Mitsubishi Motors Australia Ltd v Ripponlea Motors Pty Ltd [2013] FCA 627

FEDERAL COURT OF AUSTRALIA

Mitsubishi Motors Australia Ltd v Ripponlea Motors Pty Ltd [2013] FCA 627 Citation: Mitsubishi Motors Australia Ltd v Ripponlea Motors Pty Ltd [2013] FCA 627

Parties: MITSUBISHI MOTORS AUSTRALIA LTD v RIPPONLEA MOTORS PTY LTD and GREGORY THOMAS WALLACE

File number: SAD 139 of 2013

Judge: BESANKO J

Date of judgment: 18 June 2013

Date of hearing: 18 June 2013

Place: Adelaide

Division: GENERAL DIVISION

Category: No Catchwords

Number of paragraphs: 4

Counsel for the Applicant: Mr S J Doyle SC

Solicitor for the Applicant: Thomsons Lawyers

Counsel for the Respondents: Mr Wallace appeared in person

IN THE FEDERAL COURT OF AUSTRALIA SOUTH AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION SAD 139 of 2013

BETWEEN: MITSUBISHI MOTORS AUSTRALIA LTD

Applicant

AND: RIPPONLEA MOTORS PTY LTD

First Respondent

GREGORY THOMAS WALLACE

Second Respondent

JUDGE: BESANKO J DATE OF ORDER: 18 JUNE 2013 WHERE MADE: ADELAIDE

UPON 1. The applicant providing the usual undertaking as to damages within the meaning of practice note CM14 until further order. THE COURT ORDERS THAT: 2. This application be made specially returnable to 10.00 am on Tuesday 18 June 2013. 3. Until further order, the first respondent must by or before 4.00 pm on Tuesday 2 July 2013, and a mandatory injunction is hereby granted, physically remove any and all signage and other advertising material for new vehicles bearing the name 'MITSUBISHI' and any associated trade indicia of the applicant (including, but not limited to, any three diamond device mark) from the premises situated at the common street address 355 – 359 Nepean Highway, Parkdale, Victoria 3195 ("the Site") and return such signage or advertising material to the applicant. 4. In addition to order 3, the first respondent must by or before 4.00 pm on Tuesday 2 July 2013, and a mandatory injunction is hereby granted, take all necessary steps to comply with clause 10.7.8 of the Franchise Agreement between the applicant and the first respondent. 5. In addition to orders 3 and 4, the applicant or its agent is permitted to enter the Site for the purpose of removing from the Site any and all signage or advertising material for new vehicles bearing the name 'MITSUBISHI' and any associated trade indicia of the applicant (including, but not limited to, any three diamond device mark) and the first and second respondents must not prevent such access being provided to the applicant or its agent. 6. The first respondent must by or before 4.00 pm on Tuesday 2 July 2013, and a mandatory injunction is hereby granted, take all necessary steps to deregister or transfer to the applicant the domain name "www.ripponleamitsubishi.com.au" and any other domain registered by the first respondent that contains a word or mark that includes 'MITSUBISHI' or which is substantially identical with or misleadingly, deceptively or confusingly similar to 'MITSUBISHI'. 7. The first respondent must not, and an injunction is hereby granted, whether itself, its directors, officers, employees, agents or howsoever otherwise, use the word 'MITSUBISHI' or any associated trade indicia of the applicant in connection with the supply of new vehicles. 8. The first respondent must not, and an injunction is hereby granted, display or otherwise communicate words or signs which are substantially identical with or deceptively similar to the registered trade mark "Love That Car" (no. 1250123) in respect of the supply of vehicles or services related to vehicles. 9. The first respondent must not, and an injunction is hereby granted, make any representation to any person to the effect that it is, or remains, an authorised or genuine Mitsubishi dealer or service centre. 10. The directions hearing be adjourned to Wednesday 3 July 2013 at 9.15 am. 11. The parties have liberty to apply.