1) directed, procured or entered into a common design with Sydney Ridelender and Sydney Towing's infringement of the Ridelender Mark pursuant to s 120(1) of the TM Act; (2) aided, abetted, counselled, procured, induced or were directly or indirectly knowingly concerned in those companies' contravention of s 18 of the ACL; and (3) directed, procured, or entered into a common design with Sydney Ridelender and Sydney Towing in engaging in the tort of passing off. 55 Once again Messrs Ali and Butt are taken to have admitted the conduct alleged against them in the further amended statement of claim. It follows that the claims against them are made out and, noting that each of Messrs Ali and Butt appeared at the adjourned hearing of the amended interlocutory application, for the same reasons set out at [53] above Nasib Baik is entitled to the declarations of breach that it seeks as against them.

[13]

Injunctive relief 56 Nasib Baik seeks orders in the nature of injunctions preventing the Respondents from engaging in the ongoing infringing conduct and from using the RideLender Mark or any sign resembling it as well as orders requiring Sydney Ridelender and/or Sydney Towing, as applicable, to change its corporate name, cancel the business name "Sydney Ridelender", delete the Sydney Ridelender Facebook account, transfer the registration of the domain name www.sydneyridelender.com.au to Nasib Baik and, to the extent the orders are not complied with, to enable a Registrar of this Court to take all steps necessary to effect the cancellation of the business name and/or the transfer of the domain name. 57 The evidence before me establishes that, despite the numerous requests and demands that have been made, the contravening conduct continues. Further, the Court clearly has jurisdiction to make the orders insofar as they seek to: prevent Sydney Ridelender from continuing to use the Ridelender sign in connection with its business; require the deletion of accounts using that sign; and transfer ownership of the domain name. Among other things, the company name, business name, website and Facebook account are instruments by which the Respondents continue to infringe the RideLender Mark and engage in misleading or deceptive conduct contrary to s 18 of the ACL and the tort of passing off. The orders sought are necessary to prevent their use contrary to Nasib Baik's rights. Relevantly, s 232(6) of the ACL provides that a court may grant an injunction pursuant to s 232(1) of the ACL requiring a person to transfer property. 58 In Speedo Flick J noted that, where breach of s 120(1) of the TM Act had been established, orders may be made for transfer of a domain name and, in the event of default, for an officer of the Court to execute all necessary documents to effect the transfer. At [34] his Honour relevantly said: … In accepting that the Court had power to order the transfer of domain names, in Seagle Jagot J concluded as follows: [23] Proposed orders 5 and 6 involve transfer of the domain names (that is, the names deceptively similar to the names of the applicants) to either of the applicants. The applicants submitted that these orders were appropriate as: (i) the Federal Court is a court of equity as regards matters within its jurisdiction (s 5(2) of the Federal Court of Australia Act, McIntyre v Perkes (1990) 22 FCR 260 and Elna Australia Pty Ltd v International Computers (Aust) Pty Ltd (1987) 14 FCR 461), (ii) the websites are instruments of the respondent's misleading and deceptive conduct and the court has inherent jurisdiction, in effect, to order delivery up and destruction of these instruments from the respondent's hands, (iii) these orders are necessary not to deny the respondent's title to the infringing articles, but rather to prevent their use in derogation of the applicants' rights, and will operate in aid of the injunctions, and (iv) by analogy, in a case for trade mark infringement the power to order delivery up and destruction covers not only infringing articles but also items used to manufacture infringing articles (Geodesic Constructions Pty Ltd v Gaston (1976) 16 SASR 453 at 471-2). I accept these submissions and will make orders accordingly. Rule 41.09 of the Federal Court Rules 2011, it should be expressly noted, provides that an application may be made for an order for "substituted performance" where a party "is bound, but neglects or refuses, to do an act". Rule 41.09 has its forbears in Order 37 r 3 of the now repealed Federal Court Rules. Order 37 r 3 was invoked in CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279, 128 FCR 408 where an order was made that in the event of default the Registrar "sign all necessary documents to transfer the domain name 'csrsugar.com' to the applicant or as the applicant directs". The present rule, and its predecessor, assume particular importance where a party does not cooperate in the transfer of a domain name. An applicant who is otherwise entitled to relief is not to be thwarted by an uncooperative opponent. Another instance of an order being made pursuant to the former Order 37 r 3 is provided by Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No 3) [2002] FCA 1487, 196 ALR 576. Goldberg J addressed the former Order 37 r 3 and continued on to also make the following observations: [42] It may well be that by ordering the company to transfer the registration of the domain name to the Commission I am ordering the company to do an act outside the jurisdiction, that is to say outside the geographic boundaries of the Commonwealth of Australia, as what is required is a direction or instruction to Verisign Inc, the registrar of the top-level domain name ".com". Alternatively, the order might be viewed as an order directing the company to transfer a licence granted by an entity outside the jurisdiction to the Commission. [43] The order sought is in the nature of a mandatory injunction directed to the company which is subject to the jurisdiction of the court to perform an act. The court has power to make such an order by virtue of the grant of power given to the court in s 23 of the Federal Court of Australia Act 1976 (Cth) and also by reference to the court's power to make orders in matters properly before it "as an incident of the general grant to it as a superior court of law and equity of the jurisdiction to deal with such matters" … [44] It is of no consequence that the order sought against the company relates to property which may be situated outside the jurisdiction as the order is sought in personam. It has been well established for over 200 years that a court has jurisdiction to make an order against a person within the jurisdiction of the court albeit to do an act in respect of property outside the jurisdiction …. The principle is based upon the proposition that the court is acting in its equitable jurisdiction in relation to a person within its jurisdiction … ... 59 In the circumstances of this case it is appropriate to make an order permitting the Registrar to effect the transfer of the domain name, in the event that Sydney Ridelender fails to comply with the relevant order. Nasib Baik ought not be put to the additional expense of approaching the Court should Sydney Ridelender fail to comply with the Court's orders.

[14]

Damages 60 Nasib Baik seeks an order for payment of nominal damages and an order for payment of additional damages for trademark infringement. 61 Nasib Baik seeks an order that the Respondents, jointly and severally, pay it $5,000 in nominal damages for trade mark infringement, contraventions of the ACL and passing off. 62 Section 126 of the TM Act empowers the Court to make an award of nominal damages: see Nokia Corporation v Liu (2009) 80 IPR 286 at [21]; [2009] FCA 20. Nominal damages are generally ordered where there has been no or minimal damage suffered as a result of a respondent's infringing conduct: see The Owners of the Steamship "Mediana" v The Owners, Master and Crew of the Lightship "Comet" [1900] AC 113 at 116. While there is evidence that Nasib Baik has suffered actual damage by reason of the Respondents' conduct, Nasib Baik accepts that it would be both difficult and costly for it to obtain relevant evidence from the Respondents for the purpose of establishing quantum. This is particularly so in circumstances where the Respondents have not participated in any meaningful way in the proceeding. Accordingly, it seeks nominal damages in the sum of $5,000. Nasib Baik submitted that nominal damages have been awarded in that amount in similar cases. It referred, by way of example, to Hells Angels Motorcycle Corporation (Australia) Pty Ltd v Redbubble Ltd (2019) 140 IPR 172; FCA 355 at [537]-[540] where an award of nominal damages of $5,000 was made for copyright infringement where only three sales of infringing material occurred in a three month period. I accept that the sum of $5,000 is an appropriate amount to be awarded by way of nominal damages and that an order requiring the Respondents to pay that amount should be made. 63 Nasib Baik also seeks an award of additional damages pursuant to s 126(2) of the TM Act. The matters to be taken into account in considering whether it is appropriate to make an award of additional damages include: the flagrancy of the infringement; the need to deter similar infringements; the conduct of the party that infringed the registered trade mark after notice was given of the alleged infringement; and any benefit shown to have accrued to the infringing party because of the infringement. 64 The Respondents are taken to have admitted that they engaged in the infringing conduct flagrantly, after they had been put on notice by Nasib Baik of its trade mark rights and in circumstances where benefits accrued and continued to accrue to them by reason of their infringing conduct. In addition, the Respondents have failed to play any meaningful part in this proceeding, despite representations made to the Commissioner about their continuing operations (see [23] above), and continued to engage in the infringing conduct and made changes to the ownership and management of Sydney Ridelender and Sydney Towing after the commencement of this proceeding. As Nasib Baik submitted, in the absence of an explanation, the irresistible inference is that they did so in an attempt to avoid liability. 65 In the circumstances, I am satisfied that Nasib Baik is entitled to an award of additional damages. 66 In Truong Giang Corporation v Quach (2015) 114 IPR 498; [2015] FCA 1097 at [133]-[143], by analogy to s 115(4) of the Copyright Act 1968 (Cth), Wigney J set out the principles relevant to a quantification of damages to be awarded pursuant to s 126(2) of the TM Act as follows: [133] First, it is not necessary that any amount of additional damages be proportionate to any award of compensatory damages: Futuretronics.Com.au Pty Ltd v Graphix Labels Pty Ltd (No 2)(2008) 76 IPR 763 (Futuretronics) at [17]. [134] Second, an award of additional damages involves an element of penalty: Facton Ltd v Rifai Fashions Pty Ltd (2012) 199 FCR 569 (Facton) at [33], [89]. [135] Third, part of the function of an award of additional damages is to mark the Court's disapproval or opprobrium of the infringing conduct: Facton at [36]. [136] Fourth, the matters set out in s 126(2)(a)-(d) of the TM Act are not preconditions to an award of additional damages: Futuretronics at [17]. [137] Fifth, conduct which may properly be seen as flagrant includes conduct which involves a deliberate and calculated infringement, a calculated disregard of the applicant's rights, or a cynical pursuit of benefit: Futuretronics at [19]; Facton at [92]. [138] Sixth, post-infringement conduct within s 126(2)(c) of the TM Act is unlikely to include the respondent's conduct of the infringement proceedings. Such conduct is more relevant to the appropriate order as to costs: Futuretronics at [17]; Flags 2000 Pty Ltd v Smith (2003) 59 IPR 191 at [31]-[34]. That said, it is difficult to see why some aspects of the conduct, by a respondent, in defence of infringement proceedings, might not be relevant to the award of additional damages: cf. Facton at [44], [69]. Conduct of the proceedings which involved high-handedness, dishonesty, recalcitrance, or flagrant disregard of, or deficiencies in compliance with, discovery orders or notices to produce, might, at the very least, suggest a greater need for an award of additional damages that would deter future infringing conduct by the respondent. [139] Seventh, an award of additional damages can encompass damages which, at common law, would be aggravated or exemplary damages: Futuretronics at [17]. The matters specified in s 126(2) of the TM Act are of a kind which are taken into account in determining whether a party is entitled to aggravated or exemplary damages at common law, but in the end result the damages to be awarded are not aggravated or exemplary damages, but additional damages, being of a type sui generis: Facton at [33]-[36], [91]. [140] In Halal Certification Authority Pty Ltd v Scadilone Pty Ltd (2014) 107 IPR 23 at [111], Perram J considered that if additional damages are appropriate, the damages to be awarded must operate as a sufficient deterrent to ensure that the conduct will not occur again. [141] This is an appropriate case for the award of additional damages against each of the respondents. For the reasons already given, the infringements by each of the respondents was flagrant. They well knew that the Counterfeit Product was counterfeit and infringed the 3 Ballerinas Mark. By selling the Counterfeit Product they deliberately infringed TG Corp's registered trade mark and disregarded TG Corp's rights in pursuit of a benefit for themselves. They used business names the registration of which had been cancelled and, it may be inferred, otherwise acted to conceal their involvement in any infringing activity. The explanations they have given for their conduct were dishonest. They have either maintained insufficient business records, or failed to produce any such records so as to enable the satisfactory assessment of compensatory damages. Additional damages should be awarded to mark the Court's opprobrium attached to the respondents' conduct and to provide an effective deterrent. [142] In setting the appropriate amount of additional damages, some regard must be had to the size and nature of the respondents' operations and the scale of the infringing conduct. A broad evaluative judgment is required, taking into account all the circumstances and the objective of deterrence. [143] TG Corp submits that it would be appropriate to order Mr Quach and New Leaf to pay additional damages of $180,000 jointly, and that it would be appropriate to order Mr Alexandrou to pay additional damages of $75,000. In all the circumstances, however, those amounts would appear to be excessive. As already indicated, the evidence suggests that Mr Quach (and New Leaf) and Mr Alexandrou were fairly small-time operators. The scale of the infringing conduct, whilst not insignificant, was not particularly large in the scheme of things. The quantum of the additional damages proposed by TG Corp is out of proportion to the scale and nature of the contravening conduct. 67 Nasib Baik submitted that the nature and size of the Respondents' business is best understood by reference to the number of cars Sydney Ridelender has available to rent to clients as follows: (1) as at 12 January 2022 the Sydney Ridelender Website listed 64 cars for rent with an average weekly rental price of each vehicle being around $270; (2) therefore Sydney Ridelender's business has a capacity to generate a weekly gross revenue of about $17,000 and an annual gross revenue of about $800,000 before expenses and taxes; (3) as the infringing conduct has been ongoing for more than four years, the revenue generated from Sydney Ridelender's business is potentially significant; and (4) an award of $100,000 in additional damages is sufficient to achieve the objective of deterrence having regard to the size, nature and scale of the infringing conduct. 68 Messrs Ali and Butt both contended that Sydney Ridelender had not generated revenue in the amount estimated by Nasib Baik, particularly given the effect of the COVID-19 pandemic. However, they did not seek to tender any evidence to establish the revenue that was in fact generated in the past two years or at all or any other financial information about Sydney Ridelender's business. 69 While no evidence was provided about the actual effect of the COVID-19 pandemic on the Sydney Ridelender business, I accept the submissions made by Mr Ali and Mr Butt that it has had an effect on revenue. Accordingly, I propose to reduce the amount sought by Nasib Baik and to order payment of an amount of $75,000 by way of additional damages. That amount is sufficient to achieve the object of deterrence while having regard to the uncontroverted evidence of the size, nature and scale of Sydney Ridelender's operations and the Respondents' infringing conduct.

[15]

COSTS 70 Nasib Baik seeks an order for payment of its costs of the proceeding and that those costs should be paid on a lump sum basis in the amount of $155,582.86. 71 The amended interlocutory application seeks orders which have the effect of disposing of the proceeding. As Nasib Baik has been successful in obtaining that relief (subject only to the reduction in the amount of additional damages sought) it should have its costs of the proceeding. 72 That then leaves the question of whether Nasib Baik's costs should be awarded in a lump sum in the amount it seeks. 73 Rule 40.02(b) of the Rules provides that a party who is entitled to costs may apply to the Court for an order that those costs be awarded in a lump sum, instead of, or in addition to, any taxed costs. The Court's Costs Practice Note (GPN-COSTS) states that the Court's preference, wherever it is practicable and appropriate to do so, is for the making of a lump-sum costs order and prescribes the procedure to be adopted. It notes that utilisation of such a procedure will always be at the discretion of the judge with the parties being given a fair opportunity to present their views as to the appropriateness of utilising the procedure: at [4.1]-[4.2]. 74 The principles applicable to the making of a lump sum costs order are settled. They were recently summarised by Anderson J in Derrimut Health & Fitness Pty Ltd v Revival 24:7 Gym Pty Ltd (No 2) [2020] FCA 1581 at [61]-[62] including relevantly as follows: 61 Principles applicable to lump sum costs were summarised by Middleton J in De Brett Seafood Pty Ltd v Qantas Airways Ltd (No 7) [2015] FCA 979 adopting the earlier statements of Sackville J in Seven Network News Ltd v News td [2007] FCA 2059: [49] His Honour stated the principles at [25] as follows: … (i) The purpose of the subrule is to avoid the expense, delay and aggravation involved in protracted litigation arising out of taxation: Beach Petroleum v Johnson (No 2), at 120, per von Doussa J applying Leary v Leary [1987] 1 All ER 261; Harrison v Schipp (2002) 54 NSWLR 738, at 742 [21] per Giles JA. (ii) An order that costs be assessed as a gross sum does not envisage that any process similar to that involved in taxation should take place. On the contrary, the Court applies a much broader brush than would be used on a taxation of costs pursuant to O 62: Beach Petroleum v Johnson (No 2), at 120, 124, per von Doussa J; Harrison v Schipp, at 743 [22], per Giles JA. (iii) The Court should be confident that the approach taken to the estimate of costs is logical, fair and reasonable. The Court should be astute to avoid both overestimating the recoverable costs and underestimating the appropriate amount, for example by applying an arbitrary discount to the amounts claimed: Beach Petroleum v Johnson (No 2), at 123, per von Doussa J. (iv) Although the power to assess a gross sum for costs involves the exercise of a discretion, it is necessary to bear in mind fundamental principles applicable to an assessment of costs on a party and party basis. These include the principles contained in O 62 r 19 (embodying the 'necessary or proper' test) and those stated in Stanley v Phillips (1966) 115 CLR 470, at 478, per Barwick CJ (on a party and party taxation the emphasis is upon obtaining adequate representation to enable justice to be done, not upon the propriety of steps taken to ensure maximum success in the cause): Auspine Ltd v Australian Newsprint Mills Ltd (1999) 93 FCR 1, at 4-5 [12]-[15], per O'Loughlin J; Charlick Trading Pty Ltd v Australian National Railways Commission [2001] FCA 629, at [6]-[8], per Mansfield J. (v) Although the methodology permitted by O 62 r 4(2)(c) initially involves a broader approach than on a normal taxation, the provisions of O 62 and Schedule 2 provide assistance in fixing an appropriate gross sum: Charlick Trading Pty Ltd v ANRC, at [10], per Mansfield J. [50] At [26-7] his Honour continued: [26] The last point should be developed a little further. FCR, O 62 r 4(2)(c) authorises the Court to order that, instead of taxed costs, the successful party should be entitled to a gross sum costs order. The subrule contains no express direction that the Court is to apply the detailed criteria that are laid down in O 62 and Schedule 2. On the contrary, the subrule apparently leaves the question of quantification at large. [27] Rule 4(2)(c) is, however, located within an Order that makes detailed provision for the assessment of party and party costs. It would be extremely odd if the more expeditious procedure contemplated by r 4(2)(c) resulted in either a successful or an unsuccessful party being exposed to an assessment of costs which simply ignores or overrides the basic principles applicable to a taxation of costs. I accept Mr Sheahan's submission that it would be an error for a Court to use its power under r 4(2)(c) to assess a gross sum clearly higher than that which would be allowed on a taxation of costs. (Emphasis in original.) … [53] I also note that it is inevitable, given the broad brush nature of the process, that the level of detail provided by the party claiming lump sum costs will be less than on a taxation. This is particularly the case where, as occurred here, the proceeding is on foot and a party may have been reluctant to disclose potentially privileged or confidential information. What is required is a level of detail sufficient to enable the Court to assess what is fair, logical and reasonable. The Court should be careful to apply its judgment so as to neither over-compensate nor under-compensate the party entitled to its costs. 62 The party seeking a lump sum costs order must satisfy the Court as to the amount of costs incurred and that there is a proper basis for the award of such an amount as a gross sum: Saizeriya Co Ltd v Peregrine Management Group Pty Ltd [2005] FCA 1174, [31]. It will be necessary to examine charges rendered by the relevant party's solicitors, noting that the sum fixed should be proportionate to the nature and complexity of the case: LFDB v MS SM (No 2) [2018] FCA 2062, [8]. 75 It is appropriate to make an order that the Respondents pay Nasib Baik's costs in a lump sum. Such an order will avoid further expense and the delay of the taxation process to all parties and better serve the administration of justice. 76 In support of its application for a lump sum costs order Nasib Baik relies on three affidavits affirmed by Paul Taylor, a costs lawyer with Pattison Hardman, on 10 September 2021, 22 September 2021 and 20 January 2022. Mr Taylor gives evidence of the amount which he says Nasib Baik is entitled to for its fair and reasonable costs of the proceeding. 77 Despite the Respondents having notice of Nasib Baik's intention to seek an order that its costs be paid in a lump sum, they have only been served with the first of Mr Taylor's affidavits. While I am conscious that Nasib Baik does not wish to expend additional resources and costs, given the quantum of costs sought, which is more than the amount assessed by Mr Taylor in his affidavit affirmed on 10 September 2021, I will refer the question of quantification of the costs payable by way of lump sum to a Registrar of this Court. To do so will, among other things, ensure that a process can be followed enabling service of the balance of the evidence relied on by Nasib Baik on the Respondents and, subject to the views of the Registrar, to permit a period of time for the Respondents to respond to the Registrar.

Nasib Baik Pty Ltd v Sydney Ridelender Pty Ltd

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