Federal Court of Australia

Ozcare v Auscare Home & Community Care Limited (Further Orders) [2022] FCA 835

ORDERS

THE COURT ORDERS THAT:

1.    Each of the Respondents/Cross-Claimants, by its officers, employees, servants, agents and otherwise, be permanently restrained from maintaining, implementing, causing to be maintained or causing to be implemented a redirection from the domains auscare.org.au or auscareservices.com.au to any website operated, or caused to be operated, by either of the Respondents/Cross Claimants.

2.    On or before the date that is 2 business days after the making of these orders, each of the Respondents/Cross-Claimants is to:

(a)    take all reasonable steps to deregister each of the domains auscare.org.au and auscareservices.com.au;

(b)    cause the video at Exhibit GB-11 to the affidavit of Greg Bodulovic affirmed 13 July 2022 to be removed from the website www.youtube.com; and

(c)    file and serve an affidavit by a proper officer of the First Respondent verifying that the matters in sub-paragraphs (a) and (b) have occurred.

3.    The Respondents be restrained from re-registering each of the domains auscare.org.au and auscareservices.com.au without the prior consent of the Applicant.

4.    The Respondents/Cross-Claimants bear the Applicant’s costs of and incidental to the Applicant obtaining orders 1 and 2 above on an indemnity basis fixed in the sum of $10,400.

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

REASONS FOR JUDGMENT

(REVISED FROM TRANSCRIPT)

PERRAM J:

1    This is an application for an injunction to restrain the Respondents, Auscare Home & Community Care Limited and Auscare Foundation Limited, from maintaining or implementing a redirection from two specified domain names. The injunction also seeks to require the Respondents to deregister those domain names. The only issue between the parties is whether the injunction in relation to redirection should be made. It was accepted by Mr Stathopoulos from the bar table that if the Court granted the injunction in relation to redirection, it would also grant the injunction in relation to deregistration.

2    The origin of the present dispute arises from orders which were made by consent on 27 April 2022. Those orders resolved the substance of the trade mark proceeding between the parties. Order 1 of the orders was in the following terms:

1.    With effect from 26 June 2022, each of the Respondents/Cross-Claimants, by its officers, employees, servants, agents and otherwise, be permanently restrained from using in Australia each of the Auscare Trade Marks and Foundation Trade Marks, or any mark which is substantially identical to or deceptively similar with any of the Ozcare Trade Marks or Foundation Trade Marks, in respect of the Infringing Services.

3    It will be seen, therefore, that this order effectively granted relief to prevent infringement of the trade marks.

4    Since those orders were made 11 weeks ago, in various ways the Respondents have continued to use the marks although I accept more recently that most but not all of that conduct has ceased. What has continued, however, is the redirection from the domain name and it is in that regard that an injunction is sought. I am satisfied that the Court has the power to grant an injunction of that kind as a form of relief which is ancillary to the substantive grant of the trade mark relief: see the Full Court’s decision in Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153; 115 IPR 421 at [162]-[163] and [165]. It seems to me, that it is appropriate in the circumstances of this case to grant the order.

5    Mr Stathopoulos raised with me a timing objection to proposed order 2. The submission was that two business days was not sufficient time to allow the Respondents to deregister the domain names. The initial orders in relation to the trade mark relief were made 11 weeks ago. I consider that the Respondent has had more than enough time to comply with the orders. I do accept that it may not be within the power of the Respondents actually to effect the deregistration of the domain names since that will no doubt be in the hands of the registry service which provides those domain names. For that reason, I have modified order 2 to include the words ‘take all reasonable steps’.

6    In any event, I do not see why with that modification the Respondent ought not to seek to deregister the domain names. It is for those reasons that I have made orders 1, 2 and 3.

7    The Applicants also seek their costs in relation to the present application on an indemnity basis in the fixed sum of $10,400. Since it appears to me that this was infringing conduct and since the Respondent has been on notice since 30 June 2022, it seems to me it is appropriate to mark the Court’s disapprobation of the disobedience of its orders by awarding costs on an indemnity basis. I accept the evidence of the Applicant’s solicitor that an appropriate sum is $10,400. I will modify order 4 to include a reference to the costs being indemnity costs.

Associate:

Dated:    20 July 2022