Virgin Enterprises Limited v Virgin Star Pty Ltd [2005] FCA 1846

FEDERAL COURT OF AUSTRALIA

Virgin Enterprises Limited v Virgin Star Pty Ltd [2005] FCA 1846 INTERLOCUTORY INJUNCTIONS – application for injunctions restraining respondents from use of any business name or domain name including the word "Virgin" and requiring respondents to remove content from their website – whether serious question to be tried – whether balance of convenience favours the grant of relief TRADE MARKS – applicant is a member of the Virgin Group of Companies – Virgin Group sells a broad range of goods and services by reference to names and marks that include the word "Virgin" – applicant is the proprietor of "Virgin" trade marks in a broad range of classes in Australia – applicant conducts substantial marketing and business through the internet – respondents provide internet and related services by reference to the name "Virgin Star" – respondents are the proprietors and registrants of domain names that include the name "Virgin Star" – whether the respondents' name and mark is deceptively similar to the applicant's trade marks TRADE PRACTICES – misleading or deceptive conduct TORTS – passing off

Trade Practices Act 1974 (Cth) s 52 Trade Marks Act 1995 (Cth) s 120

The Architects (Australia) Pty Ltd t/as Architects Australia v Whitty Consultants Pty Ltd [2002] QSC 139 referred to Republic of Ireland v O'Donoghue [2004] FCA 1753 referred to American Cyanamid v Ethicon Ltd [1975] AC 396 referred to Construction, Forestry, Mining and Energy Union v CSR Limited t/as CSR Humes [2000] FCA 1203 referred to D G Whelan Rentals Pty Ltd v Australian Building Construction Employees' and Builders Labourers' Federation (1983) 46 ALR 339 referred to VIRGIN ENTERPRISES LIMITED (ACN 091 339 409) v VIRGIN STAR PTY LTD (ACN 116 015 868), WEB DIMENSIONS PTY LIMITED (ACN 108 749 702), GABRIELLE MAAS and AGNIESZKA MONIKA WIKLENDT NSD 2124 OF 2005 TAMBERLIN J SYDNEY 22 DECEMBER 2005