Buchanan Group Pty Ltd v Sorgetti [2002] FCA 1646

FEDERAL COURT OF AUSTRALIA

Buchanan Group Pty Ltd v Sorgetti [2002] FCA 1646 TRADE MARKS – infringement - interlocutory injunction – applicant's mark "brandpower" used in connection with website brandpower.com.au and elsewhere – respondents' use of website "brandpower.com" – whether triable issues – balance of convenience TRADE PRACTICES – interlocutory injunction – "dotcom assumption" – whether persons seeking site of applicant's business Brandpower might visit respondents' site brandpower.com on assumption that applicant's site would be name of business plus ".com" WORDS AND PHRASES – "place of business" Trade Marks Act 1995 (Cth) ss 17, 24(1), 120(1) 122(1), Epitoma Pty Ltd v Australasian Meat Industry Employees Union (No. 2) (1984) 3 FCR 55 at 58-59 cited Philips Electronics MV v Remington Products Australia Pty Ltd (1997) 39 IPR 283 at 289 to 290 cited Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No. 3) (2002) FCA 1487 at [43] cited Lego Australia Pty Ltd v Pauls Merchants Pty Ltd (1982) 42 ALR 344 at 352 referred to Taco Co of Australia Inc v Taco Bell Pty Ltd (1992) 42 ALR 177 applied BUCHANAN GROUP PTY LTD v LEONARD SORGETTI & ANOR V 838 OF 2002 HEEREY J 19 DECEMBER 2002 MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY V 838 OF 2002

BETWEEN: BUCHANAN GROUP PTY LTD

APPLICANT

AND: LEONARD SORGETTI

FIRST RESPONDENT

PACIFIC MEDIA GROUP PTY LTD

SECOND RESPONDENT

JUDGE: HEEREY J

DATE OF ORDER: 19 DECEMBER 2002

WHERE MADE: MELBOURNE

Upon both the Applicant by its Counsel and Timothy Joseph Buchanan of Unit 41, 74 Gladesville Boulevard, Patterson Lakes, giving the usual undertaking as to damages, THE COURT ORDERS THAT: 1. The First and Second Respondents, whether by themselves or by their directors, agents or servants, be until the hearing and determination of the proceeding or further order restrained from using the in any way in the course of trade without the licence of the Applicant: (a) the mark "BRAND POWER" or any other word or words substantially identical or deceptively similar to the mark "BRAND POWER" whether alone or as part of any mark in relation to: (i) printed matter including books, catalogues, magazines and advertising literature, stationery, paper and cardboard ("Promotional Goods"); (ii) goods of the same description as the Promotional Goods; (iii) services closely related to the Promotional Goods. (b) the mark "BRAND POWER" or any other word or words substantially identical or deceptively similar to the mark "BRAND POWER" whether alone or as part of any mark in relation to: (i) advertising and marketing services; information and publicity services, telephone advertising including publication of directories and catalogues; and business services falling within Class 35 ("Promotional Services"); (ii) services of the same description as the Promotional Services; (iii) goods closely related to the Promotional Services. 2. The First and Second Respondents, whether by themselves or their agents or servants, be until the hearing and determination of the proceeding or further order restrained from using the domain names 'brandpower.com' and 'brandpower.tv'. 3. The Applicant file and serve a statement of claim on or before 31 January 2003. 4. The Respondents file and serve a defence and cross-claim on or before 21 February 2003. 5. The Applicant file and serve a reply and defence to cross-claim (if any) on or before 14 March 2003. 6. The proceeding be referred to mediation before a deputy district registrar to be held before 28 February 2003. 7. The proceeding be adjourned to a directions hearing to a date to be fixed in March 2003. 8. Costs are costs in the cause. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.