Supreme Court New South Wales Medium Neutral Citation: COLAS Australia Group Pty Ltd v COLAS Road Surfacing Pty Ltd & Anor [2020] NSWSC 1858 Hearing dates: 17 December 2020 Date of orders: 17 December 2020 Decision date: 17 December 2020 Jurisdiction: Equity - Commercial List Before: Stevenson J Decision: Interlocutory relief granted Catchwords: CIVIL PROCEDURE – application for interlocutory injunction – passing off – misleading or deceptive conduct – where defendant without authority using similar name to plaintiff – where serious question to be tried established – where balance of convenience favoured making order Category: Procedural and other rulings Parties: COLAS Australia Group Pty Ltd (Plaintiff) COLAS Road Surfacing Pty Ltd (First Defendant) Jamie Mansell Fionda Thistlethwaite (Second Defendant) Representation: Counsel: D F Elliott (Plaintiff) Solicitors: Piper Alderman (Plaintiff) File Number(s): 2020/354555 Judgment 1. This matter was listed before me as Commercial List Duty Judge earlier today. 2. The defendants were called but did not appear. 3. I made the following orders: 1. Upon the plaintiff by its counsel giving to the Court the usual undertaking as to damages, ORDER that until further order of the Court: 1. the defendants, whether by itself, its directors, officers, employees, agents or otherwise, be restrained from infringing the Australian Trade Mark Registration No 1894638 (the Trademark), including, in particular, from using the logo in Annexure A to these orders in relation to any goods or services in respect of which the Trademark is registered. 2. the defendants whether by itself, their directors, officers, employees, agents or otherwise, be restrained from using the names COLAS, in connection with the construction, maintenance, laying and manufacture of materials used in the road building industry, and related services. 3. within 7 days of these orders, the defendants: 1. take all steps that are necessary to cancel the domain name registration for or amend it to a name that does not include COLAS; 2. take all steps that are necessary to cancel their business name registration ABN 34 643 650 677 and corporate name Colas Road Surfacing Pty Limited ACN 643 650 677 or to amend them to names that do not include COLAS; and 3. file and serve an affidavit verifying compliance with the obligations in subparagraphs (i) and (ii) above. 1. within 7 days of these orders, the defendants: 1. the defendants deliver to the plaintiff's solicitors for destruction, all physical materials (other than physical documents including financial, taxation, legal, accounting and employment records, created and kept in the course of, or for the purposes of any business, trading or financial arrangements) in their possession, custody, power or control which bear or incorporate the names COLAS, including, but not limited to: signage, packaging, promotional material, advertising, brochures, pamphlets, merchandise, stationery and business cards; and 2. file and serve an affidavit verifying compliance with the obligations in subparagraphs (i) above. 1. Grant to the defendants liberty to apply to the Commercial List Duty Judge (to 5.00pm on 18 December 2020) and thereafter to Equity Vacation Judge to apply to vacate or vary these orders on 48 hours' notice, such notice to be served on the plaintiff care of its solicitors at dfitzpatrick@piperalderman.com.au and to specify the directions or relief to be sought. 2. Order that these orders be taken out forthwith. 3. Stand the proceedings over to 19 February 2021 before the Commercial List Judge for directions. 4. Order that the costs of the proceedings to date be reserved. 5. Direct that: 1. By 5.00pm on 17 December 2020 the plaintiff serve on the first defendant at its registered office and on the second defendant at the email address colasroadsurfacing@gmail.com a copy of these orders; 2. By 5.00pm on 21 December 2020 the plaintiff serve on the second defendant personally a copy of these orders; 3. The plaintiff provide a copy of the Court's reasons for judgment on 17 December 2020 to the defendants at colasroadsurfacing@gmail.com forthwith on such reasons becoming available. 1. These are my reasons for making those orders. 2. The plaintiff, COLAS Australia Group Pty Ltd ("COLAS Australia") is a wholly-owned subsidiary of COLAS Société anonyme ("COLAS SA"). 3. COLAS SA is a public limited company incorporated in France in 1925. COLAS SA is based in Paris and has since 1925 traded under the name, and has extensively used the trademark "COLAS" in relation to the supply of goods and services including the supply of a range of road surfacing materials and the provision of road construction and maintenance surfaces. 4. At all material times, COLAS SA has been the registered owner of trademarks in Australia which include the name "COLAS" and relate to goods and services relevant to road surfacing, including such matters as bituminous emulsions and paint. 5. By a "Technical Assistance Agreement" dated 17 November 2017, COLAS SA has licensed COLAS Australia to use these trademarks. 6. On 7 October 2020, COLAS Australia became aware of the fact that the first defendant, Colas Road Surfacing Pty Ltd ("Road Surfacing") was using the name "Colas Road Surfacing" in relation to its driveway re-sealing business. 7. Road Surfacing was incorporated on 28 August 2020. Its sole director, secretary and shareholder is the second defendant, Mr Jamie Thistlethwaite. 8. Road Surfacing's website states: "Sydney Leading Asphalt Company We cover Sydney. We are highly reommended [sic] bitumen company. Founded in Sydney, our company, Colas has grown substantially. Over the years we have been setting new industry standards for the construction of Asphalt and Bitumen Driveways and Parking Lots in the Sydney area. Our high-quality standards, enthusiastic approach and second to none customer services have earned one of the best reputations in the Sydney construction industry". 1. COLAS Australia, through its solicitors, wrote to Road Surfacing demanding that it cease using the "COLAS" name. 2. In response, on 15 October 2020, Mr Thistlethwaite sent COLAS Australia's solicitors an email: "Hi we are in the process of changing out [sic] company name we was under the impression we was doing nothing wrong as we buy our materials from colas process take 28 days please reply with a response". 1. Despite the assurance given by Mr Thistlethwaite in this email, Road Surfacing has not yet changed its name to a name that does not use the term "Colas" and has not taken down information on its website which uses that name. 2. COLAS Australia contends that neither COLAS SA nor COLAS Australia has given Road Surfacing or Mr Thistlethwaite any authority to use the "Colas name". 3. The evidence establishes that, since 7 October 2020, Road Surfacing has provided goods and services similar to those provided by COLAS Australia and has represented itself as being associated with COLAS Australia. 4. I was satisfied that there is a serious question to be tried that Road Surfacing has thereby engaging in misleading or deceptive conduct and that Mr Thistlethwaite has been knowingly concerned with that conduct. 5. I was also satisfied that there is a serious question to be tried that Road Surfaces passing itself off as being associated with COLAS Australia in a manner likely to mislead or deceive consumers. 6. I was also persuaded that, because of Mr Thistlethwaite's unfulfilled promise to change "our company name" and the failure of the defendants to appear, the balance of convenience required me to make the orders set out above. ********** DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated. Decision last updated: 17 December 2020