Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42

FEDERAL COURT OF AUSTRALIA

Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42

TRADE MARKS – infringement – registered mark of a partial star device and words "Starr Partners" – allegedly infringing mark of a partial star device and words "Star Realty" – both marks used in connection with provision of real estate services – whether respondent's mark "deceptively similar" to appellant's registered mark – whether primary Judge accorded too much weight to differences revealed by a side by side comparison, and insufficient weight to more unusual and memorable features – Held: yes.

Trade Marks Act 1995 (Cth) ss 10 ("deceptively similar"), 120(1) Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 cited Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 cited STARR PARTNERS PTY LIMITED (ACN 054 801 375) v DEV PREM PTY LTD (ACN 088 815 516) NSD 1997 OF 2006

LINDGREN, EMMETT and FINKelSTEIN JJ

28 MARCH 2007

SYDNEY IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 1997 OF 2006

ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA

BETWEEN: STARR PARTNERS PTY LIMITED (ACN 054 801 375)

Appellant

AND: DEV PREM PTY LTD (ACN 088 815 516)

Respondent

JUDGES: LINDGREN, EMMETT AND FINKELSTEIN JJ DATE OF ORDER: 28 MARCH 2007

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. The appeal be allowed. 2. Orders 1 and 2 made on 25 September 2006 in proceeding NSD 422 of 2005 be set aside and in lieu thereof it be ordered that: "1. The respondent, whether by itself, its servants, agents or otherwise howsoever, be restrained from using the mark that appears in paragraph 8 of the Full Court's Reasons for Judgment of 28 March 2007 ("the infringing mark") or any mark only colourably different from the infringing mark in connection with its business of providing services related to real estate. 2. Within 14 days after 28 March 2007, the respondent, by its proper officer, file and serve on the appellant an affidavit verifying the ways in which the infringing mark has been used, and identifying and quantifying all printed matter referring to such goods which bear the infringing mark and which are in the respondent's possession, custody or power, and deliver up to the appellant the said goods and printed matter for destruction. 3. The respondent have leave to apply by Friday 30 March 2007 for a variation of the immediately preceding order. 4. The respondent pay the appellant's costs of the proceeding." 3. The respondent pay the appellant's costs of the appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA