CATCHWORDS
INTERLOCUTORY INJUNCTION - alleged infringement of trademark “GJM TAIPAN" registered in respect of motor vehicles by use of "Taipan" as a mark in relation to an armoured personnel carrier - whether the question of adequacy of damages is a separate issue or one of the matters to be taken into account in identifying where the balance of convenience lies.
Trade Marks Act 1955 (Cth) - ss 23, 23(1), 23(2)
Trade Marks Act 1995 (Cth) - ss 10, 44, 92, 92(1), 92(2), 92(4), 100(1), 100(2), 100(3), 101,101(1), 120, 233(1), 234, Part 9
Cases Considered
Active Leisure (Sports) Pty Ltd v Sportman’s Australia Ltd [1991] 1 Qd R 301
American Cyanamid Co v Ethicon Ltd [1975] AC 396
Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618
Carl Zeiss Pty Ltd’s Application (1969) 122 CLR 1
Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148
Continental Liqueurs Pty Ltd v GF Heublein & Bro Inc (1960) 103 CLR 422
Epitoma Pty Ltd v AMIEU (1984) 54 ALR 713
Hunter Douglas Australia Pty Ltd v Perma Blinds (1970) 122 CLR 49
Leisure & Entertainment Pty Ltd v Willis (1996) 14 ACLC 379
Murphy v Lush (1986) 60 ALJR 523
NSW Dairy Corporation v Murray Goulburn Co-Op Co Ltd (1989) 14 IPR 26
Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323
The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
GEOFFREY JAMES McHATTAN v AUSTRALIAN SPECIALISED VEHICLE SYSTEMS PTY LTD & ANOR
QG 64 OF 1996
DRUMMOND J
BRISBANE
19 JUNE 1996
FEDERAL COURT OF AUSTRALIA ) No. QG 64 of 1996
QUEENSLAND DISTRICT REGISTRY )
GENERAL DIVISION )
BETWEEN: GEOFFREY JAMES McHATTAN
Applicant
AND: AUSTRALIAN SPECIALISED VEHICLE SYSTEMS PTY LTD
(ACN 065 829 245)
First Respondent
AND: THE ANI CORPORATION LTD
(ACN 000 421 358)
Second Respondent
MINUTES OF ORDERS
JUDGE MAKING ORDER: Drummond J
DATE OF ORDER: 19 June 1996
WHERE MADE: Brisbane
THE COURT ORDERS THAT:
1. Upon the applicant giving the usual undertaking as to damages, each respondent by its servants and agents is restrained until trial or earlier order from using the word “Taipan" as, or as part of, a trade mark in relation to motor vehicles.
2 The injunction is not to operate until 10.00 am on Thursday 20 June 1996.
3 The costs of and incidental to the application for interlocutory relief are reserved.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
FEDERAL COURT OF AUSTRALIA ) No. QG 64 of 1996
QUEENSLAND DISTRICT REGISTRY )
GENERAL DIVISION )
BETWEEN: GEOFFREY JAMES McHATTAN
Applicant
AND: AUSTRALIAN SPECIALISED VEHICLE SYSTEMS PTY LTD
(ACN 065 829 245)
First Respondent
AND: THE ANI CORPORATION LTD
(ACN 000 421 358)
Second Respondent
REASONS FOR JUDGMENT
The applicant has, since September 1985, been the registered proprietor of a trade mark "GJM TAIPAN" in Part A of the Register in respect of "motor vehicles", ie, in respect of a limited range of the goods comprising class 12 ("vehicles; apparatus for locomotion by land, air or water"). He seeks an interlocutory injunction to restrain the respondents from using his mark in relation to any motor vehicles. The respondents are using the word "Taipan" as a mark in relation to an armoured personnel carrier the first respondent is trying to sell to the Australian Defence Forces.
In May 1995, the Defence Department invited tenders for the supply of an armoured personnel carrier. The first respondent, which is jointly owned by the
second respondent and an overseas company, was, according to its General Manager, specifically incorporated for the purpose of tendering for this contract and of supplying the vehicles, if its tender is successful. The basic value of the contract to be awarded will be between $230M and $300M.
The first respondent’s tender, lodged in October 1995, is now on a short list of three. The vehicle the subject of its tender is a wheeled, not a tracked, one, with room for nine persons and a range of military equipment. The respondents did not dispute that it could be fairly described as a motor vehicle. The first respondent and the remaining two tenderers are required, under the conditions of tender, to provide three or four prototype carriers for trial by the Australian Defence Force for approximately a year. The first respondent’s General Manager expects the contract will be awarded "towards November 1997".
On the evidence before me, the first respondent is not carrying on any business other than the activities associated with the preparation and prosecution of its tender. The evidence is that, if the first respondent fails to win the tender, it will not carry on any other business activity and so will not make any use at all of the word "Taipan". There is nothing in the evidence to suggest that the second respondent has any intention of using this word as a true mark for itself. The evidence does not throw any light on the first respondent’s prospects of winning the tender.
Why the first respondent decided to adopt the name "Taipan" for its carrier is briefly dealt with. The process of selection of the armoured vehicle has been given the name, "Bushranger Project", by the Defence Department. Well prior to the calling of tenders, the Australian Army Project Director responsible for the "Bushranger Project" indicated a preference for the vehicle to carry the name of a snake. Apart from mentioning this, the first respondent provided no other information to explain how it came to select the name "Taipan" as the name for the vehicle the subject of its tender.
In November 1994, an organisation associated with the respondents caused an application to be lodged with the Australian Trade Marks Office for registration of the trade mark "Taipan" in respect of "vehicles, including military vehicles and all other goods in class 12". In July 1995, the Australian Industrial Property Organisation (AIPO) examiner advised the first respondent that its mark would not be registered because it was substantially identical or deceptively similar to three registered marks and was for the same or closely related goods. One of these marks was the applicant’s. By February 1996, the AIPO advised the first respondent that it was only registration of the applicant’s mark which stood in the way of its own application being accepted. The AIPO suggested that the problem which the first respondent’s application for registration faced could be overcome if the applicant’s registration was amended to exclude military vehicles.
The evidence does not indicate whether, before lodging its own trade mark application in November 1994, the first respondent searched the Register and
learned of the existence of the applicant’s mark. But it was aware by July 1995, at the latest, ie, well prior to lodging its tender, of that registration.
After July 1995, discussions took place between the agents of the applicant and the first respondent with a view to reaching agreement under which the first respondent would be able to obtain registration of its mark in respect of military vehicles in return for a payment to the applicant. What appear to be relatively modest sums only were involved. The first respondent’s General Manager, Mr McNeil, says that the applicant sought $25,000 compensation, which he later reduced to $15,000. Mr McNeil, however, was not prepared to increase his initial offer of $5,000.
Following the breakdown in these discussions, the first respondent then instigated some inquiries to identify the nature of the applicant’s business and what use he had made of his registered mark. It does not appear, from the material before me, when these inquiries were made. On 17 January 1996, the first respondent’s agent unsuccessfully sought to persuade the AIPO to accept its trade mark application for registration; the AIPO’s report rejecting these arguments is dated 8 February 1996. On 1 February 1996, the first respondent’s agent had written to the applicant’s agent seeking information as to the applicant’s use of his mark. The applicant refused to respond.
On 20 February 1996, the first respondent lodged two applications pursuant to s 92 of the Trade Marks Act 1995 (Cth), one for removal of the
applicant’s mark from the Register in respect of "military vehicles" and one for removal in respect of "armoured military vehicles of greater than eight tonnes". The applicant has given notice of opposition to both applications. It is likely to be many months before these applications are disposed of.
The applicant appears to have been provoked into commencing this action by the promotional activities concerning its tender engaged in by the first respondent in March and April of this year. It is common ground that the second respondent associated itself with the first respondent’s use of the "Taipan" mark in relation to its carrier in these promotional activities. On 12 April 1996 the applicant wrote to the respondents, referring to their user of the word mark "Taipan" in connection with these activities and requiring certain undertakings. There was no response. He commenced proceedings against the respondents on 29 April. Shortly before the application for interlocutory relief came on for hearing last week, the respondents offered an undertaking not to use the mark "Taipan" in relation to the manufacture of motor vehicles, save for use in connection with the first respondent’s tender for the supply of the armoured personnel carriers to the Defence Department; this undertaking was offered until the determination of the first respondent’s applications for removal of the applicant’s registered mark. This offer was not acceptable to the applicant.
The applicant, who is representing himself, has chosen not to reveal in these proceedings what specific uses he has made of his registered mark in connection with motor vehicles over the past three years or so; nor has he revealed
what are his future intentions for use of that mark. This does not help his case for interlocutory relief. He did not explain why he adopted this approach. But it may flow from a desire not to provide the first respondent with evidence to use against him in its non-use applications. The applicant has, however, put before the Court evidence in the form of correspondence between himself and the Queensland Transport Department in late 1993 which shows that, in the period between 1986 and then, he had produced three vehicles in connection with which he had used his registered mark. This correspondence also shows that in late 1993 he was seeking registration for another vehicle and obtained approval from the Queensland Transport Department, in connection with his application for registration of that vehicle, of "beaming and torsion tests and revised plans for [his] GJM Taipan vehicle". The Transport Department also advised that approval would be issued for his vehicle after satisfactory fibreglass tests were submitted. The applicant’s material indicates that the tests required by the Department of Transport were carried out by an appropriate testing authority on "a fibreglass car panel" in April 1994. The only other reference in the applicant’s material to his activities is in an affidavit sworn by a Mr Carr, who says he is "an associate of [the applicant] in the development of new diesel powered equipment, which we have been working on since late 1995".
This does not appear to be a case in which a person has registered a mark without any bona fide intention to use it himself, but rather for the purpose of extracting a tribute from a genuine trader who comes along later and wants to use that mark.
In Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 at 153, Mason ACJ identified three things which a plaintiff in private law litigation had to show to obtain an interlocutory injunction: (a) that there is a serious question to be tried; (b) that he will suffer irreparable injury for which damages will not be an adequate compensation unless an injunction is granted; and (c) that the balance of convenience favours the granting of an injunction. His Honour favoured the use, as a general rule, of the "serious question to be tried" test referred to in American Cyanamid Co v Ethicon Ltd [1975] AC 396 rather than the "prima facie case" test adopted in Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618. Although his Honour’s formulation suggests that the question of the adequacy of damages is a separate criterion, his Honour did not consider whether there was any inter-relationship between that and the issue of the balance of convenience. In Active Leisure (Sports) Pty Ltd v Sportman’s Australia Ltd [1991] 1 Qd R 301 at 311, the Queensland Full Court held that only two issues arise on an application for an interlocutory injunction, viz, whether the plaintiff has shown a serious question to be tried and, if so, where the balance of convenience lies. The Full Court considered that questions as to the adequacy of damages available to a plaintiff and the sufficiency of the plaintiff’s undertaking as to damages, although important considerations, only arise in the course of determining the balance of convenience and not as issues anterior to that. The Full Court found authority for this approach in Murphy v Lush (1986) 60 ALJR 523. In Leisure & Entertainment Pty Ltd v Willis (1996) 14 ACLC 379, Spender J, at 381, after referring to Castlemaine Tooheys Ltd v South Australia, supra, observed that it may be that the question of the adequacy of damages, if an injunction is not granted, is merely an aspect of the balance of
convenience. His Honour referred to Epitoma Pty Ltd v AMIEU (1984) 54 ALR 713 at 739-740 and Active Leisure (Sports) Pty Ltd v Sportsman’s Australia Ltd, supra.
I will adopt the approach of the Full Court in the Active Leisure (Sports) case. It is, in my opinion, consistent with the approach of the Full Court of this Court in Epitoma Pty Ltd v AMIEU, supra, in the passage referred to by Spender J. Lord Diplock, in his judgment in the American Cyanamid case, at 408, while using language suggesting that the question of the adequacy of damages was a separate issue that should be determined prior to the issue of the balance of convenience, nevertheless indicated that it was a discretionary consideration only and that, if determined adversely to the plaintiff, would therefore not necessarily lead to the refusal of an interlocutory injunction in every case. It is thus a consideration apt to form one of the matters to be taken into account in the general discretionary exercise of identifying where the balance of convenience lies in the particular case.
The first question for
consideration is whether the applicant has an arguable case that his rights as
the registered proprietor of his trade mark "GJM TAIPAN" in relation
to motor vehicles are being infringed by the respondents. It is necessary, in the course of resolving
this issue rather than that of the balance of convenience, to consider the
first respondent’s prospects of obtaining orders under s 101(1) of the 1995 Act
for the removal of the applicant’s trade mark from the Register in respect of
"military vehicles" and in respect of "armoured military vehicles greater than eight tonnes", since
such orders will defeat any claim the applicant
might otherwise have for infringement.
See Epitoma Pty Ltd v AMIEU,
supra, at 739-740.
But for the first respondent’s contention that it has such a prospect of obtaining the removal of the applicant’s mark from the Register in respect of "military vehicles" or in respect of "armoured military vehicles of greater than eight tonnes", that it is likely to be free to use the mark "Taipan", in the manner it wishes, without any question of infringing the applicant’s rights, I think that the applicant’s evidence, sparse though it is, is sufficient to show an arguable case that the first respondent’s activities are infringing his rights in his registered mark contrary to s 120 of the 1995 Act.
The inclusion of the initials "GJM" in the applicant’s registered trade mark precludes a conclusion that the respondents’ user of the word "Taipan" by itself is the user of a mark that is substantially identical with the applicant’s registered mark. But, in view of the meaning given to the expression "deceptively similar" by s 10 of the 1995 Act, I think that, taking into account the considerations referred to by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415-416, it is arguable that the respondents’ user is of a mark, in relation to what is accepted to be a motor vehicle, that is deceptively similar to the applicant’s mark, which is registered in relation to motor vehicles. One such consideration is whether the settings in which the two marks are used do not overlap but are discrete, a consideration which will tell against the possibility of relevant confusion and should be taken into account in determining whether there
has been a user of one mark that is deceptively similar to another: cf NSW Dairy Corporation v Murray Goulburn Co-Op Co Ltd (1989) 14 IPR 26 at 67. The respondents submitted that, in view of the different settings in which the applicant, on the one hand, and the first respondent, on the other, are using their respective marks, there is little risk of any confusion of the relevant kind arising. But given the prominent part I think the word "Taipan" comprises of the applicant’s registered mark, "GJM TAIPAN", and the unusual linking of the name of a well-known deadly North Queensland snake with motor vehicles, the use by the first respondent of that same word in relation to its armoured vehicle is capable of causing people to be confused about whether there is a trade connection between the first respondent’s carrier and the applicant’s vehicles that bear his registered mark, even though it is extremely unlikely that the applicant is using his mark on motor vehicles that could be said to be similar to the first respondent’s armoured personnel carrier. That Mr Ritzmann took the trouble to draw the television news report concerning the first respondent’s "Taipan" armoured personnel carrier to the attention of the applicant is also some evidence, albeit slight, of the capacity for the respondents’ user of the word "Taipan" in relation to its carrier to generate confusion of the kind I have referred to.
The applicant’s case for infringement is a weak one. But I am not prepared to dismiss it as inarguable.
I must now consider the respondents’ prospects of succeeding on its application to have the applicant’s mark removed from the Register in respect of
"military vehicles" and in respect of "armoured military vehicles of greater than eight tonnes" in order to complete my assessment of whether the applicant has an arguable case that he can show an infringement of his rights.
The applicant’s reticence in revealing details of his user of his mark leaves open the inference that he has not in the past and has no intention in the future of using his mark in relation to the specialised class of motor vehicle to which alone the respondents’ non-use application relates. But I do not think that that necessarily means that the respondents’ non-use applications will succeed.
The applicant’s mark was registered under the 1955 Act in 1985. The validity of that registration is beyond challenge: see s 234 of the 1995 Act. However, it is open to a person with standing, such as the respondents, who have been refused registration of a mark because of its similarity to the applicant’s registered mark, to apply for the removal of the applicant’s registered mark from the Register for non-use. Since marks registered in Part A of the old Register are, by s 233(1) of the 1995 Act, declared to be registered trade marks for the purposes of the 1995 Act, a non-use application in respect of a mark registered under the 1955 Act must be made under Part 9 of the 1995 Act.
There are substantial differences between the scheme for removal of a mark for non-use in the 1995 Act and the corresponding scheme contained in s 23 of the 1955 Act. Section 23(1) of the 1955 Act permitted the making of an order that a trade mark be removed from the Register in respect of any of the goods in respect
of which it was registered either on the ground that the mark was registered without a bona fide intention on the part of the applicant for registration that it should be used in relation to those goods, ie, the goods in respect of which it came to be registered, and that there has, in fact, been no use in good faith of the mark in relation to those same goods by the registered proprietor in the period ending one month before the filing of the non-use application or that, in the period of not less than three years up to one month before the date of the filing of the non-use application, there was no use in good faith by the registered proprietor of the mark in relation to the goods in respect of which the mark was registered. It was well-established that an order could be made under this provision that excluded from the range of goods in respect of which the mark was originally registered, goods in respect of which the registered proprietor had not, in fact, used his mark. See Hunter Douglas Australia Pty Ltd v Perma Blinds (1970) 122 CLR 49 at 57; NSW Dairy Corporation v Murray Goulburn Co-Op Co Ltd, supra, at 43. However, by force of s 23(2), the registered proprietor could defeat a non-use application based on his failure to use the mark in respect of the whole or part of the range of goods in respect of which his mark was registered by proving use of the mark in relation to different goods from those the subject of the non-use application, provided those different goods were goods of the same description as the goods the subject of the non-use application. The expression "goods of the same description" was not given any restrictive construction: see Australian Law of Trade Marks and Passing Off, Shanahan, 2nd Ed, pp 192-196.
Under s 92(1) of the new Act, application may be made for the removal of a trade mark from the Register in respect of all or any of the goods in respect of which the mark is registered. Essentially, the grounds for a non-use application are either that, on the day on which the application for the registration of a trade mark was filed, the applicant for registration had no intention in good faith to use the trade mark in Australia in relation to the goods to which the non-use application relates and that the registered owner has not used the trade mark in Australia in relation to the goods to which the non-use application relates at any time in the period up to one month prior to the date of filing of the non-use application or that, at no time in the period of three years ending one month before the day on which the non-use application is filed has the registered owner used the trade mark in Australia in relation to the goods to which the non-use application relates. The statute now makes clear that a mark can be limited by an order made on a non-use application to exclude goods in respect of which the mark was originally registered, but in respect of which specific goods the proprietor has not used his mark, while leaving his registration otherwise intact. Just as it was well-established by authority that s 23 of the 1955 Act conferred a discretion not to remove or limit a registered mark even though relevant non-use was shown - see Carl Zeiss Pty Ltd’s Application (1969) 122 CLR 1 - so does s 101 of the 1995 Act confer a discretion not to remove a mark from the Register or limit a registered mark to exclude from its scope specific goods in relation to which the registered proprietor of the mark has been unable to prove relevant use of his mark. In these respects, the liability of a registered mark to removal or limitation is much the same under both the 1955 and the 1995 Acts.
But in contrast to the position under s 23 of the 1955 Act, it is the registered proprietor who bears the onus of rebutting allegations of non-use of his mark in relation to the specific goods to which the non-use application relates. See s 100(1). As is clear from s 100(2) and (3), the registered proprietor will only rebut an allegation of non-use of specific goods covered by his registration by proving use of his mark in relation to those specific goods: proof of use of his mark in relation to different goods but which are goods of the same description as the goods the subject of the non-use application is no longer sufficient to defeat a non-use application in relation to particular goods covered by the original registration. The registered proprietor of a mark was thus better placed to defeat a non-use application brought under s 23 of the 1955 Act in reliance on his non-use of some of the goods covered by his registration than is the registered proprietor of a mark who is faced with a non-use application under s 92 of the 1995 Act.
But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression "any or all of the goods ... in respect of which the trade mark ... is registered" in s 92(1): if that provision is construed to permit fine distinctions to be drawn between two items, eg, between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz, that between armoured military vehicles of greater than eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very
great erosion. If s 92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods. The potential for fragmented ownership of the same or a very similar mark in respect of very similar goods to cause confusion, in my opinion, further illustrates the difficulties in identifying the construction that should be placed on the range of goods that s 92(2) permits to be made the subject of a non-use application.
There is thus an issue as to the proper construction of s 92(1) which is not appropriate for me to resolve in the context of this interlocutory application. Cf Spry, Equitable Remedies, 4th Ed, p 457. This issue has to be resolved before it could be determined whether s 92(2) permits a non-use application to be made on the ground that the registered proprietor of a mark in respect of motor vehicles has not used his mark in respect of such a narrow range of motor vehicles as armoured military vehicles of greater than eight tonnes. I am therefore not in a position to assess the respondents’ prospects of succeeding, by means of this non-use application, in limiting the applicant’s registration to clear the way for it to use the word mark "Taipan".
So far as the first respondent’s other application, based on the applicant’s non-use of his mark with respect to "military vehicles" is concerned, it is, I think, arguable that that is not an application authorised by s 92: it may well not be an application for removal of the mark "in respect of ... goods ... in respect of which the mark ... is registered". Very many types of vehicles in civilian use can be described as "military vehicles", once put into service by the Defence Forces and painted in military livery. The military policeman’s motorcycle, the staff officer’s production model sedan, the army band’s bus can be just as fairly described as "military vehicles" as a "Leopard" tank. This particular application thus does not appear to be one for removal of the applicant’s mark from the Register in respect of goods, but rather in respect of a wide but unidentified range of goods covered by the mark’s existing registration, but only if each of the goods in question is used, or perhaps has been or may be used, by a military organisation. If this application is one within s 92(2), the section would permit the question of non-use of a mark in relation to goods to be answered adversely to the registered proprietor, even though he may have used his mark in relation to a particular class of goods for which his mark is registered, eg, sedan motor cars, merely because he has not used that mark in respect of the same kind of vehicle when owned and operated by a particular person or organisation. I am not prepared to accept, without submissions on the point that s 92 permits the making of a non-use application framed in the way this application by the respondent is worded.
The discretion conferred on the Registrar and the Court by s 100(3) of the 1995 Act to allow a mark to remain on the Register unaltered, even though the
grounds on which a non-use application is made have been established, is a discretion of the same kind which the authorities show was conferred by s 23 of the 1955 Act. It is a discretion to be exercised on the basis of considerations of the public interest, not on the basis of any conduct on the part of the particular person seeking removal, because that conduct is open to criticism: Continental Liqueurs Pty Ltd v GF Heublein & Bro Inc (1960) 103 CLR 422 at 433. In Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323 at 345, Woodward J described the major considerations to be taken into account in identifying whether the public interest would be advanced by allowing a mark to remain on the Register despite proven non-use as follows:
"The first is the importance of the public interest - whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark. The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it. Finally, if the public interest is not adversely affected and such title and user are shown, then technicalities or defects in legal formalities may be overlooked."
The second consideration will favour the applicant’s resistance to his mark being limited in accordance with the respondents’ non-use applications when they come to be heard: as against the applicant’s longstanding valid registration and his use of his mark over a long period, even though only to a limited extent, the respondents wish to make what may be only a temporary use of the word mark "Taipan". The third consideration does not appear to be relevant in the circumstances of the respondents’ challenge to the applicant’s registration, so far as they appear from the evidence before me. As to the first consideration, I have
concluded that the applicant has an arguable case, although not a strong one, that the respondents have infringed his registered mark by the use of the word "Taipan" as a mark which is deceptively similar to his mark. That is, I have found that the applicant has an arguable case that the respondents’ user of the word "Taipan" as a mark in relation to its armoured personnel carrier may cause confusion to the public. The potential for confusion from the existence on the Register of a mark extending to goods in respect of which the mark is not used and the user by another of that, or a similar mark, in respect of that same class of goods is good reason for exercising this discretion against the registered proprietor of the mark. But it is only if the respondents will be able to prove a non-use by the applicant of his registered mark that is sufficient to meet the requirements of s 92(4) and so clear the way for its own lawful use, and also for its registration, of the "Taipan" word mark that there will be any risk of confusion from use of the "GJM TAIPAN" mark by the applicant and of the "Taipan" mark by the respondents that cannot be adequately dealt with by the infringement provisions of the Act. Since I do not think it appropriate to express any concluded view on whether the respondents can show this, I am not in a position to attempt to predict how the discretion conferred by s 100(3) might be exercised on the hearing of the respondents’ non-use applications, if the respondents establish the matters prescribed by s 92(4).
I am therefore not prepared to accept that the applicant is likely to fail to defeat the respondent’s non-use applications, given the evidence before me that indicates repeated, though limited, use by the applicant of his mark in relation to unidentified motor vehicles, notwithstanding the evidence showing the respondent’s
intention only to use the word "Taipan" as a mark in relation to its armoured personnel carrier.
I turn now to the question of the balance of convenience. If the applicant is denied interlocutory relief, but is able to establish at the trial that his rights in his mark have been infringed by the first respondent’s activities, it is difficult, on the limited material the applicant has chosen to put before me, to see how it could be said that damages are unlikely to provide adequate compensation for any loss he might sustain as a result of the first respondent’s continued use of the word "Taipan" in relation to its armoured vehicle: I know little of the small-scale user by the applicant of his mark or of the knowledge of that mark by any segment of the public; there is no reason to think that the respondents are likely to use the word "Taipan" as a mark in circumstances which may attract an unsavoury reputation to the applicant’s registered mark.
If, however, the injunction is granted and the first respondent succeeds at the trial in defeating the applicant’s claims of infringement, while the applicant’s undertaking as to damages may be of little practical worth (a point not raised by the respondents), I am not satisfied that the first respondent will suffer anything other than transitory inconvenience by being prevented, until trial, from using the word "Taipan" in connection with its tender. So far as appears from the evidence, the second respondent will only suffer detriment from the grant of the injunction sought if the first respondent’s interests are injured by such an injunction, given its part ownership of the first respondent.
The first respondent, no doubt, has a real chance of winning the tender and thus of winning a valuable contract. But it is not at all clear that an interlocutory prohibition against using the word "Taipan" in connection with its tender will cause it any difficulty. It appears that the Australian military officials involved in the project and who might be thought to play some part in awarding the contract have a preference for the vehicle ultimately selected to carry the name of a snake. But, in the absence of clear evidence suggesting the contrary, I am not prepared to accept that the applicant’s tender will be evaluated by reference to anything other than financial considerations and the degree to which the first respondent’s carrier meets the technical performance specifications that are no doubt referred to in the tender, in comparison with the degree to which the other two tenderers’ vehicles meet those specifications: I am not prepared to accept that, if the applicant’s tender is superior to the other two tenders on technical performance and financial grounds, it will matter at all whether the first respondent retains the name "Taipan" for its carrier or adopts the name of some other reptile.
The first respondent’s Chairman says:
"I am of the opinion that if the injunction sought by the applicant is obtained and it is necessary for the first respondent to amend its tender, there may be a deleterious effect on the first respondent’s chances of successfully obtaining the contract from the Australian Defence Department to build and supply armoured personnel carriers."
He does
not, however, offer any explanation for what is, on the face of it, a
surprising assertion that the Australian Defence Department and military
officials
with responsibility for evaluating the three tenders
and for awarding this important contract might be swayed by such an apparently
trivial consideration as a restriction on the respondent’s entitlement to use
its preferred name for its carrier. The
respondent does not suggest there is a hurdle to changing the name of its
carrier in its tender. It is not at all
clear why a short letter from the first respondent to the Department changing
that name is not all that will be required and there is nothing that provides
any possible explanation why, if the first respondent were to do that, a change
of name would damage, to even the slightest degree, the first respondent’s
prospects of obtaining the contract.
The first respondent’s Chairman also says that the respondents have spent approximately $250,000 to date promoting "the ‘Taipan’ armoured personnel carrier being considered by the Australian Defence Department". The first respondent appears to have been able to achieve fairly widespread coverage on commercial television as a result of these promotional activities. On the evidence before me, this promotional expenditure will all be for nought if the first respondent does not win the tender. But it is difficult to accept that much at all of this $250,000 was spent seeking to attract a reputation to the word "Taipan" as applied to armoured personnel carriers, rather than on portraying the operational superiority of the first respondent’s carrier over its rivals: the Minister for Defence Industries, the Deputy Chief of General Staff of the Armed Forces and the senior military personnel who attended the first respondent’s launch of its carrier on 27 March 1996 would be likely to have been much more interested in whether it is an efficient and effective carrier than in it having an appealing name. The first respondent’s Chairman makes
it clear that the carrier, in respect of which it is using the name "Taipan", is not being marketed to any other customer in Australia (or elsewhere, for that matter), so there is no question of this promotional expenditure, including any expenditure on promoting the name "Taipan", being of possible value to the first respondent in any context apart from its tender for the "Bushranger Project".
The first respondent’s Chairman says that, as a result of its promotional activities:
"In my opinion, the name ‘Taipan’ has, within the Defence Forces, achieved a specific recognition with the armoured personnel carrier produced by the respondents."
But none of the members of the Defence Forces, save for the handful of officers involved in the decision to award the carrier contract, have any commercial interest in the respondents’ activities, including the first respondent’s user of this mark. It might be thought that, if those few members of the Defence Forces with any say in the decision to procure a new armoured personnel carrier were swayed into preferring the first respondent’s vehicle over a technically and financially superior tender, because it bore the name "Taipan", they would be acting in breach of their duties. Even if the first respondent’s Chairman is correct in the opinion he expresses, it seems to me to be a matter of no moment at all. Either the first respondent’s tender will win because it is the superior one technically and financially, not because the first respondent is insisting on calling it the "Taipan" carrier, or the first respondent’s tender will fail, in which case, on the evidence, the
first respondent will not seek to make any further use of the word "Taipan" in Australia.
I am not satisfied there is any real likelihood, on the evidence the respondents have put before me, that they will suffer any detriment at all if they have to change the name of the vehicle the subject of the first respondent’s tender from "Taipan" to that of another snake.
The status quo, in so far as that is a relevant consideration where, as here, the balance of convenience favours neither party, is, I think, the position that existed immediately prior to the first respondent electing, with knowledge of the applicant’s registered mark, to apply the name "Taipan" to its carrier in its tender.
Provided Mr McHattan is prepared to give the usual undertaking as to damages, he will have the interlocutory injunction he seeks.
I certify that this and the preceding 22
pages are a true copy of the reasons
for judgment of the Honourable
Justice Drummond.
Associate:
Date: 19 June 1996
The applicant appeared in person.
Counsel for the respondents: R.N. Traves
Solicitor for the respondents: Feez Ruthning
Date of Hearing: 12 June 1996
