Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319

FEDERAL COURT OF AUSTRALIA

Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 Citation: Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319

Parties: COMPLETE TECHNOLOGY INTEGRATIONS PTY LTD (ACN 097 753 458) v GREEN ENERGY MANAGEMENT SOLUTIONS PTY LTD (ACN 141 454 266), RAYMOND DAVID WHALING, SANDRA ANN WHALING and DEAN AARON WADE

File number: VID 1023 of 2010

Judge: KENNY J

Date of judgment: 18 November 2011

Catchwords: PRACTICE AND PROCEDURE – summary judgment application pursuant to s 31A(1) Federal Court of Australia Act 1976 (Cth) – applicable test – where respondent company in liquidation – whether individual respondents have no reasonable prospect of success – allegations of trade mark infringement – use of applicant's registered trade marks on advertising materials and associated business paraphernalia including website and metatag use – consideration of relevant principles – consideration of what constitutes "use as a trade mark" under s 120(1) of the Trade Marks Act 1995 (Cth) – strong prima facie case of trade mark infringement by first respondent – allegations of passing off – first respondent's use of applicant's business name and trade marks would lead customers to the false belief that businesses were in some way connected – whether individual respondents joint tortfeasors – misleading and deceptive conduct pursuant to ss 52 and 53(d) of the Trade Practices Act 1974 (Cth) – first respondent's use of applicant's business name and trade marks was likely to mislead and deceive consumers – first respondent represented that its business was affiliated with applicant's contrary to s 53(d) – liability of individual respondents considered in relation to s 75B as persons involved – findings made against second and fourth respondent – no finding against third respondent – allegations of copyright infringement – applicant claimed copyright in template quotation letter as a 'literary work' for the purposes of Copyright Act 1968 (Cth) – original work created by managing director – no clear and distinct evidence of contract of service – no reproduction of a substantial part of copyright work established – breaches of employment contracts relating to second and fourth respondents only – employment contracts contained non-competition and confidentiality clauses – evidence demonstrated a prima facie case that second and fourth respondents acted in breach of those clauses – breaches of confidence and fiduciary duties – unnecessary to determine on summary judgment application – summary judgment application granted in part COSTS – consideration of circumstances in which order for costs taxed and paid forthwith will be made – order made