Charles Worthington Hair & Beauty Company Limited v International Hair Products Pty Ltd [2003] FCA 490

FEDERAL COURT OF AUSTRALIA

Charles Worthington Hair & Beauty Company Limited v International Hair Products Pty Ltd [2003] FCA 490 INTELLECTUAL PROPERTY – trade mark – whether costs incurred by applicants in proceedings commenced after threats of infringement had been made by the respondent should be seen as being damages that the applicants have sustained because of the respondent's conduct under s 129(2) of the Trade Marks Act 1995 (Cth). COSTS – whether it is appropriate to exercise the Court's discretion to order that costs be paid by an unsuccessful party on an indemnity basis rather than the usual party and party basis where the respondent had acted in such a way as to make it necessary for the applicant to commence proceedings in respect of which the respondents may have had no defence. Trade Marks Act 1995 (Cth) – s 129(2) CHARLES WORTHINGTON HAIR & BEAUTY COMPANY LIMITED AND TRIMEX PTY LTD (ACN 001 198 787) v INTERNATIONAL HAIR PRODUCTS PTY LTD N54 OF 2003 HILL J 24 APRIL 2003 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N54 OF 2003

BETWEEN: CHARLES WORTHINGTON HAIR & BEAUTY COMPANY LIMITED

FIRST APPLICANT

TRIMEX PTY LTD (ACN 001 198 787)

SECOND APPLICANT

AND: INTERNATIONAL HAIR PRODUCTS PTY LTD

RESPONDENT

JUDGE: HILL J

DATE OF ORDER: 24 APRIL 2003

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. The first applicant is the owner of the TAKE AWAYS trade mark in Australia in relation to "preparations for the hair including hair lotions, shampoos, conditioners, creams, oils, gels, mousse, wax and lacquers, hair colorants, hair waving preparations; cosmetic preparations for the bath, bath salts, not for medical purposes; essential oils; soap; creams and lotions for cosmetic purposes; washing preparations; cosmetics; perfumery" for the purposes of s 27 of the Trade Marks Act 1995 (Cth). 1. The respondent is not the owner of the TAKE AWAYS trade mark in Australia in relationto "hair care products" for the purposes of s 27 of the Trade Marks Act 1995 (Cth). 1. The first applicant has used the TAKE AWAYS trade mark in Australia on relevant goods prior to the priority date of the respondent's trade mark registration 880676 ("the Respondent's registration") and prior to any relevant use of TAKE AWAYS by the respondent and for that reason trade mark application 907702 for TAKE AWAYS in class 3 in the name of the first applicant should be registered in the first applicant's name in respect of "preparations for the hair including hair lotions, shampoos, conditioners, creams, oils, gels, mousse, wax and lacquers, hair colorants, hair waving preparations; cosmetic preparations for the bath, bath salts, not for medical purposes; essential oils; soap; creams and lotions for cosmetic purposes; washing preparations; cosmetics; perfumery". 1. The applicants have not at any time infringed the Respondent's registration. 1. The respondent had no grounds for making the threat to the second applicant referred to in paragraph 25 of the Statement of Claim on the ground that the second applicant had infringed the Respondent's registration. 1. The respondent be restrained by itself, its servants, agents or otherwise, from continuing to threaten the applicants that it will bring action against them on the ground that they have infringed the Respondent's registration. 1. The respondent pay the applicants' costs of the proceedings on a party and party basis. Those costs are to be agreed between the parties or if not agreed to be taxed. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.