Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816

FEDERAL COURT OF AUSTRALIA

Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 TRADE MARKS - Action to restrain repetition of claims of infringement of registered trade mark – Whether activities of applicant were an infringement – Trade mark registered in respect of two described categories – Proper approach to interpreting description of categories of registration – Whether it is legitimate to have regard to previous activities of registered owner in construing descriptions – Whether applicant's goods can be described as 'magnets' – Infringement not established – Application for removal of mark from Trade Marks Register – Onus of proof – Whether applicant has established lack of intention to use in good faith and non-use during relevant period – Removal order made. Trade Marks Act 1995 (Cth) ss 6, 27, 92, 129, 209, 210, 211 Trade Marks Regulations 1995 (Cth) cl 4.4, Schedule 1 NIKKEN WELLNESS PTY LIMITED v NICOLAAS VAN VOORST N 1232 of 2001 WILCOX J 8 AUGUST 2003 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N1232 of 2001

BETWEEN: NIKKEN WELLNESS PTY LIMITED

APPLICANT/CROSS-RESPONDENT

AND: NICOLAAS VAN VOORST

RESPONDENT/CROSS-CLAIMANT

JUDGE: WILCOX J

DATE OF ORDER: 8 AUGUST 2003

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. It be declared that the respondent, Nicolaas van Voorst, had no grounds for making the threats referred to in paragraph 4 of the Statement of Claim that distribution or other conduct in relation to products of the applicant, Nikken Wellness Pty Ltd, infringed the respondent's registered trade mark. 2. The respondent be restrained from: (a) continuing to make the threats referred to in order 1; and (b) representing to distributors of the applicant's products and persons who are, or are likely to be, involved in the promotion or the facilitation of the promotion of the applicant's products that: (i) they are infringing the respondent's trade mark; (ii) they are liable to have legal proceedings commenced against them on the ground that they had infringed or would infringe the respondent's registered trade mark; (iii) the applicant is not entitled to distribute its products; (iv) the applicant is distributing therapeutic magnets under the respondent's trade mark without his permission; (v) the activity of housing meetings by distributors of the applicant's products for the purpose of selling those products, is illegal; and (vi) they should cease such illegal activity. 3. Australian registered trade mark no 837953, being NIKKEN registered in classes 10 and 35, be removed from the Register of Trade Marks. 4. The respondent's counter-claim be dismissed. 5. The respondent pay the costs incurred by the applicant in connection with the proceeding. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.