Playboy Enterprises International Inc v Hiwind Pty Ltd t/as Mylk Lounge [2006] FCA 1146

FEDERAL COURT OF AUSTRALIA

Playboy Enterprises International Inc v Hiwind Pty Ltd t/as Mylk Lounge [2006] FCA 1146

PLAYBOY ENTERPRISES INTERNATIONAL INC v HIWIND PTY LIMITED T/AS MYLK LOUNGE AND HAKKI MUSTAFA NSD 1066 OF 2006

WILCOX J

17 AUGUST 2006

SYDNEY IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 1066 OF 2006

BETWEEN: PLAYBOY ENTERPRISES INTERNATIONAL INC

Applicant

AND: HIWIND PTY LIMITED T/AS MYLK LOUNGE

First Respondent

HAKKI MUSTAFA

Second Respondent

JUDGE: WILCOX J

DATE OF ORDER: 17 AUGUST 2006

WHERE MADE: SYDNEY

In these orders the following terms carry these meanings: PLAYBOY Trade Marks means the word PLAYBOY and a RABBIT HEAD Device a representation of which is annexed hereto and marked "A". Unauthorised Entertainment Event means entertainment and nightclub services at the First Respondent's MYLK LOUNGE nightclub under or by reference to the trade mar PLAYBOY MANSION PARTY and PLAYBOY Trade Marks.

THE COURT:

1. DECLARES that the Respondents, and each of them, have by promoting, offering and engaging in an Unauthorised Entertainment Event: 1.1 infringed registered trade mark No. 824241 PLAYBOY in Class 41; 1.2 infringed registered trade mark No. 867461 RABBIT HEAD Device in Class 41; 1.3 infringed registered trade mark No. 780284 PLAYBOY in Class 42; 1.4 infringed registered trade mark No. 780283 RABBIT HEAD Device in Class 42 1.5 engaged in conduct which contravenes Section 52 of the Trade Practices Act, 1974 ("Act"); 1.6 made representations in contravention of Section 53(c) of the Act; 1.7 made representations in contravention of Section 53(d) of the Act; 1.8 wrongfully passed off the First Respondents' entertainment and/or club services as and for the services provided by or under the licence of or otherwise associated with the Applicant. 2. ORDERS that the Respondents, and each of them, by themselves, their servants, agents or otherwise be restrained from infringing: 2.1 registered trade mark No. 824241 PLAYBOY in Class 41; 2.2 registered trade mark No. 867461 RABBIT HEAD Device in Class 41; 2.3 registered trade mark No. 780284 PLAYBOY in Class 42; 2.4 registered trade mark No. 780283 RABBIT HEAD Device in Class 42 3. ORDERS that the Respondents, and each of them, by themselves, their servants, agents or otherwise be restrained from, in trade and commerce in Australia, providing entertainment and/or club or entertainment establishment service under or by reference to the PLAYBOY Trade Marks or any of them, or any trade mark substantially identical with or deceptively similar thereto. 4. ORDERS that the Respondents, and each of them, by themselves, their servants, agents or otherwise be restrained from passing off the Respondents' entertainment and/or club services as services provided by or under the licence of or otherwise associated with the Applicant. 5. ORDERS that the Respondents, and each of them, immediately deliver up on oath to the solicitors for the Applicant all stocks of promotional material, corporate stationary and other material bearing or referring to the Unauthorised Entertainment Event. 6. ORDERS that the Respondents pay the Applicant's costs of the proceedings. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.