Mobileworld Communications Pty Ltd v Q & Q Global Enterprise Pty Ltd [2003] FCA 1579

FEDERAL COURT OF AUSTRALIA

Mobileworld Communications Pty Ltd v Q & Q Global Enterprise Pty Ltd [2003] FCA 1579 MOBILEWORLD COMMUNICATIONS PTY LTD (ACN 090 451 415) & ORS v Q & Q GLOBAL ENTERPRISE (ACN 104 267 049) & ORS V 658 of 2003 ALLSOP J 24 DECEMBER 2003 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIAN DISTRICT REGISTRY V 658 of 2003

BETWEEN: MOBILEWORLD COMMUNICATIONS PTY LTD

(ACN 090 451 415)

FIRST APPLICANT

MOBILEWORLD OPERATING PTY LTD

(ACN 090 451 433)

SECOND APPLICANT

CRAZY JOHN (AUSTRALIA) PTY LTD

(ACN 090 451 424)

THIRD APPLICANT

AND: Q & Q GLOBAL ENTERPRISE PTY LTD

(ACN 104 267 049)

FIRST RESPONDENT

CRAZY RON'S COMMUNICATIONS PTY LTD

(ACN 097 918 806)

SECOND RESPONDENT

CRAZY RON'S COMMUNICATIONS AUSTRALIA PTY LTD

(ACN 093 598 488)

THIRD RESPONDENT

BHL GROUP PTY LTD

(ACN 098 798 997)

FOURTH RESPONDENT

CRAZY RON'S NETWORK PTY LTD

(ACN 097 906 860)

FIFTH RESPONDENT

C R COMMUNICATIONS PTY LTD (ACN 101 412 266) SIXTH RESPONDENT

CRAZY RON'S COMMUNICATIONS AUSTRALIA PTY LTD

(ACN 093 598 488)

CROSS CLAIMANT

MOBILEWORLD COMMUNICATIONS PTY LTD

(ACN 090 451 415)

CROSS RESPONDENT

JUDGE: ALLSOP J

DATE OF ORDER: 23 DECEMBER 2003

WHERE MADE: SYDNEY

THE COURT: 1. Orders that the respondents and each of them by themselves their servants or agents be permanently restrained from using the names "Crazy John", "Crazy John's", "Crazy Ron", "Crazy Ron's" or "www.crazyrons.com.au" or any names substantially identical therewith or deceptively similar thereto so as to infringe: (a) Australian registered trade mark No 656212 in Class 38 for "telecommunications"; or (b) Australian registered trade mark No 803950 in Class 35 for "business advisory services relating to telecommunications"; retail services relating to "telecommunications products" and Class 38 for "telecommunications services and advisory services relating thereto". 2. Grants leave to the respondents (to the extent necessary) to appeal from: (a) the orders made on 4 December 2003, to the extent that those orders have not been vacated; (b) order 2 made on 8 December 2003; and (c) the orders made on 23 December 2003. 3. Notes the undertaking of the respondents to the Court: (a) to file their notice of appeal on or before 24 December 2003; (b) to prosecute the appeal diligently; (c) to take all steps available to them to have the hearing of the appeal included in the May sittings of the Full Court in Melbourne; (d) to keep full and proper accounts of the sales and expenses of each of the existing stores on the Gold Coast in Queensland carried on under the name "Crazy Ron's"; and (e) pending the determination of the appeal not to destroy any accounting records of the businesses conducted in those stores. 4. Orders that pending the determination of the appeal, order 1 above be stayed but only in connection with the existing stores trading under the name "Crazy Ron's" on the Gold Coast in Queensland, and that the permitted use or advertising shall only be in connection with existing stores on the Gold Coast and limited to use or advertising undertaken, broadcast or published locally in the Gold Coast area north of the Tweed River, by way of local signage, local newspapers, local radio, local television or local pamphlet drops, or otherwise locally. 5. Grants liberty to the applicants to apply in respect of the stay imposed by order 4 above. 6. Orders as conditions of order 1 above: (a) that the applicant pay to the respondents the sum of $50,000 by way of set off against the applicants' costs, to be taxed in default of agreement, save that in the event that the applicants' costs payable by the respondents are less than $50,000, the applicant shall pay the difference between the sum due for their costs and $50,000; (b) that the applicants shall not be entitled to claim in respect of the operation of the Gold Coast stores any sum by way of damages or for an account of profits prior to the date of institution of these proceedings. 7. Orders that the hearing in relation to damages or on account of profits be adjourned to a date to be fixed by the Registrar. 8. Orders that the respondents pay the applicants' costs of the proceedings on 8 and 23 December 2003. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.