BGD Corporation Pty Ltd v Kalaoun [2021] FCA 1127

Federal Court of Australia

BGD Corporation Pty Ltd v Kalaoun [2021] FCA 1127 File number: VID 101 of 2021

Judgment of: O'BRYAN J

Date of judgment: 27 September 2021

Catchwords: TRADE MARKS – default judgment – alleged infringement of a device mark which incorporates the words DRAIN MAN – where respondent in numerous and ongoing breaches of Court orders

Legislation: Competition and Consumer Act 2010 (Cth) Sch 2, Australian Consumer Law, ss 18, 29(1)(g), 29(1)(h) Trade Marks Act 1995 (Cth) s 120(1) Federal Court Rules 2011 (Cth) r 5.23(2)(c); r 40.02(b)

Cases cited: Speedo Holdings B.V. v Evans (No 2) [2011] FCA 1227 Professional Administration Service Centres Pty Ltd v Commission of Taxation [2012] FCAFC 180; 295 ALR 52

Division: General Division

Registry: Victoria

National Practice Area: Intellectual Property

Sub-area: Trade Marks

Number of paragraphs: 44

Date of hearing: 27 September 2021

Counsel for the Applicants: R Tyson Wodak

Solicitors for the Applicants: Dandanis & Associates

Solicitor for the Respondent: S Kassem

ORDERS VID 101 of 2021

BETWEEN: BGD CORPORATION PTY LTD ACN 641 856 064 First Applicant

THE DRAIN MAN (AUSTRALIA) PTY LTD ACN 141 251 694 Second Applicant

AND: RABEH KALAOUN Respondent

order made by: O'BRYAN J DATE OF ORDER: 27 SEPTEMBER 2021

THE COURT NOTES THAT: A. Due to the procedures implemented by the Federal Court of Australia in response to the COVID-19 pandemic which include restricting the parties, their legal representatives and members of the public from attending hearings at the Commonwealth Law Courts, Melbourne in person, this hearing is being conducted by video link. B. Instructions to enable members of the public to attend the hearing by video link are published on the Federal Court website. THE COURT ORDERS THAT: (a) Pursuant to s 47B of the Federal Court of Australia Act 1976 (Cth), the parties be permitted to appear before the Court and to make submissions to the Court, whether in person or through a legal representative, by way of video link. (b) Unless the Court otherwise orders, no person, being a member of the public, who is observing the hearing by accessing any video link, audio link or other means may: (i) make any video or audio recording or photography of the hearing or any part of it; or (ii) participate in or interrupt the hearing, provided that nothing in this order shall prevent any person, based on what they have heard during the hearing: (iii) making their own notes or record of the proceeding; or (iv) publishing a fair report of the proceeding. THE COURT DECLARES THAT: 1. The respondent has: (a) infringed each of Australian Registered Trade Mark 1484732 and Australian Registered Trade Mark 1930214 in contravention of s 120(1) of the Trade Marks Act 1995 (Cth); and (b) contravened ss 18, 29(1)(g) and 29(1)(h) of the Australian Consumer Law, being Sch 2 to the Competition and Consumer Act 2010 (Cth); by using, as a trade mark, in relation to plumbing, plumbing services, maintenance of plumbing and/or clearing of tree roots from pipes and drains, the following trading names: (i) Mr Drain Man; (ii) My Drain Man; (iii) Sydney's Mr Drain Man; and (iv) Local Drain Man. THE COURT ORDERS THAT: 2. The respondent cease using, and not in the future use, as a trade mark, business name or trading name (including by way of internet and email domain names, social media account names and registered business names) any of the following names: (a) Mr Drain Man; (b) My Drain Man; (c) Sydney's Mr Drain Man; (d) Local Drain Man; and (e) any name that includes the phrase "Drain Man", in relation to the promotion or supply of plumbing services (including drainage cleaning and relining, maintaining plumbing, servicing sewer pipes, maintaining sewer pipes, renovating sewer pipes and clearing tree roots from pipes and drains). 3. The respondent not cause any company of which he is a director to do any thing he is prohibited by paragraph 2 of these orders from doing. 4. Within 14 days of the date of this order, the respondent deliver up to the applicants all hard-copy materials in his possession which include the phrase "Drain Man" and which promote, or are used in connection with, plumbing services (including drainage cleaning and relining, maintaining plumbing, servicing sewer pipes, maintaining sewer pipes, renovating sewer pipes and clearing tree roots from pipes and drains). 5. Within 14 days of the date of this order the respondent swear or affirm an affidavit in this proceeding by which he deposes to doing each of the things set out in paragraph 4 of these orders. 6. The respondent pay the applicants' costs of and in connection with the proceeding, such costs to be awarded in a lump sum pursuant to r 40.02(b) of the Federal Court Rules 2011 (Cth). 7. The quantification of the costs awarded under order 6, and the making of such further orders and directions in connection therewith, be referred to a Registrar of the Court for determination. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.