H-D Michigan, Inc v MC World Ltd [2003] FCA 925

FEDERAL COURT OF AUSTRALIA

TRADE MARKS – registered trade marks – infringement – passing off

Trade Practices Act 1974 (Cth)s 120

Trade Marks Act 1995 (Cth) s 52

Consumer Affairs and Fair Trading Act 1990 (NT) s 42

H-D MICHIGAN, INC AND HARLEY-DAVIDSON MOTOR COMPANY, INC v MC WORLD LTD TRADING AS STRICTLY HARLEY (IN RECEIVERSHIP) (ABN 098 551 725) AND JOZSEF KALMAR

N306 OF 2003

EMMETT J

6 JUNE 2003

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N306 OF 2003

BETWEEN:	H-D MICHIGAN, INC FIRST APPLICANT HARLEY-DAVIDSON MOTOR COMPANY, INC SECOND APPLICANT
AND:	MC WORLD LTD TRADING AS STRICTLY HARLEY (IN RECEIVERSHIP) (ABN 098 551 725) FIRST RESPONDENT JOZSEF KALMAR SECOND RESPONDENT
JUDGE:	EMMETT J
DATE OF ORDER:	6 JUNE 2003
WHERE MADE:	SYDNEY

THE COURT DECLARES THAT:

1. the respondents have infringed the trade marks listed in Schedule A to these Orders (the ‘Registered Trade Marks’).

AND THE COURT ORDERS THAT:

2. the respondents by themselves, their servants, agents or otherwise within 7 days of the making of the order take all necessary steps to deregister the Northern Territory registered business name BN00910259 ‘Strictly Harley’, or to change that name to a name which does not incorporate any of the Registered Trade Marks listed or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks;

3. the respondents and each of them by themselves, their servants, agents or otherwise, be restrained from registering or using any business or corporate name which incorporates any of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks, including the name Strictly Harley;

4. the respondents and each of them, by themselves, their servants, agents or otherwise be restrained from publishing promotional materials or placing any entries or advertisements in online or hard copy versions of the Yellow Pages or the White Pages or any other directories or publications which incorporate or make reference to Strictly Harley or, without the prior written consent of the applicants, any of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks;

5. the respondents and each of them, by themselves, their servants, agents or otherwise be restrained from applying to register or using any domain name, URL or email address which incorporates Strictly Harley or any of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks;

6. that the respondents and each of them, by themselves, their servants, agents or otherwise, be restrained from:

(i) manufacturing;

(ii) causing or procuring the manufacture or sale of;

(iii) selling or offering or exposing for sale;

(iv) advertising or promoting; or

(v) otherwise providing

motorcycles, motorcycle parts and motorcycle accessories and clothing (the ‘Unauthorised Goods’) and retail services in connection with the sale of motorcycles, motorcycle parts and motorcycle accessories and clothing (the ‘Unauthorised Services’) by reference to:

(A) the name or mark Strictly Harley;

(B) any one or more of the Registered Trade Marks; or

(C) any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks

without the prior written consent of the applicants;

7. the respondents and each of them by themselves, their servants, agents or otherwise within 14 days of the making of the order deliver up to Baker & McKenzie solicitors at Level 26, 50 Bridge Street, Sydney NSW, on behalf of the applicants, all goods, documents and other materials (the ‘Materials’) in their possession, custody or control, including clothing, signage, stationery, business cards and brochures which bear, without the authority of the applicants, any one or more of: