Oxford Funding Pty Ltd v Oxford Asia-Pacific Investments Pty Ltd [2005] FCA 1637

FEDERAL COURT OF AUSTRALIA

Oxford Funding Pty Ltd v Oxford Asia-Pacific Investments Pty Ltd [2005] FCA 1637 PRACTICE AND PROCEDURE – application for interlocutory injunction – applicant owns registered trade marks containing the word "Oxford" in respect of various financial services – respondent trades under name that includes the word "Oxford" – parties operate in different areas of the financial services industry – respondent associated with international group "Oxford Investment Group" – no evidence of complaints or confusion arising from similarity between parties' names – whether balance of convenience favours grant of interlocutory injunction OXFORD FUNDING PTY LTD v OXFORD ASIA-PACIFIC INVESTMENTS PTY LTD NO. VID 1317 OF 2005 HEEREY J 2 NOVEMBER 2005 MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 1317 OF 2005

BETWEEN: OXFORD FUNDING PTY LTD

APPLICANT

AND: OXFORD ASIA-PACIFIC INVESTMENTS PTY LTD

RESPONDENT

JUDGE: HEEREY J

DATE OF ORDER: 2 NOVEMBER 2005

WHERE MADE: MELBOURNE

UPON the Respondent, by its Counsel, undertaking to the Court that, pending the final hearing and determination of this proceeding, the Respondent will not provide: (a) debt factoring services; (b) debt financing services; (c) debt collection services; or (d) outsourcing services in relation to accounts receivable administration, under or by reference to its corporate name "Oxford Asia Pacific Investments" or any name that includes the word "Oxford"

THE COURT ORDERS THAT: 1. The Applicant's application for interlocutory injunctions dated 25 October 2005 be dismissed. 2. The costs of and incidental to the Applicant's application for an interlocutory injunction be reserved. 3. The Respondent have leave to file and serve a request for further and better particulars of the Applicant's statement of claim on or before 10 November 2005. 4. The Applicant provide further and better particulars of its statement of claim in response to any request for further and better particulars filed and served by the Respondent pursuant to paragraph 3 on or before 18 November 2005. 5. The Respondent file and serve its defence and any cross claim on or before 28 November 2005. 6. The Applicant file and serve any reply and defence to any cross claim on or before 12 December 2005. 7. The Respondent file and serve any reply to any defence and any cross claim on or before 19 December 2005. 8. The parties file and serve verified lists of documents on or before 30 January 2006. 9. The parties provide inspection of discovered documents on or before 13 February 2006. 10. The proceeding be referred to mediation by a mediator to be agreed between the parties or in default of agreement to be appointed by the Court on the following basis: (a) such mediation to take place after 14 February 2006 and before 27 February 2006; (b) the solicitors for the Applicant shall, after consultant with the solicitors for the Respondent, deliver to the mediator a mediation book containing a copy of the pleadings, affidavit material and such other documentation as may be agreed, together with a copy of this order, and shall take all steps necessary to ensure that the mediation commences as soon as practicable; (c) each party shall, at least 2 days prior to the date fixed for the Mediation, prepare, exchange and deliver to the mediator, for the purposes of the mediation, a Position Paper addressing the key issues in the proceeding; (d) the mediation shall be attended by those persons who have the ultimate responsibility for deciding whether to settle the dispute and the terms of any settlement and the lawyers who have ultimate responsibility to advise the parties in relation to the dispute and its settlement; (e) the mediator, not later than 1 March 2006, report back to the Court whether the mediation is finished; and (f) subject to any further order, the costs of the mediation be paid in the first instance by the Applicant and the Respondent in equal shares. 11. The parties have liberty to apply on three days written notice. 12. The proceeding be listed for a further directions at 9.30 am on 7 March 2005. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.