Transport Tyre Sales Pty Ltd v Montana Tyres Rims & Tubes Pty Ltd [1999] FCA 329

FEDERAL COURT OF AUSTRALIA

Transport Tyre Sales Pty Ltd v Montana Tyres Rims & Tubes Pty Ltd [1999] FCA 329 Intellectual Property - trade marks – registration of an assignment of trade marks – whether entry of owner on register was wrongly made and liable to be removed under s 88 Trade Marks Act 1995 – whether trade marks were infringed – whether s 123 defence was made out – meaning of "trade mark" – meaning of "applied to" and "applied in relation to" – whether the action for infringement was commenced "with due diligence". Trade Practices – misleading and deceptive conduct – whether the conduct of the owner of the trade marks after registering the assignment was misleading or deceptive or fraudulent. Words and Phrases – "trade mark", "applied to", "applied in relation to".

Trade Marks Act 1938 (UK) – s 4(3)(a) Trade Marks Act 1995 (Cth) – ss 6, 7, 9, 17, 20, 88, 92, 109, 110, 120, 123, 129 Trade Practices Act 1974 – ss 52, 82 Trade Marks Regulations 1995 – reg. 10(1)(a)

Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 – cons. Colgate Palmolive Ltd v Markwell Finance Ltd [1989] RPC 497 – cons.

TRANSPORT TYRE SALES PTY LTD V MONTANA TYRES RIMS AND TUBES PTY LTD NG 706 of 1998 JUDGES: BEAUMONT, HEEREY AND EMMETT JJ DATE: 29 MARCH 1999 PLACE: SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 706 OF 1998

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN: TRANSPORT TYRE SALES PTY LTD

Appellant

AND: MONTANA TYRES RIMS AND TUBES PTY LTD

Respondent

JUDGE: BEAUMONT, HEEREY AND EMMETT JJ

DATE OF ORDER: 29 MARCH 1999

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. Appeal allowed in part. 2. Set aside orders 1, 2, 3 and 4 made on 19 June 1998; in lieu thereof, make the following orders: (a) Order that, with the exception of the claim for damages the subject of the direction in order 5 made on 19 June 1998, the application be otherwise dismissed. Remit the claim for damages to the trial Judge in accordance with these reasons for judgment. (b) Order, that the cross-claim be remitted to the trial Judge for the purpose of making determinations on the questions of contravention of the Trade Practices Act raised by the cross-claim, otherwise order that the cross-claim be dismissed. (c) Make no order for the costs of the trial on 6, 7 and 8 April 1998; costs of (i) the claim for damages mentioned in (a); and (ii) the remitted part of the cross-claim to abide the discretion of the Judge trying that issue. 3. Appeal otherwise dismissed. Make no order for the costs of the appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.