H-D Michigan, Inc v MC World Ltd [2003] FCA 925

FEDERAL COURT OF AUSTRALIA

H-D Michigan, Inc v MC World Ltd [2003] FCA 925 TRADE MARKS – registered trade marks – infringement – passing off

Trade Practices Act 1974 (Cth)s 120 Trade Marks Act 1995 (Cth) s 52 Consumer Affairs and Fair Trading Act 1990 (NT) s 42 H-D MICHIGAN, INC AND HARLEY-DAVIDSON MOTOR COMPANY, INC v MC WORLD LTD TRADING AS STRICTLY HARLEY (IN RECEIVERSHIP) (ABN 098 551 725) AND JOZSEF KALMAR

N306 OF 2003 EMMETT J 6 JUNE 2003 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N306 OF 2003

BETWEEN: H-D MICHIGAN, INC

FIRST APPLICANT

HARLEY-DAVIDSON MOTOR COMPANY, INC

SECOND APPLICANT

AND: MC WORLD LTD TRADING AS STRICTLY HARLEY (IN RECEIVERSHIP) (ABN 098 551 725)

FIRST RESPONDENT

JOZSEF KALMAR

SECOND RESPONDENT

JUDGE: EMMETT J

DATE OF ORDER: 6 JUNE 2003

WHERE MADE: SYDNEY

THE COURT DECLARES THAT: 1. the respondents have infringed the trade marks listed in Schedule A to these Orders (the 'Registered Trade Marks'). AND THE COURT ORDERS THAT: 2. the respondents by themselves, their servants, agents or otherwise within 7 days of the making of the order take all necessary steps to deregister the Northern Territory registered business name BN00910259 'Strictly Harley', or to change that name to a name which does not incorporate any of the Registered Trade Marks listed or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks; 3. the respondents and each of them by themselves, their servants, agents or otherwise, be restrained from registering or using any business or corporate name which incorporates any of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks, including the name Strictly Harley; 4. the respondents and each of them, by themselves, their servants, agents or otherwise be restrained from publishing promotional materials or placing any entries or advertisements in online or hard copy versions of the Yellow Pages or the White Pages or any other directories or publications which incorporate or make reference to Strictly Harley or, without the prior written consent of the applicants, any of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks; 5. the respondents and each of them, by themselves, their servants, agents or otherwise be restrained from applying to register or using any domain name, URL or email address which incorporates Strictly Harley or any of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks; 6. that the respondents and each of them, by themselves, their servants, agents or otherwise, be restrained from: (i) manufacturing; (ii) causing or procuring the manufacture or sale of; (iii) selling or offering or exposing for sale; (iv) advertising or promoting; or (v) otherwise providing motorcycles, motorcycle parts and motorcycle accessories and clothing (the 'Unauthorised Goods') and retail services in connection with the sale of motorcycles, motorcycle parts and motorcycle accessories and clothing (the 'Unauthorised Services') by reference to: (A) the name or mark Strictly Harley; (B) any one or more of the Registered Trade Marks; or (C) any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks without the prior written consent of the applicants; 7. the respondents and each of them by themselves, their servants, agents or otherwise within 14 days of the making of the order deliver up to Baker & McKenzie solicitors at Level 26, 50 Bridge Street, Sydney NSW, on behalf of the applicants, all goods, documents and other materials (the 'Materials') in their possession, custody or control, including clothing, signage, stationery, business cards and brochures which bear, without the authority of the applicants, any one or more of: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; or (iii) any mark which is substantially identical to any of the Registered Trade Marks, and that the applicants may destroy or otherwise dispose of the Materials as they see fit; 8. the respondents and each of them by themselves, their servants, agents or otherwise within 14 days of the making of the order deliver up to Baker & McKenzie solicitors at Level 26, 50 Bridge Street, Sydney NSW, on behalf of the applicants, all moulds, stamps, screen print stencils, decals and other means of applying to goods: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; or (iii) any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks, (the 'Stamps') in their possession, custody or control and that the applicants may destroy or otherwise dispose of the Stamps as they see fit; 9. the respondents and each of them by themselves, their servants, agents or otherwise, be restricted from authorising, aiding, abetting, counselling or procuring any other person or entity to engage in conduct prohibited by orders 3, 4, 5 and 6; 10. pursuant to section 80 of the Trade Practices Act 1974 (Cth) the first respondent be restrained from engaging, in trade or commerce, in conduct that is misleading or deceptive, or is likely to mislead or deceive, by making, promoting by any means, advertising, selling or offering for sale the Unauthorised Services and the Unauthorised Goods by reference to one or more of: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; (iii) the trade mark HARLEY (the 'Harley Mark'); or (iv) any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks or the Harley Mark; 11. pursuant to section 89 of the Consumer Affairs and Fair Trading Act 1990 (NT) the second respondent, by himself, his servants or agents, be restrained from engaging, in trade or commerce, in conduct that is misleading or deceptive, or is likely to mislead or deceive, by making, promoting by any means, advertising, selling or offering for sale the Unauthorised Services and the Unauthorised Goods by reference to one or more of: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; (iii) the Harley Mark; or (iv) any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks or the Harley Mark; 12. the respondents and each of them be restrained by themselves, their servants or agents, from passing off as goods produced by or with the licence, approval, authorisation or sponsorship of the applicants, goods not so produced by making, promoting by any means or advertising, offering for sale or selling without the authority of the applicants, the Unauthorised Goods by reference to one or more of: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; (iii) the Harley Mark; or (iv) any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks or the Harley Mark; 13. the respondents and each of them be restrained by themselves, their servants or agents, from passing off as services provided by or with the licence, approval, authorisation or sponsorship of the applicants, services not so provided, by providing, promoting by any means or advertising, offering for sale or selling the Unauthorised Services by reference to one or more of: (i) the name or mark Strictly Harley; (ii) the Registered Trade Marks; (iii) the Harley Mark; or (iv) any mark which is substantially identical with or deceptively similar to the Registered Trade Marks or the Harley Mark; 14. the respondents pay the applicants' costs of these proceedings on a party/ party basis, to be taxed if not agreed between the parties; 15. the parties have liberty to apply on 5 days' notice; and 16. the matter be stood over for further directions on 27 June 2003 at 9.30 am before Emmett J.