Wong v Du [2006] FCA 754

FEDERAL COURT OF AUSTRALIA

Wong v Du [2006] FCA 754

PRACTICE & PROCEDURE – trade mark infringement claim against owner of rival driving school – both advertisements contained six identical Chinese characters - interlocutory injunction application – whether serious question to be tried Held – interlocutory injunction application dismissed – no serious question to be tried as (i) Chinese characters in respondent's advertisement constituted a description of the services provided (ii) respondent's mark used in good faith (iii) respondent's mark was not substantially identical or deceptively similar to the applicant's mark Trade Marks Act 1995 (Cth) ss 7, 17, 120(1), 122(1)(b)(i) Australian Chinese Newspapers Pty Ltd v Melbourne Chinese Press Pty Ltd (2003) 58 IPR 1 cited Eastman Photographic Materials Company Limited v Comptroller General of Patents, Designs and Trademarks [1898] AC 571 at 580 followed Melbourne Chinese Press Pty Ltd v Australian Chinese Newspaper Pty Ltd [2004] FCAFC 201 cited TOMMY WONG v BIE HAN DU NO. VID 362 of 2006 HEEREY J 30 MAY 2006 MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 362 of 2006

BETWEEN: TOMMY WONG

APPLICANT

AND: BIE HAN DU

RESPONDENT

JUDGE: HEEREY J

DATE OF ORDER: 30 MAY 2006

WHERE MADE: MELBOURNE

THE COURT ORDERS THAT: The application for an interlocutory injunction is dismissed with costs

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 362 of 2006

BETWEEN: TOMMY WONG

APPLICANT

AND: BIE HAN DU

RESPONDENT

JUDGE: HEEREY J

DATE: 30 MAY 2006

PLACE: MELBOURNE

REASONS FOR JUDGMENT 1 The applicant is the registered proprietor of Australian trade mark number 1052216 in class 41 education and training. He seeks an interlocutory injunction to restrain the respondent from using a mark which is alleged to be substantially identical with or deceptively similar to the applicant's mark. 2 For an interlocutory injunction there must be a serious question to be tried and the balance of convenience must also favour the grant. 3 Both the applicant and the respondent own driving schools catering to the Chinese community. The applicant's mark is as follows: The six Chinese characters translate in English as "Professional Driving School". The allegedly infringing mark used by the respondent is as follows: 4 The first three characters in the respondent's mark translate to "Melbourne". The remaining six are identical with those in the applicant's mark. Thus the Chinese characters in the respondent's advertisement translate as "Melbourne Professional Driving School". There is no complaint regarding the English text "Greater Melbourne Professional Driving School". 5 Both marks have appeared in advertisements in Chinese newspapers circulating in Melbourne. Trade Marks Act 1995 (Cth) 6 Section 120(1) of the Trade Marks Act 1995 (Cth) provides: "A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered." 7 "Sign" is defined in s 6 to include a letter, word, name, device etc. Chinese characters can constitute a sign: see Australian Chinese Newspapers Pty Ltd v Melbourne Chinese Press Pty Ltd (2003) 58 IPR 1. 8 Section 17 defines a trade mark as: "… a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person." Serious question to be tried 9 The respondent submitted that the applicant has not made out a serious question to be tried for a number of reasons. The respondent first contended, correctly in my view, that there was no arguable case that he had used the Chinese characters in question as a trade mark. Counsel for the respondent referred to the well-known statement of Lord Herschell in Eastman Photographic Materials Company Limited v Comptroller General of Patents, Designs and Trademarks [1898] AC 571 at 580: "… it would obviously have been out of the question to permit a person by registering a trade-mark in respect of a particular class of goods to obtain a monopoly of the use of a word having reference to the character or quality of those goods. The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent the other members of the community from using for the purposes of description a word which has reference to the character or quality of goods." In my view, the characters in question are simply descriptive of the service the respondent provides, that is to say a professional driving school in Melbourne. Moreover, used in the context of the advertisements, the descriptive nature of the Chinese characters is emphasised by their use in conjunction with the "L" device which forms the distinctive part of the respondent's mark. The respondent has used characters which appropriately describe his business and, in addition, he has used a device which is quite different from the steering wheel device in the applicant's mark. 10 The respondent's second argument, which I also accept, was that s 122(1)(b)(i) of the Act applies. Section 122(1)(b)(i) provides that a person does not infringe a registered trademark when the person uses a sign in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of services. While there were some assertions from the bar table regarding the respondent's use of information about the applicant's business allegedly acquired by the respondent while he was an employee, there was no evidence to that effect. In any event, the important issue for this case is whether the respondent's use of the sign was in good faith. Given that the words complained of in the respondents' mark are purely descriptive, as already explained, there is no reasonable basis on which to attribute any lack of good faith to the respondent in relation to the use of his mark – that being the only relevant question for present purposes. 11 Given my findings above, it is unnecessary to consider in any detail the further ground relied upon by the respondent, namely that the respondent's mark was not substantially identical with or deceptively similar to the applicant's mark. Counsel for the applicant referred to Melbourne Chinese Press Pty Ltd v Australian Chinese Newspaper Pty Ltd [2004] FCAFC 201, a trade mark infringement case concerning the mastheads of competing Chinese language newspapers. At first instance, Conti J held that the respondent's masthead was deceptively similar to the applicant's mark and therefore constituted an infringement, a decision which was upheld by the Full Court. As was discussed in Melbourne Chinese Press at [41], the two marks are not to be compared side by side, and the marks must be considered in their entirety. Having regard to the distinctive devices used in the marks in conjunction with the purely descriptive Chinese characters, I am not satisfied there is an arguable case of deceptive similarity. Balance of convenience 12 There is no evidence of any real damage to the applicant caused by the respondent's use of his mark. The applicant deposed: "The income earned from the driving school is my only source of income. Due to the infringement of my registered trademark by the respondent, I believe that I have lost income and I will continue to lose income if the respondent is not restrained from infringing my registered trade mark. I have learnt from many would be learner drivers that they thought that the respondent's business is also my business, or is associated with my business and hence they engaged him as their instructor." 13 The last sentence was objected to by counsel for the respondent. I did not uphold the objection, but because of its vagueness very little evidential weight can be attributed to it. Further, there is also some hardship that would occur to the respondent were the injunction to be granted as he would be required to register another business name. Orders 14 The application for an interlocutory injunction will be dismissed with costs.