Melaleuca of Australia & New Zealand Pty Ltd v Duck [2004] FCA 1325

FEDERAL COURT OF AUSTRALIA

Melaleuca of Australia & New Zealand Pty Ltd v Duck [2004] FCA 1325 INTELLECTUAL PROPERTY – trade marks – passing off – confidential information – respondents were formerly independent marketing executives of the first applicant – second applicant trading as "MelaCom" in respect of telecommunication services in the United States of America – respondent knew that first applicant intended to trade as "MelaCom" in Australia – respondent registered "MelaCom" as a business name and as a trade mark in respect of telecommunication services in Queensland INJUNCTION – application for interlocutory injunction – injunction granted Trade Practices Act 1974 (Cth) Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 MELALEUCA OF AUSTRALIA AND NEW ZEALAND PTY LTD (ACN 091 339 409) AND MELALEUCA INC. v GRAHAM DUCK AND CELIA DUCK NSD1319 OF 2004 BENNETT J 6 OCTOBER 2004 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD1319 OF 2004

BETWEEN: MELALEUCA OF AUSTRALIA AND NEW ZEALAND

PTY LTD (ACN 091 339 409)

FIRST APPLICANT

MELALEUCA INC.

SECOND APPLICANT

AND: GRAHAM DUCK

FIRST RESPONDENT

CELIA DUCK

SECOND RESPONDENT

JUDGE: BENNETT J

DATE OF ORDER: 6 OCTOBER 2004

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. Subject to Order 3, the Respondents and each of them, whether by themselves, their servants, agents or otherwise be restrained until further order from: 1. disclosing to any person; and/or 2. using for the purpose of promoting, or continuing to promote, any business opportunity at any time, any information contained in any of the Marketing Executive business reports produced by the Applicants and provided to the Respondents. 1. Subject to Order 3, the Respondents and each of them, whether by themselves, their servants, agents or otherwise be restrained until further order from: 1. disclosing to any person; and/or 2. using for the purpose of promoting, or continuing to promote, any business opportunity at any time, any information contained in any of the InTouch Plus reports produced by the Applicants and provided to the Respondents. 1. Nothing in Orders 1 and 2 will prevent the Respondents, or either of them, form contacting the persons identified in the confidential document annexed to these orders and marked "Confidential A", whether for the purpose of promoting, or continuing to promote, any business opportunity, or otherwise PROVIDED THAT the Respondents, and each of them, keep records and provided those records to the Applicants and to the Court following a direction from the Court to do so, which records must comprise the following particulars of the Respondents' use of the said names in connection with the conduct of any business conducted, or to be conducted, by the Respondents, or either of them: 1. the name and contact details of each person contacted; 2. the name and contact details of each person with whom the Respondents, or either of them, have or has entered into a contractual relationship or to whom the Respondents, or either of them, have or has provided goods or services; 3. a description of all goods or services provided to each person referred to in paragraph (b) and the dates on which those goods or services were provided; 4. all sums received by the Respondents, or either of them, pursuant to any contractual, supply or services relationship referred to in paragraph (b), such account to include the sums received from each such person and the date of receipt of each sum. 2. Access to the document marked "Confidential A" and annexed to these Orders is to be limited to the parties to the proceedings. 3. The Respondents and each of them, whether by themselves, their servants, agents or otherwise be restrained from conducting any business under or by reference to the names: 1. "MELACOM"; or 2. any name which includes the name "MELACOM" without the licence of the Applicants. 1. The costs of the application for interlocutory relief shall be the Applicants' costs in the cause. The Applicants, by their counsel, give the usual undertaking as to damages. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.