FEDERAL COURT OF AUSTRALIA
NSD 2259 of 2017
Date of judgment:
New South Wales
National Practice Area:
Number of paragraphs:
Solicitor for the Applicants:
Banki Haddock Fiora
Counsel for the Respondents:
Mr P Wallis
Solicitor for the Respondents:
DATE OF ORDER:
THE COURT ORDERS THAT:
2. Costs be costs in the cause.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
1 This is an application for an interlocutory injunction to restrain the Respondents from using the name ‘BOD’ – alternatively spelt ‘B.O.D’. That name is used by both parties with respect to a range of services, which I will shortly describe. The First Applicant is a corporation which, as I understand it, has some association with the Second Applicant. The Second Applicant is an Australian fitness model and social media figure who has released several books of workout guides and has signed as a brand ambassador for the Fitness Institute of Australia. She, through her businesses, provides or supplies fitness services, nutrition services, exercise services, training services, physical health education services and online information services concerning fitness, nutrition and exercise training.
2 She claims also to use BOD in the supply of clothing, and it is the supply of clothing which is controversial in this proceeding. In relation to all of those activities, she says that she does so by reference to the BOD brand. The evidence establishes that she has a substantial online and social media presence and I was taken to many Facebook and Instagram pages where her goods and services were clearly available and marketed by reference to the BOD brand. I will return to the question of clothing shortly.
3 The First Respondent is a corporate entity associated with the Second Respondent. The Second Respondent in some ways is quite similar to the Second Applicant. She is a well-known Australian television presenter and model and was crowned Miss Universe in Australia in 2009, has been on MasterChef and Dancing With the Stars, and has been a presenter on Channel Seven, together with a variety of other activities, including being an ambassador for Myer. She conducts her various businesses via the internet using Instagram, Twitter, Facebook and a webpage. She also provides services – brand services, in effect. More recently she has been endeavouring to provide a range of apparel.
4 Originally that business was operated under the name Body of Dance, which it will be noted when abbreviated is BOD. It is that fact which has brought the parties into dispute. The immediate cause of the dispute is the Respondents’ launch in October of a new range of apparel. That apparel has been created by another entity called Designworks. It is a designer and manufacturer of innovative fashion apparel which it sells to wholesalers and retailers. The Respondents have worked with Designworks to create a new range of garments which are going to be sold under the BOD name and in fact are already being sold under the BOD name. They have been sold since October 2017 via two websites, bodybyfinchapparel.com and stylerunner.com.au. They are to be launched through Myer in February of 2018.
5 The First Applicant is the owner of trade mark registration number 1716918 over the words ‘The Bod’, which is in class 41 in relation to physical health and education. The Applicants claim that the Respondents’ use of the word BOD in the way that they have launched their clothing line and the way they propose to launch it through Myer in February, infringes that trade mark. They also allege that the Respondents are engaging in passing off or have engaged in misleading or deceptive conduct in breach of section 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth).
6 The first question is whether there is an arguable case about that. Contrary to the submissions of the Respondents, I do accept that the case is at least arguable for present purposes. It is not without its difficulties but it is not beyond the realm of the possible that it may succeed. It is not, however, an overwhelming case.
7 I then turn to the balance of convenience. To do that, it is necessary to say something of the Applicants’ clothing activities. The affidavit evidence suggests that these may have been, if I may put it this way, modest. The evidence suggested that between 21 April 2016 and 19 December 2017, the Applicants had sold a quantity of 127 leggings. Closer attendance to the evidence suggested, really, that that had just happened in two bursts, one to a bikini shop in Burleigh Heads, and another a small set of sales at another location.
8 That was the first garment which the Applicants relied upon. The second alleged garment which the Applicants relied upon was a total quantity of 8,474 of what were referred to in the evidence as booty bands. When one looks at what the booty bands are, they are elastic straps which are worn with a view to tightening one’s buttocks. Other than in very limited circumstances, not presently germane, I do not accept that the booty bands are in fact garments. So I do not include them as part of the garment range. The third garment relied upon was a range of bikinis, or a single bikini, which had been marketed by the Applicants in relation to, effectively, an exercise pack.
9 Again, though, the sales of these totalled no more than 478 items. I do not regard the Applicants’ garment-selling aspects of their business as particularly advanced. And I should say, although the affidavit evidence filed on behalf of the Applicants suggested that they were proposing to develop or more broadly launch an apparel range, a close reading of the evidence does not sustain that proposition. So the Applicants’ clothing business is in the past and is small; it does not seem to be about to get any larger.
10 The Respondents have been marketing their apparel range since October. The Applicants say that they first became aware that the Respondents were doing this on 4 December when they found out about an Instagram post of that date.
11 That Instagram post was at Annexure ‘CR-26’ in Exhibit 1. I must say, I do not get from ‘CR-26’ that the Applicants became aware of that matter at that time. It is very difficult to understand what it means. It was submitted on behalf of the Respondents that in circumstances where the Applicants and the Respondents had already come to blows once in a way which had resulted in a deed of settlement between them in September 2017, and in circumstances where they both operated, effectively, social media businesses, it was implausible that the Applicants would not have been aware of what the Respondents’ activities were and when they were advertised. I am inclined to think that there is some substance in that submission.
12 It strikes me as quite surprising that the Applicants would not have been aware of the Respondents’ activities almost from the moment they began. So I propose to refuse the injunction, principally for four reasons. First, there is an arguable case, albeit I think it is at the lower end. Secondly, there has been a delay in the bringing of the application. Once one accepts that the Applicants were most likely aware of this matter from October 2017, it does seem to be a case where they have sat on their hands. Thirdly, I take into account what appears to be very minor apparel activities of the Applicants, which are, in my view, and despite Mr Sibtain of counsel’s submissions to the contrary, much less organised and less substantial than the product range which was launched by the Respondents in October and will be distributed through the Myer stores in February. I also take into account, as a fourth matter, the fact that most of that material is branded with the word BOD, and if the injunction is granted, that material will be useless.
13 I dismiss the application. Costs will be costs in the cause.