Federal Court of Australia

Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd (No 2) [2021] FCA 783

ORDERS

THE COURT ORDERS THAT:

1.    With effect on and from Monday, 2 August 2021, the respondent, whether by itself, its directors, servants or agents, is restrained from using the registered trade mark “STARCARD” (Australian trade mark registration numbers 482280, 497775 and 502072):

(a)    at any Ampol branded retail fuel service stations in any banner which says “StarCard accepted here” or words to that effect; or

(b)    in any advertising which says “StarCard will be accepted at Ampol branded sites” or words to that effect.

2.    Subject to order 1, the claims made by the applicants in the proceeding are otherwise dismissed, save for the issues of the quantification of damages or at the applicants’ election the taking of an account of profits.

3.    The applicants pay the respondent’s costs of the proceeding.

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

REASONS FOR JUDGMENT

O’CALLAGHAN J:

1    These reasons deal with the question of the form of orders to be made consequent upon the reasons for judgment in Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd [2021] FCA 617 (the principal judgment).

2    The parties disagree about two issues: (i) the form of injunctive relief that should go; and (ii) the appropriate order as to costs.

3    These reasons assume familiarity with the principal judgment, and the same abbreviations are used.

4    I turn first to the question of injunctive relief.

5    Ampol seeks orders in the following terms:

1.    With effect on and from Monday, 2 August 2021, Ampol Australia Petroleum Pty Ltd, whether by itself, its directors, servants or agents, is restrained from using the registered trade mark ‘STARCARD’ (Australian trade mark registration numbers 482280, 497775 and 502072):

(a)    at any Ampol branded retail fuel service stations in any banner which says ‘StarCard accepted here’; or

(b)    in any advertising which says ‘StarCard will be accepted at Ampol branded sites’.

2.    Subject to order 1, the claims made by Chevron Global Energy Inc and Chevron Intellectual Property LLC in the proceeding are otherwise dismissed.

3.    Chevron Global Energy Inc and Chevron Intellectual Property LLC pay the costs of Ampol Australia Petroleum Pty Ltd and Ampol Limited of the proceeding, taxable forthwith.

6    Chevron seeks orders in a wider form, as follows:

1.    With effect on and from Monday, 2 August 2021 (subject to paragraphs (a)(iv) and (b) below), Ampol Australia Petroleum Pty Ltd, whether by itself, its directors, servants or agents, is restrained from using:

(a)    the registered trade mark ‘STARCARD’ (Australian trade mark registration numbers 482280, 496594, 497775 and 502072):

(i)    at any Ampol branded retail fuel service stations in any banner displaying words to the effect ‘StarCard accepted here’; or

(ii)    in any advertising displaying words to the effect ‘StarCard will be accepted at Ampol branded sites’;

(iii)    by otherwise advertising, or offering to accept or accepting StarCard in relation to the provision of products or services under or by reference to the mark AMPOL; and

(iv)    with effect on and from 31 March 2022, by accepting StarCard in relation to the provision of products or services under or by reference to the mark AMPOL;

(b)    with effect on and from 6 September 2021, the registered trade marks ‘CALTEX’ (Australian trade mark registration numbers A343726 … A69460 … A326601 … and A380010) … [and] ‘Caltex Kaleidoscopic Corporate Logo Series (in colour and in black and white)’ (Australian trade mark registration 645400 … ) … in conjunction with the mark AmpolCard by advertising or offering to accept AmpolCard in relation to the provision of products or services under or by reference to the Caltex Marks.

2.    The claims made by Chevron Global Energy Inc and Chevron Intellectual Property LLC in the proceeding are otherwise dismissed, save for the issues of the quantification of damages or at the Applicants’ election, the taking of an account of profits.

3.    Chevron Global Energy Inc and Chevron Intellectual Property LLC pay 60% of the costs of Ampol Australia Petroleum Pty Ltd and Ampol Limited of the proceeding, as agreed or taxed.

7    Although counsel for Ampol proffered the orders set out above that omitted “or words to that effect”, it was later agreed that orders including those words would be appropriate, which it obviously is.

8    Chevron submitted that my findings in the principal judgment extended to the proposition that advertising and offering to accept StarCard at an Ampol branded site constituted a trade mark use of STARCARD which was not permitted by cl 14.4 of the TMLA. Chevron submitted that, because my findings so extended, I should make order 1(a)(iii) set out above.

9    Chevron’s submission is, however, founded upon a misconception that my reasons relevantly extended beyond any consideration of, or finding about, anything other than Chevron’s contention that Ampol’s use of the STARCARD mark at its Ampol branded service stations in a banner that says “StarCard accepted here” and in advertising which says that “StarCard will be accepted at Ampol branded sites” are uses of STARCARD “in conjunction with” Ampol trade marks within the meaning of cl 14.4 of the TMLA.

10    Chevron relied on paragraphs [227]-[229] of the principal judgment, and in particular [228]. Those paragraphs are as follows:

227    In my view, Ampol’s use of the STARCARD mark at its Ampol branded service stations in a banner that says ‘StarCard accepted here’ and in advertising which says that ‘StarCard will be accepted at Ampol branded sites’ are uses of StarCard ‘in conjunction with’ Ampol trade marks within the meaning of cl 14.4 of the TMLA.

228    I am also of the view that advertising and offering to accept a Caltex StarCard in relation to provision of services under the Ampol name for Ampol products is not a use of the marks in conjunction ‘for the sole purpose of educating customers’ within the meaning of cl 14.4 of the TMLA. It seems to me, as Chevron contends, that such use is a commercial use, not an educative one.

229    It follows, in my view, that to the extent that Ampol has used the STARCARD mark at its Ampol branded service stations in a banner that says ‘StarCard accepted here’ and in advertising which says that ‘StarCard will be accepted at Ampol branded sites’ it is in breach of cl 14.4. It also follows that it is not an authorised use.

11    Paragraph [228] does not constitute a finding that advertising and offering to accept a Caltex StarCard constitutes a trade mark use that is not permitted by cl 14.4 of the TMLA. It is clear that my reasons only deal with, and rule on, Chevron’s contention in relation to the banner and the specific form of pleaded advertising referred to in paragraph [227]. It is that pleaded banner and that pleaded advertising that is referred to in paragraph [228], not some other type of advertising, or advertising generally.

12    I therefore decline to make order 1(a)(iii) sought by Chevron, because it extends beyond Chevron’s pleaded case about, and my findings in respect of, the banner and advertising concerning acceptance of StarCard at Ampol branded sites.

13    Chevron’s submissions in support of order 1(a)(iv) are also, with respect, founded on a misreading of the principal judgment.

14    Chevron contended that paragraphs [208], [235] and [236] of the principal judgment support the making of such an order. Those paragraphs are as follows:

208    That leaves two questions on this part of the pleading, both of which relate to Ampol’s StarCard and AmpolCard products:

(a)    whether (1) Ampol’s acceptance of AmpolCard as a means of payment at Caltex sites (particular (i)(D)), (2) Ampol’s acceptance of StarCard as a means of payment at Ampol sites (particular (ii)(C)), or (3) Ampol’s use of ‘StarCard accepted here’ banners (particular (ii)(B)) constitute breaches of cll 4.4 or 10(b) of the TMLA; and

(b)    whether any of those three types of conduct, or the Instagram or LinkedIn posts about the acceptance of AmpolCard, constitute a breach of cl 14.4 of the TMLA.

…

235    Ampol’s submission that the use alleged does not involve use of the STARCARD mark ‘as a trade mark’ in relation to a financial service (no offer of credit is taking place at a service station that accepts the StarCard for payment, because the relevant financial transaction involves credit being extended to the account holder, not the card holder) seems to me, again, to be an artificially narrow approach to the question. Mr Shavin encapsulated why in his closing address in reply as follows:

… the provision of financial services goes at each limb of the relationship and the use of the credit card. It is in the limb certainly between the card issuer and the cardholder, but there is also a relationship in trademark terms in the offering of service and the use of a mark in association with a service [see s 7(5) of the Trade Marks Act]. And there can be no doubt that when the cardholder goes to the service station and fills the tank with petrol, he either pays cash or he gives on behalf of the card account holder a promise to pay, and that is done because what is offered and supplied is a service of accepting the offer on behalf of the employee in consideration for taking the goods and that is done by the merchant accepting the proffering of the card knowing that there’s a relationship with the card issuer who assumes the credit risk of recovering from the account holder.

Now, all parts of that are part of the provision of financial services, and advertising and offering to provide those services at the point of sale is as much a provision of services as entering into an agreement between the issuer and the account holder and you cannot bifurcate them and say that – when you say at a point of sale, ‘I’m taking Visa’, or something else, ‘and I am offering to supply the service of accepting Visa, but I am not using Visa as a trademark’. Now, when you are in that position, you are accepted as a user and there’s a licence [express] or implied, often, I suspect, [express], in terms of the agreement by which you are able to and do accept the proffering of the card in response to a promise that you will be paid by the person providing the service …

236    I agree with those submissions.

15    Chevron contended that, by those reasons, I found that acceptance of StarCard at Ampol branded service stations constituted, or would constitute, an infringement of Chevron’s marks. But, with respect, I found no such thing. The paragraphs of the principal judgment on which Chevron fastens only concern, and reject, a submission put by Ampol that its use of the STARCARD mark in the banner and in the advertising referred to above did not involve use of the mark “as a trade mark” within the meaning of cl 14.4 of the TMLA. It was that submission in the context of that pleaded claim that I dealt with in paragraph [235], effectively by adopting the oral submission made in respect of it by senior counsel for Chevron. I did not decide anything beyond that. And I certainly did not decide, because Chevron did not press the case, that the mere acceptance of the StarCard at an Ampol branded site constituted an infringement of the mark within the meaning of s 120(1) of the Trade Marks Act.

16    For that reason, that is to say because order 1(a)(iv) sought by Chevron extends beyond any finding in the principal judgment, I decline to make it.

17    Chevron’s third proposed disputed order is order 1(b) set out above. Chevron says that I made a slip in paragraph [216] of the principal reasons. That paragraph reads as follows:

216    Chevron’s submissions concerning cl 14.4 of the TMLA were directed entirely to the acceptance of StarCard at Ampol sites (and Ampol’s statements about that acceptance). Conduct relating to the acceptance of AmpolCard at Caltex sites (particular (i) to paragraph [21A] of the pleading) was mentioned only in passing.

18    Although Chevron does not dispute the characterisation that such conduct was only mentioned “in passing”, it now says that there is what counsel referred to as a “lacuna”. It was submitted that it is not necessary for Chevron to reopen its case, but that I should nonetheless order that Ampol be restrained from using the nominated Caltex marks “in conjunction with the mark AMPOLCARD by advertising or offering to accept AmpolCard … by reference to …” those Caltex marks, so that there is a “mirror image” of the proposed restraint against advertising at Ampol service stations.

19    With great respect to counsel for Chevron, there was no slip.

20    The use of AmpolCards at Caltex branded sites was not part of Chevron’s case at trial. Chevron points to the particular contained in paragraph [21A](i)(D) of the fourth further amended statement of claim, but that paragraph was an allegation forming part of a claim under s 18 of the ACL that “[a]ccepting the AmpolCard as a means of payment at the point of sale at Caltex sites” conveyed “the Representation” (which it will be recalled was defined to mean “the representation that the Chevron Trade Marks, AMPOL and AMPOLCARD are owned by the same entity or entities which are associated, affiliated or otherwise connected”).

21    Paragraphs [21D] and [23A], by the device of the words “by reason of the matters referred to …”, sweep up those allegations in aid of the allegation that there was also a breach of cl 14.4 of the TMLA and infringement of Chevron’s trade marks. But such a pleading is of no avail in these circumstances, because no case of the type now articulated – that acceptance of AmpolCard at Caltex branded sites constituted a breach of cl 14.4 of the TMLA and/or trade mark infringement – was ever put. Ampol listed those parts of the opening and closing submissions which (merely) mentioned the fact of acceptance of AmpolCards at Caltex sites in their written submissions in relation to this application. Counsel for Chevron did not dispute the list, and it makes clear that the relevant case was not put.

22    In those circumstances, I decline Chevron’s invitation to revisit the issue.

23    The final question concerns costs. In my view, Ampol should have its costs of the proceeding.

24    It seems to me that what Mr McGrath said on this question is correct, namely, that it was necessary for Ampol to adduce evidence in respect of each and every one of the large number of particulars said to give rise to “the Representation” as part of its defence of the ACL case brought against it.

25    The question upon which Chevron succeeded was a question involving the proper construction of cl 14.4 of the TMLA. That question did not involve the adducing of any further significant evidence. It is true that Ampol lost the point, but beyond the small amount of time and submissions committed to the question, and perhaps an affidavit or two, the question was of little, if any, significance in the relevant scheme of things, and there is no basis, in my view, for reducing the amount of costs to be awarded in Ampol’s favour.

26    I should also record the parties’ agreement that any relevant injunctive relief should commence to operate on 2 August 2021. Chevron, sensibly, if I may say so, agreed to that position for reasons to do with practicalities that were the subject of evidence adduced by Ampol.

27    Counsel for Chevron also said that Chevron had not yet decided whether to pursue any further remedy in relation to the claim in respect of which it enjoyed success, and that it would make that decision following the publication of these reasons and the making of relevant orders. For that reason, I will make an order dismissing the proceeding, subject to the injunctive relief I will grant in the form Ampol seeks, and save for the issue of quantification of damages or the taking of an account of profits, as the case may be.

28    At the hearing on Monday, 5 July 2021, there was also a skirmish about a notice to produce that Ampol had served on Chevron the preceding Saturday afternoon. The notice was issued in response to something that had been said in an affidavit relied on by Chevron concerning Chevron’s plans for rebranding Puma service stations. In the end, Ampol did not call on the notice, so I do not propose to say anything further about it.

29    Accordingly, I will order that:

(1)    With effect on and from Monday, 2 August 2021, Ampol, whether by itself, its directors, servants or agents, is restrained from using the registered trade mark “STARCARD” (Australian trade mark registration numbers 482280, 497775 and 502072):

(a)    at any Ampol branded retail fuel service stations in any banner which says “StarCard accepted here” or words to that effect; or

(b)    in any advertising which says “StarCard will be accepted at Ampol branded sites” or words to that effect.

(2)    Subject to order 1, the claims made by Chevron in the proceeding are otherwise dismissed, save for the issues of the quantification of damages or at Chevron’s election the taking of an account of profits.

(3)    Chevron pay Ampol’s costs of the proceeding.

Associate:    

Dated:    9 July 2021