Langley v Ryan Tabbara [2008] FCA 1055

FEDERAL COURT OF AUSTRALIA

Langley v Ryan Tabbara [2008] FCA 1055

ELEANOR RUTH LANGLEY v RYAN TABBARA OF AUST. DOMAINS INTERNATIONAL PTY LTD (ACN 105 510 674)

NSD 925 of 2008

LINDGREN J

11 JULY 2008

SYDNEY IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 925 of 2008

BETWEEN: ELEANOR RUTH LANGLEY

Applicant

AND: RYAN TABBARA OF AUST. DOMAINS INTERNATIONAL PTY LTD (ACN 105 510 674)

Respondent

JUDGE: LINDGREN J

DATE OF ORDER: 11 JULY 2008

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. The application be dismissed.

2. The applicant pay the respondent's costs of the proceeding.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 925 of 2008

BETWEEN: ELEANOR RUTH LANGLEY

Applicant

AND: RYAN TABBARA OF AUST. DOMAINS INTERNATIONAL PTY LTD (ACN 105 510 674)

Respondent

JUDGE: LINDGREN J

DATE: 11 JULY 2008

PLACE: SYDNEY

REASONS FOR JUDGMENT 1 There is listed before the Court today for final hearing of an application by Ms Langley against Ryan Tabbara. 2 When the proceeding was before the Court on 2 July 2008 Ms Langley, who appears in person, said that her claim was one of infringement of her trade mark and nothing else, and that she would be relying on her own affidavit of 20 June 2008 filed in support of her application as the totality of her evidence. The case was fixed for hearing today accordingly. 3 Pursuant to directions made on 2 July 2008 an affidavit of the respondent, Mr Tabbara, made on 8 July 2008 has been filed and served but I do not rely on that affidavit at all. 4 Ms Langley's affidavit establishes that she is the owner of a registered trade mark "www.correctalaser.com.au". The trade mark registration number is 1027966. The trade mark was registered from 3 November 2004 in respect of Goods and Services falling within Class 45, namely, "Provision of information, via an Internet web site, on the effects of lasers, as a community service". 5 Apparently, Aust Domains International Pty Ltd (the Company) registered a domain name at www.correctalaser.com.au and hosted a website at that address for Ms Langley for a fee. 6 Annexed to Ms Langley's affidavit is evidence that she paid $248 into the bank account of the Company on 22 March 2007. She asserts that the payment was for "two years of domain name, $69, and one year of Ezyweb hosting and web space to 9 May 2008, $179". This proceeding was commenced on 20 June 2008. 7 The way in which Ms Langley puts her case is that the Company was an "authorised user" of her registered trade mark. Ms Langley has directed my attention to s 26 (1)(e)(iii) of the Trade Marks Act 1995 (Cth) (the Act). 8 Subsection 26(1) provides that "Subject to any agreement between the registered owner of a registered trade mark and an authorised user of the trade mark", the authorised user may do any of the things referred to in the following paras. In other words, the provision is, as one would expect, subject to the terms of the agreement between the registered owner and the authorised user. Ms Langley relies on para (e) of s 26(1) which provides, relevantly, that the authorised user may give permission to any person to remove the registered trade mark that is applied to any goods, or in relation to any goods or services, in respect of which the trade mark is registered. 9 The expression "authorised user" is defined in s 8(1) of the Act. That subsection provides that a person is an "authorised user" of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark. 10 Thus, the scheme of the provisions is that one must find goods or services that are under the control of Ms Langley in relation to which Mr Tabbara has used the registered trade mark. The facts of the present case do not fit this scheme at all. Mr Tabbara has not used Ms Langley's trade mark in relation to services under the control of Ms Langley. 11 Ms Langley's real complaint seems to be that in breach of a contractual arrangement between her and the Company, the Company removed her registered trade mark the website. That is to say, her complaint seems to be simply that she paid money to the Company in return for the Company's promise to host her website for a period of time and in breach of the contract before expiry of that time the Company ceased to do so. 12 For the above reasons the present proceeding should be dismissed. Another reason why it should be dismissed is that the complaint that Ms Langley makes is against the Company not the respondent, Mr Tabbara. 13 Costs should follow the event in the usual way. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren.