FEDERAL COURT OF AUSTRALIA

National Heavy Vehicle Regulator v Countrywide Marketing Pty Ltd

[2015] FCA 351

THE COURT DECLARES THAT:

1.    The first respondent, Countrywide Marketing Pty Ltd, has, by, or in relation to, publishing and distributing publications called the NHVR Roadbook Placement Invitation, National Heavy Vehicle Roadbook Media Kit, NHVR Compliance Guide Placement Invitation and National Heavy Vehicle Compliance Guide Media Kit, and a CD containing relevant rules for heavy vehicle drivers (the “rules CD”), made false and misleading or deceptive representations in the following terms (the “representations”):

(a)    the first respondent and, or alternatively, the second respondent, NHVR Pty Ltd, is the applicant, or part of, or affiliated or associated with the applicant;

(b)    the goods or services provided by the first respondent and the second respondent, are affiliated or associated with, the goods, services or activities of the applicant, or otherwise have the sponsorship or approval of the applicant;

(c)    the first respondent’s business and the business of the second respondent, is part of, affiliated or associated with, the business, services or activities of the applicant, or carried on with the authority of, or connected in the course of trade with, the applicant;

(d)    the applicant is creating and publishing, or approves of, and is associated with the creation and publication of:

(i)    a publication called the National Heavy Vehicle Roadbook (the “Roadbook”);

(ii)    a publication called the National Heavy Vehicle Compliance Guide (the “Compliance Guide”); and

(iii)    a CD containing relevant rules for heavy vehicle drivers (the “rules CD”);

(e)    each of the Roadbook and the Compliance Guide is being published, and being made available to drivers and operators, by the applicant as part of its education program for the heavy vehicle industry;

(f)    to be compliant under the Heavy Vehicle National Law, it is necessary for all drivers of heavy vehicles in Australia to have, and carry with them in their vehicles:

(i)    the Roadbook;

(ii)    alternatively, the Compliance Guide;

(iii)    the rules CD;

(g)    the use of the name “NHVR”, each of the respondents’ logos, the first respondent’s domain name, and the second respondent’s company name, has the licence, authority or consent of the applicant;

(h)    the Roadbook would be published and distributed to, inter alia, persons advertising therein, by August 2014;

and thereby engaged in conduct, in trade or commerce, that is misleading and deceptive, or is likely to mislead or deceive, in contravention of s 18 of Sch 2 to the Competition & Consumer Act 2010 (Cth) (the “Australian Consumer Law”).

2.    The first respondent has, by so making the representations, in trade or commerce, in connection with the supply or possible supply, or promotion of the supply of its goods or services, made false or misleading representations:

(a)    that its goods or services have the sponsorship or approval of the applicant, in contravention of s 29(1)(g) of the Australian Consumer Law;

(b)    that the first respondent has the sponsorship, approval or affiliation of the applicant, in contravention of s 29(1)(h) of the Australian Consumer Law;

(c)    concerning the need for its goods, in contravention of s 29(1)(l) of the Australian Consumer Law.

3.    The first respondent has, by so making the representations, passed off its business and its goods or services:

(a)    as the applicant’s business and, its goods or services; and

(b)    as approved by or connected or associated with the business, services or activities of the applicant.

4.    The second respondent:

(a)    has been, directly or indirectly, knowingly concerned in, and party to, each of the contraventions of the Australian Consumer Law, and passing off, by the first respondent;

(b)    has conspired with the first and third respondents, to effect those contraventions of the Australian Consumer Law;

(c)    is therefore liable as a person involved in the said contraventions by the first and third respondents, for purposes of the Australian Consumer Law;

(d)    is liable as a joint tortfeasor with the first respondent, in respect of the said contraventions, and passing off.

5.    The third respondent, Timothy Aaron O’Keefe:

(a)    has aided, abetted, counselled or procured the said contraventions of the Australian Consumer Law by the first respondent and second respondent;

(b)    has been, directly or indirectly, knowingly concerned in, and party to, each of the alleged contraventions by the first respondent and second respondent;

(c)    conspired with the first respondent and the second respondent, to effect the said contraventions of the Australian Consumer Law;

(d)    is therefore liable as a person involved in the said contraventions by the first and second respondents, for purposes of the Australian Consumer Law;

(e)    is liable as a joint tortfeasor with the first and second respondents, in respect of the said contraventions, and passing off.

THE COURT ORDERS THAT:

6.    Each of Countrywide Marketing Pty Ltd, NHVR Pty Ltd, and Aaron Timothy O’Keefe, whether by themselves, their servants, their agents or otherwise howsoever, be permanently restrained from, in trade or commerce, in Australia:

(a)    advertising and promoting, or offering to supply or supplying any goods or services under or by reference to the business name “NHVR”, the company name “NHVR Pty Ltd”, any trade mark using the letters “NHVR”, or any words or letters substantially identical or deceptively similar to “NHVR”;

(b)    representing, either expressly or impliedly, that the respondents or any of them is associated with, or has the sponsorship or approval of, or any affiliation with, the applicant or the services or activities of the applicant;

(c)    representing, expressly or impliedly, that there are any obligations under the Heavy Vehicle National Law (or otherwise) for drivers, owners or operators in the heavy vehicle industry to acquire or carry the National Heavy Vehicle Roadbook, the National Heavy Vehicle Compliance Guide, or any CD or other publication produced or distributed by any of the respondents.

7.    On or before 5 May 2015, the first respondent, Countrywide Marketing Pty Ltd, de-register the domain name “nhvrgroup.com.au”, and forthwith do all such things as may be necessary to effect such de-registration, including at its cost, preparation and filing of all necessary documentation.

8.    On or before 5 May 2015, the second respondent, NHVR Pty Ltd, change its name to a name other than “NHVR Pty Ltd”, or any name substantially identical or deceptively similar thereto, and forthwith do all such things as may be necessary to effect such change, including at its cost, preparation and filing of all necessary documentation.

9.    If the first respondent does not comply with the order in para 7 hereof, or the second respondent does not comply with the order in para 8 hereof, the District Registrar is appointed and authorised to sign all necessary documents to effect that de-registration and change of name.

10.    On or before 5 May 2015, each of the first, second and third respondents, deliver up on oath to the applicant all signage, brochures, business cards, business or administrative materials and correspondence, and other advertising and promotional material in their possession, custody or control which refers to any company name, business name or any trade mark consisting of or including the acronym “NHVR”, or any words, letters or acronyms substantially identical or deceptively similar to “NHVR”, for destruction under supervision.

11.    The first, second and third respondents pay the applicant’s costs of this application and the proceeding, including reserved costs, on an indemnity basis.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

EX TEMPORE REASONS FOR JUDGMENT

1    These proceedings are concerned with an application by an entity described as the National Heavy Vehicle Regulator for default judgment against all of the respondents for the relief claimed in the statement of claim filed in support of the originating application.

2    The application is made pursuant to r 5.23(2)(c) of the Federal Court Rules 2011. The application has been addressed extensively in oral submissions and is supported by an outline of submissions for the applicant.

3    I am satisfied, having regard to the material read and the authorities referred to by Mr Logan QC, counsel for the applicant, that it is proper and appropriate in all the circumstances to make the orders sought by the applicant in the proceedings. As to the default on the part of the respondents, these matters should be noted. Each of the respondents has failed to file an address for service; has failed to file a genuine steps statement; has failed to file any defence contrary to r 16.32 and contrary to the Court’s orders of 16 December 2014 (concerning the first and second respondents) and 17 February 2015 (concerning the third respondent); has failed to attend the first directions hearing; and has failed to defend the proceedings with due diligence. I also note the matters at para 4 of Mr Logan QC’s written submissions.

4    Initially, when reading the material, I was concerned about the question of whether a declaration ought to be made in circumstances where a judgment is being entered by default. I was concerned about that matter, having regard to the fact that no admissions have been contained in a filed pleading or document and there is no contradictor.

5    However, having read the material, I am satisfied that the appropriate principles to be applied in determining whether a declaration ought to be made in circumstances of a default judgment are made good in this case. Those circumstances, fundamentally, are whether the declaration will have any utility; whether the proceeding involves a matter of public interest; and whether the court ought to make a declaration as an incident of marking the Court’s disapproval of the contravening conduct of the respondents.

6    I am satisfied that all of those principles are made good in their application to the circumstances of this case and, accordingly, I am satisfied that it is a proper exercise of the discretion to make a declaration and grant the injunctions.

7    I am also satisfied that the ancillary orders proposed and as to be made are properly made. I directed that the applicant file the outline of submissions as a document on the Court record. It is not necessary to recite extensively in these reasons the content of the expressions of opinion by Judges of this Court on the principles to be applied.

8    However, it should be noted that the principles upon which I rely are identified in Speedo Holdings BV v Evans (No 2) [2011] FCA 1227, particularly at [15] to [26], Engineered Thermal Systems Pty Ltd v Salmon (In Liq) [2012] FCA 1159, particularly at [36]. The principles are further identified in Yeo v Damos Earthmoving Pty Ltd [2011] FCA 1129 at [17].

9    I am also satisfied, having regard to the observations in Bitek Pty Ltd v IConnect Pty Ltd [2012] FCA 133 at [24], that it is appropriate to mark the Court’s disapproval of the conduct of the respondents in all the circumstances.

10    Accordingly, I am willing to make the orders sought by the applicant. Those orders have been the subject of discussion this morning.

11    I will direct that the applicant put the orders in final form and submit them to my Chambers for consideration. If I am satisfied that the proposed orders reflect the elements of the discussion this morning, I will initial the orders accordingly.

Associate:

Dated:    14 April 2015