FEDERAL COURT OF AUSTRALIA Blacktown Workers Club Limited v Blacktown Workers Basketball Association Incorporated [2017] FCA 576 File number: NSD 134 of 2017 Judge: ROBERTSON J Date of judgment: 25 May 2017 Catchwords: TRADE MARKS – infringement of two registered trademarks owned by the applicant – associated claims of breach of the Australian Consumer Law and passing off – default judgment against first respondent – consent orders against second respondent Legislation: Australian Consumer Law ss 18, 29(1)(h) Trade Marks Act 1995 (Cth) s 120(1) Federal Court Rules 2011 (Cth) r 5.22 Cases cited: Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2006] FCA 1427; 236 ALR 665 Australian Competition and Consumer Commission v Yellow Page Marketing BV (No 2) [2011] FCA 352; 195 FCR 1 Geneva Laboratories Ltd v Prestige Premium Deals Pty Ltd (No 4) [2016] FCA 867; 120 IPR 123 Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933; 222 FCR 45 Placitum Pty Ltd v Andreotta [2014] FCA 726 Speedo Holdings BV v Evans (No 2) [2011] FCA 1227 Date of hearing: 15 May 2017 Date of last submissions: 15 May 2017 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 29 Counsel for the Applicant: Mr C Burgess Solicitor for the Applicant: Thomson Geer Solicitor for the First Respondent: The First Respondent did not appear Counsel for the Second Respondent: The Second Respondent appeared in person ORDERS NSD 134 of 2017 BETWEEN: BLACKTOWN WORKERS CLUB LIMITED ACN 000 858 006 Applicant AND: BLACKTOWN WORKERS BASKETBALL ASSOCIATION INCORPORATED First Respondent NEIL GALANG Second Respondent JUDGE: ROBERTSON J DATE OF ORDER: 18 MAY 2017 THE COURT ORDERS THAT: In this order: (a) Registered Marks means Australian Trade Mark Registration Nos. 1109796 and 1743261. A printout of the Australian Trade Mark Online Register extract of the Registered Marks is attached to these orders at Annexure A; (b) Offending Marks means: i. the name "Blacktown Workers Basketball Association Incorporated"; and ii. the following logo: A Declarations and injunctions (Trade Mark Infringement) THE COURT: 1. DECLARES that the First Respondent has infringed the Registered Marks by using the Offending Marks as a sign in connection with services that are the same as, or of the same description as, services in respect of which those trade marks are registered (registered services). 2. ORDERS that the First Respondent, whether by itself, its employees or its agents or otherwise, be restrained from infringing the Registered Marks and, in particular, from using the Offending Marks as a sign, or using any sign, which is substantially identical with, or deceptively similar to, the Registered Marks in relation to any registered services. 3. [Not used] 4. BY CONSENT, ORDERS that the Second Respondent be restrained from procuring, inducing or joining in a common design with the First Respondent to infringe the Registered Marks. B Declarations and injunctions (ACL and Passing Off) THE COURT: 5. DECLARES that the First Respondent has: (a) engaged in conduct that contravenes section 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth) known as the Australian Consumer Law (ACL), and as applied in the State of New South Wales under the governing consumer protection laws; (b) made misleading representations in contravention of section 29(1)(h) of the ACL; and (c) engaged in the tort of passing off; by representing in trade and commerce that the First Respondent is a sporting club that is sponsored or approved by, or associated or affiliated with, the Applicant. 6. ORDERS that the First Respondent, whether by itself, its employees or its agents or otherwise, be restrained from engaging in the conduct, and making the representation, that is referred to in sub-paragraphs 5(a) to 5(c) above. 7. BY CONSENT ORDERS the Second Respondent be restrained from aiding, abetting, counselling or procuring, and being knowingly concerned or a party to, the contraventions of the ACL by the First Respondent that are referred to in sub-paragraphs 5(a) and 5(b) above. 8. BY CONSENT, ORDERS that the Second Respondent be restrained from procuring, inducing or joining in a common design with the First Respondent to engage in the tort of passing off. C Other relief against the First Respondent THE COURT: 9. ORDERS that, within 28 days of this order, the First Respondent deliver to the Applicant for destruction under its supervision (at the cost of the First Respondent) any things (apart from records kept in the ordinary course of business) in the possession, power, custody or control of the First Respondent, its employees or agents or otherwise howsoever which bear the Offending Marks, the name "Blacktown Workers" or any trade mark which is substantially identical with, or deceptively similar to, the Registered Marks (including but not limited to merchandise, uniforms, stickers, signs, posters, branding, promotional and advertising material and other things). 9A. ORDERS that, within 28 days of this order, the First Respondent take all steps that may reasonably be necessary to register a change in the First Respondent's name to a name that: (a) does not include the words "Blacktown Workers"; and (b) is not substantially identical with, or deceptively similar to, either of the Registered Marks. 10. ORDERS that the First Respondent, within 14 days of complying with orders 9 and 9A above, file and serve an affidavit verifying completion of the steps referred to in those orders. 11. ORDERS that the First Respondent pay the Applicant's costs of, and incidental to, the parts of this proceeding that concern the Applicant's claim against the First Respondent. D Other relief against the Second Respondent THE COURT: 12. BY CONSENT, ORDERS that, within 28 days of this order, the Second Respondent deliver to the Applicant for destruction under its supervision (at the cost of the Second Respondent) any things (apart from records kept in the ordinary course of business) in the possession, power, custody or control of the Second Respondent which bear the Offending Marks, the name "Blacktown Workers" or any trade mark which is substantially identical with, or deceptively similar to, the Registered Marks (including but not limited to merchandise, uniforms, stickers, signs, posters, branding, promotional and advertising material and other things). 13. BY CONSENT, ORDERS that the Second Respondent, within 14 days of complying with order 12 above, file and serve an affidavit verifying completion of the steps referred to in that order. 14. BY CONSENT, MAKES NO ORDER as to costs in respect of the Second Respondent. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT ROBERTSON J: Introduction 1 These proceedings concern the applicant's claim that the respondents' unauthorised use of the name "Blacktown Workers Basketball Association Incorporated" to operate a basketball club located in the Blacktown area infringes its registered trademarks. There are associated claims for breach of the Australian Consumer Law and passing off. 2 On 18 May 2017 I made orders against the first respondent which was in default and, by consent, against the second respondent. The second respondent was, at one time, the president of the first respondent. 3 These are my reasons for those orders against the first respondent. Background 4 The applicant trades primarily within the local community of Blacktown, New South Wales and the Greater Western Sydney region. It owns a number of licensed venues, including the Blacktown Workers Club and the Blacktown Workers Sports Club. It claims, and I find, it has acquired a substantial and valuable reputation throughout the local Blacktown community and Greater Western Sydney region in the name "Blacktown Workers" and the registered marks in relation to, among other things, sporting activities including club services and clothing (including sporting uniforms) bearing the name Blacktown Workers or the registered marks. It has supported the incorporation of some 12 associations concerning such sports as tennis, bowling, soccer and cricket, each association's name beginning "Blacktown Workers…" 5 The first respondent is an association incorporated under the Associations Incorporation Act 2009 (NSW). It has been using the name "Blacktown Workers Basketball Association Incorporated" and an associated logo (reproduced in the orders above) in connection with the creation, operation, management and promotion of a basketball club located in the Blacktown area since about 5 December 2015. The applicant alleged that the second respondent is jointly liable with the first respondent as aiding, abetting, counselling or procuring and being knowingly concerned or a party to the contraventions of the Australian Consumer Law (Cth) and engaging in trade mark infringements and the tort of passing off as a joint tortfeasor with the first respondent. 6 These proceedings were filed on 2 February 2017 and commenced by fast track application on the grounds stated in the fast track statement. 7 An amended fast track application was filed on 8 May 2017. 8 By its fast track statement, the applicant states, and I find, it is the owner of certain trade marks registered under the Trade Marks Act 1995 (Cth). 9 The applicant seeks declarations and injunctions in respect of claimed trade mark infringement; declarations and injunctions in respect of claimed Australian Consumer Law contraventions and passing off; and other relief by way of delivery up for destruction of certain things said to bear the offending marks. The applicant also seeks an order that the respondents take steps to register a change in the first respondent's name. 10 As I have said, the proceedings were commenced on 2 February 2017. 11 The procedural history since that time has been as follows. 12 The first respondent was served with the Fast Track application and the Fast Track statement on 27 February 2017. The second respondent was served with those documents on 6 March 2017. 13 A case management hearing was held before me on 17 March 2017. Neither respondent appeared at that first case management hearing. 14 On 17 March 2017 I made the following orders: 1. Unless or until each respondent files and serves a notice of address for service, all further documents and applications in the proceeding shall be taken to have been served on that respondent upon those documents having been left at, or sent by pre-post to: a. in the case of the first respondent – 14 Wardia Street Glenwood, NSW; and b. in the case of the second respondent – 8 Amos Place, Marayong, NSW. 2. On or before 5 April 2017, each respondent file and serve a notice of address for service and a fast track response. 3. On or before 19 April 2017, the applicant file and serve any application for orders for default or summary judgment, such application to be listed for hearing at 10:15 am on 15 May 2017. 4. Liberty to apply on 3 days' notice. 15 The first respondent was served with these orders on 27 March 2017. So was the second respondent. 16 Neither respondent complied with the Court's orders made on 17 March 2017 which required them to file and serve a notice of address for service and a Fast Track Response on a before 5 April 2017. 17 Order 3 was varied by order made on 8 May 2017 so that the time for compliance was extended to 10 AM on 9 May 2017. The applicant was also granted leave to file and serve its Amended Fast Track application by 10 AM on 9 May 2017. 18 The first and second respondents were served with these orders, with the sealed amended Fast Track application, and with the sealed interlocutory application seeking default final judgment on 8 May 2017. Judgment where party in default 19 Rule 5.22 of the Federal Court Rules 2011 (Cth) provides: 5.22 When a party is in default A party is in default if the party fails to: (a) do an act required to be done, or to do an act in the time required, by these Rules; or (b) comply with an order of the Court; or (c) attend a hearing in the proceeding; or (d) prosecute or defend the proceeding with due diligence. 20 By an interlocutory application dated 8 May 2017 the applicant seeks an order under r 5.23(2)(c) which provides for applications to the Court where a respondent is in default, the relevant paragraph stating as follows: if the proceeding was started by an originating application supported by a statement of claim, or if the Court has ordered that the proceeding continue on pleadings – an order giving judgment against the respondent for the relief claimed in the statement of claim to which the Court is satisfied that the applicant is entitled; 21 At the hearing on 15 May 2017, the second respondent appeared, representing himself. By consent, I made orders against him. What follows is relevant only to the position of the first respondent. 22 In Speedo Holdings BV v Evans (No 2) [2011] FCA 1227, Flick J summarised, at [20]-[26], the principles relevant to the application before him as follows: First, the power invoked by the Applicants remains discretionary.… So much necessarily follows from the discretion conferred by r 1.32: … Just as the discretion must be exercised "cautious[ly]" where it is the applicant that is in default… the same caution must be exercised where it is the applicant who is seeking orders as against a defaulting respondent. … Second, the discretionary power to enter a default judgment is enlivened when (as in the present case) an applicant applies to the court for an order. Rule 5.23(2) provides that where a respondent is in default "an applicant may apply to the Court". An applicant may, of course, decide not to do so. Third, there is a difference in the terms in which the ambit of the power conferred by the former r 3(2)(c) ("the relief … that the applicant appears entitled to on the statement of claim") and the wording of the current r 5.23(2)(c) ("the relief claimed in the statement of claim to which the Court is satisfied that the applicant is entitled"). Notwithstanding that difference in language, the requirement imposed is not that an applicant prove by way of evidence the claim sought to be advanced; the requirement is that the court needs to be "satisfied" on the face of the statement of claim that the applicant is entitled to the "relief" claimed: …. The facts as alleged in the statement of claim are deemed to have been admitted by a respondent: Fourth, to be satisfied that an applicant "is entitled" to the relief claimed in the statement of claim, the court needs to be satisfied that "each element of the relevant civil wrong involved is properly and discretely pleaded in the statement of claim": … Fifth, in addition to the facts alleged in a statement of claim, the court may permit recourse to limited further evidence. But it may not admit evidence which would alter the case as pleaded. 23 Where the procedure is available, the general rule is that default judgment is given on the facts pleaded in the statement of claim, with the pleaded facts deemed to be admitted. No evidence needs to be adduced: Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2006] FCA 1427; 236 ALR 665 at [45]-[50] per Kiefel J. 24 In my opinion, despite the contrary view expressed in Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933; 222 FCR 45, the procedure is available in the case of a fast track statement, treating that statement as equivalent to a statement of claim: see Australian Competition and Consumer Commission (ACCC) v Yellow Page Marketing BV (No 2) [2011] FCA 352; 195 FCR 1; Placitum Pty Ltd v Andreotta [2014] FCA 726 and Geneva Laboratories Ltd v Prestige Premium Deals Pty Ltd (No 4) [2016] FCA 867; 120 IPR 123. For the avoidance of doubt, I order that the Fast Track statement stand as a statement of claim. 25 I find that the first respondent is in default. It has failed to attend the first case management conference held on 17 March 2017; it has failed to attend the hearing on 15 May 2017; and it has failed to comply with order 2 made on 17 March 2017 requiring it to file and serve a notice of address for service and a Fast Track response. Findings 26 In respect of the claim for trade mark infringement, I find that the applicant is, and has at all material times been, the registered owner in Australia of two registered trade marks for Blacktown Workers and Blacktown Workers Club and that those registered marks have been registered, subsisting and of full force and effect since the dates of registration, being 23 December 2015 and 21 April 2006 respectively. I find that the first respondent has used and uses its name "Blacktown Workers Basketball Association Incorporated" and its logo (the offending marks) in connection with the creation, operation, management and promotion of a basketball club in the Blacktown area. I find that such use has involved use of the offending marks "as a sign" in connection with services of the same description as the services in respect of which the applicant's registered trade marks are registered, namely, sporting activities, including club services in class 41. I find that the offending marks are substantially identical with, or deceptively similar to, the applicant's registered marks. I find that by reason of these matters the first respondent has infringed, and is continuing to infringe, the applicant's registered trademarks. 27 In respect of the claims under the Australian Consumer Law, I find that the applicant has, on the basis of its trading activity since 1970, reputation and goodwill in Australia in the name Blacktown Workers and the registered marks. A substantial or not insignificant number of persons have come to associate the name "Blacktown Workers" and the registered marks with the applicant, including as signs which signify that sporting clubs bearing that name are sponsored or approved by, or associated or affiliated with, the applicant. I find that by using the offending marks, the first respondent has represented that it is a sporting club that is sponsored or approved by, or associated or affiliated with, the applicant. I find that the first respondent's representation was made in trade and commerce and was false or misleading, because the first respondent is not sponsored or approved by or associated or affiliated with the applicant. I find that the first respondent has refused to provide undertakings to cease engaging in this conduct. 28 In respect of the passing off claim, I repeat my findings in relation to the applicant's reputation and goodwill, that by using the offending marks the first respondent has represented that it is a sporting club that is sponsored or approved by, or associated or affiliated with, the applicant, that the representation is false or misleading, and that by reason of the reputation that the applicant has in the name Blacktown Workers and the registered marks, the first respondent has, by its conduct, passed off, and threatens to continue to pass off, the first respondent has a sporting club that is sponsored or approved by, or associated or affiliated with, the applicant. I find that the applicant has suffered loss or damage by reason of the alleged passing off. I note that no claim for pecuniary relief is pressed. Conclusion 29 I was satisfied that the applicant was entitled to the relief claimed. I was also satisfied that, as a matter of discretion, there had been sufficiently serious acts of default by the first respondent and each cause of action was properly and discretely pleaded. I considered it was appropriate to give default judgment and, on the basis of the pleaded facts being deemed to be admitted and, therefore, as found by me, to make the orders which I made on 18 May 2017, as reproduced above. I certify that the preceding twenty-nine (29) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson. Associate: Dated: 25 May 2017