Australian Home Loans Ltd t/as Aussie Home Loans v Phillips, Lee Anthony & Anor [1998] FCA 181

FEDERAL COURT OF AUSTRALIA TRADE PRACTICES - misleading or deceptive conduct - relevance of intention to mislead or deceive. PASSING OFF- injunctions - desirability of injunction in general terms restraining a respondent from passing off. COPYRIGHT - infringement - injunctions - desirability of order for withdrawal of trade mark application.

Trade Practices Act 1974 (Cth), s 52, s 53(c), s 53(d) Trade Marks Act 1995 (Cth) Copyright Act 1968 (Cth), s 115, s 126(a), s 126(b)

Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd (1996) 34 IPR 225, followed ICI Australia Operations Pty Limited v Trade Practices Commission (1992) 38 FCR 248, followed WMC Ltd v West Gold Resources N.L, (North J, 11 September 1997, unreported) distinguished

australian home loans ltd t/a AUSSIE HOME LOANS v lee anthony PHILLIPS and TECHNOCRAT COMPUTING PTY LTD

ng 559 of 1997

LEHANE J

SYDNEY

20 FEBRUARY 1998

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 559 of 1997

BETWEEN: australian home loans ltd

t/a AUSSIE HOME LOANS

Applicant

AND: lee anthony PHILLIPS

FIRST Respondent

TECHNOCRAT COMPUTING PTY LTD

SECOND RESPONDENT

JUDGE(S): LEHANE J

DATE OF ORDER: 20 FEBRUARY 1998

WHERE MADE: SYDNEY

THE COURT DECLARES THAT: 1. The respondents and each of them have infringed the applicant's copyright in the artistic work as depicted in Schedule "A" to the reasons for judgment ("applicant's work").

THE COURT ordErS THAT: 2. The respondents and each of them, whether by themselves, their servants, their agents or otherwise be restrained from, in trade or commerce in Australia, advertising, promoting, offering to supply or supplying any building or construction services or building or construction advisory services under or by reference to any business name, company name or any trade mark consisting of the words "AUSSIE HOME BUILDERS" or any other words substantially identical or deceptively similar to the words "AUSSIE HOME LOANS". 3. The respondents and each of them, whether by themselves, their servants, their agents or otherwise be restrained from, in trade or commerce in Australia, advertising, promoting, offering to supply or supplying building or construction services or building or construction advisory services under or by reference to the trade mark "AUSSIE HOME BUILDERS" and device as depicted in Schedule "B" to the reasons for judgment or any other trade mark substantially identical or deceptively similar to the trade mark "AUSSIE HOME LOANS" and device as depicted in Schedule "A" to the reasons for judgment. 4. The respondents and each of them, whether by themselves, their servants, their agents or otherwise be restrained from infringing the applicant's copyright in the applicant's work and in particular from reproducing or authorising the reproduction in any material form of the whole or a substantial part of the applicant's work. 5. The respondents deliver up on oath to the applicant all signage, brochures, business cards and other advertising and promotional material in the possession, custody or control of the respondents or either of them which refer to any company name, business name, or any trade mark consisting of or including the words "AUSSIE HOME BUILDERS" or any words substantially identical or deceptively similar to the words "AUSSIE HOME LOANS". 6. The respondents deliver up on oath to the applicant all signage, brochures, business cards and other advertising and promotional material in the possession, custody or control of the respondents or either of them which refer to the trade mark "AUSSIE HOME BUILDERS" and device as depicted in Schedule "B" to the reasons for judgment. 7. The respondents deliver up on oath to the applicant or destroy under supervision all infringing copies of the applicant's work in the possession, custody or control of the respondents or either of them. 8. The first respondent forthwith do all acts and things and execute all such documents as may be necessary or desirable to be done or executed in order to withdraw or procure the withdrawal of Trade Mark application No. 670434 in Class 37. 9. The respondents pay the applicant's costs and be jointly and severally liable for payment thereof.