FEDERAL COURT OF AUSTRALIA Edutainments Pty Ltd v JMC Pty Ltd [2003] FCA 7 EDUTAINMENTS PTY LTD v JMC PTY LTD N 1387 of 2002 STONE J 9 JANUARY 2003 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 1387 OF 2002 BETWEEN: EDUTAINMENTS PTY LTD APPLICANT AND: JMC PTY LTD RESPONDENT JUDGE: STONE J DATE OF ORDER: 9 JANUARY 2003 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The applicant's Notice of Motion dated 8 January 2003 be made returnable instanter. 2. Subject to the usual undertakings as to damages being given by the applicant through its counsel; (a) until further order, the respondent, whether by itself, its servants or agents or otherwise, be restrained from advertising its services in association with the small animated logo depicted in the respondent's advertisement (or any logo substantially similar to that logo) copy of which is annexure "A" to the short minutes of order submitted by the applicant's counsel. (b) until further order, the respondent, whether by itself, its servants or agents or otherwise, be restrained from advertising its services in association with the logo submitted by the respondent to the applicant a copy of which is annexure "B" to the short minutes of order submitted by the applicant's counsel. 3. The costs of the notice of motion be costs in the cause. 4. The respondent is to be released from undertakings 2 and 2A given on 23 December 2002. 5. Order 5 of Whitlam J on 23 December 2002 is to be amended so that Statement of Claim is to be lodged by 17 January 2003. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 1387 OF 2002 BETWEEN: EDUTAINMENTS PTY LTD APPLICANT AND: JMC PTY LTD RESPONDENT JUDGE: STONE J DATE: 9 JANUARY 2003 PLACE: SYDNEY REASONS FOR JUDGMENT 1 This matter concerns an allegation by the applicant Edutainments Pty Ltd, trading as Computer Graphics College, to restrain the respondent JMC Pty Ltd, trading as The JMC Academy, from advertising its services in association with a small animated man logo. The applicant alleges that the respondent's logo is deceptively similar to a logo in use by the applicant. The matter came before Whitlam J on 23 December 2002 in connection with interlocutory relief sought by the applicant. At that stage the matter was resolved by the respondent giving certain undertakings including that it would not advertise its services in association with the disputed logo without at first informing the respondent of its intention to do so. 2 The applicant's logo can be described as a figure, rather like a robot, that bears some resemblance to a human figure although it would not be mistaken for the depiction of a human. It has a large head with big round eyes and a small body. The legs are encased in knee-height boots. The hands and lower arms are in gauntlet-like gloves. The creature has a cheerful somewhat assertive expression. In a newspaper advertisement published on 16-17 November 2002, the creature is shown in three different poses and in one of them the sole of the right boot bears the stylised "CGC" (presumably for Computer Graphics College) that appears elsewhere in the advertisement. 3 The respondent's original disputed logo as it appeared in an advertisement in the Sydney Morning Herald edition of 14-15 December shows a stylised figure that, while it could never be mistaken for a representation of a human, is less robotic than the applicant's figure. It has skinny limbs, is wearing a top and shorts, gloves and clumpy shoes or boots. It also has a large head and large eyes, although the eyes are oval rather than round. 4 On 7 January 2003 the applicant's solicitors received a facsimile from the respondent's solicitors attaching a copy of a logo, which it was said would accompany their client's advertisement to be published in the Sydney Morning Herald on Saturday, 11 January 2003. The logo attached to this facsimile is a variation of the logo in respect of which undertakings were given. It has a similar, but apparently female figure wearing a skirt and with longer hair. In both of the respondent's logos the figure is brandishing a sword. 5 Although there are significant differences between the respondent's original disputed logo and the later variation, the applicant alleges that both are "deceptively similar" to their client's logo or likely to mislead and deceive contrary to s 52 of the Trade Practices Act 1974(Cth). 6 There was some correspondence between the parties' solicitors with a view to obtaining undertakings that might restrain the proposed advertisement. Those attempts were not successful and consequently the matter has come before me today. By notice of motion the applicant now seeks an order that the respondent be restricted from advertising its services in association with either of these logos. 7 The applicant read an affidavit sworn by its General Manager, Marco Bettelli, who was cross-examined by Mr Young, counsel for the respondent. Both the applicant and the respondent offer education and training in various aspects of information technology including graphic arts and digital animation. The applicant conceded that the respondent offers more in-depth training including advanced diplomas. Nevertheless there is significant overlap in the training offered, an assessment that is supported by the existence of the current dispute. 8 Mr Bettelli stated that the applicant had used its logo on a billboard in William Street, North Sydney, since September 2002; that it had lodged a trademark application to register the logo in October 2002 and that the logo had been used in newspaper advertisements, a magazine and on postcards advertising open days for the applicant. While the precise extent of this advertising is not clear but I am satisfied that there has been some use of the applicant's logo over the period mentioned by Mr Bettelli. 9 While I am not at all convinced that the respondent's logos are deceptively similar to that of the applicant, I am not, for the purposes of interlocutory relief, required to be convinced. In terms of interlocutory relief I am only required to find that there is an arguable case or a serious question to be addressed. I am satisfied that this requirement has been met. Among other things, the fact that after considering the three logos for some time I am still uncertain on the point confirms my view that there is a serious question here. 10 Counsel for the respondent made much of the difference between the courses offered by the parties and submitted that in the context of the advertisement published on 14-15 December, any deceptive similarity would be redressed by the detail of the respondent's courses. I am not convinced by this submission. In my opinion the initial impact of the logo would create an impression quite disproportionate to any impression created by the writing. My conclusion that there is a serious question concerning the deceptive similarity of the logos leads to the question of balance of convenience. 11 Counsel for the respondent submitted that interlocutory relief should be denied because any detriment to the applicant, were it eventually to succeed, it, could be redressed by an appropriate award of damages. I am not convinced by this argument. It seems to me that it would be extremely difficult to establish whether, and if so to what extent, students had been be lost to the applicant by the respondent's use of a deceptively similar logo. I accept that in terms of advertising and promotion, this is the critical time for both parties who seek to enrol new students in the next month or so. It is relevant however that the applicant does not seek to prevent the respondent from advertising nor does it seek to prevent the respondent using some other computer generated figure that does not have any resemblance to that used by the applicant. Counsel for the respondent has conceded that his client had not planned to use the logo in advertising in the next few days. There is no evidence to suggest that it would not be possible for the respondent to prepare an eye-catching advertisement within a short space of time. Although the respondent specifically wished to use the logos under consideration here because they were created by one of its students, I do not, in the circumstances, attach any weight to this submission. 12 In my view the balance of convenience dictates that the applicant should have the injunction it seeks on the usual undertaking as to damages. Having invited counsels' comments on the short minutes of order submitted by the applicant's counsel, I will make orders in accordance with those minutes as amended following discussion with both counsel. Those orders are: 1. The applicant's Notice of Motion dated 8 January 2003 be made returnable instanter. 2. Subject to the usual undertakings as to damages being given by the applicant through its counsel; 1. until further order, the respondent, whether by itself, its servants or agents or otherwise, be restrained from advertising its services in association with the small animated logo depicted in the respondent's advertisement (or any logo substantially similar to that logo) copy of which is annexure "A" to the short minutes of order submitted by the applicant's counsel. 2. until further order, the respondent, whether by itself, its servants or agents or otherwise, be restrained from advertising its services in association with the logo submitted by the respondent to the applicant a copy of which is annexure "B" to the short minutes of order submitted by the applicant's counsel. 3. The costs of the notice of motion be costs in the cause. 4. The respondent is released from undertakings 2 and 2A given on 23 December 2002. 5. Order 5 of Whitlam J on 23 December 2002 is to be amended so that statement of claim is to be lodged by 17 January 2003. I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Stone. Associate: Dated: 9 January 2003 Counsel for the Applicant: Mr R Cobden Solicitor for the Applicant: Rodd Peters Counsel for the Respondent: Mr J R Young Solicitor for the Respondent: James Legal Pty Limited Date of Hearing: 9 January 2003 Date of Judgment: 9 January 2003