Campbell v Sutherland

• Jurisdiction: Australia Federal only
• Judgment Date: 25 May 2020
• Neutral Citation: [2020] FCA 765
• Court: Federal Court
• Date: 25 May 2020

FEDERAL COURT OF AUSTRALIA

Campbell v Sutherland [2020] FCA 765

File number(s):	QUD 70 of 2020
Judge(s):	GREENWOOD J
Date of judgment:	25 May 2020
Catchwords:	INTELLECTUAL PROPERTY – consideration of an application for an interlocutory injunction
Legislation:	Trade Marks Act 1995 (Cth), s 120
Date of hearing:	25 May 2020
Date of last submissions:	25 May 2020
Registry:	Queensland
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	14
Counsel for the Applicant:	The applicant appeared in person
Counsel for the Respondent:	J Mitchenson
Solicitor for the Respondent:	Dundas Lawyers

ORDERS

		QUD 70 of 2020
BETWEEN:	ROBERT KENNETH CAMPBELL Applicant
AND:	BRADLEY GEORGE SUTHERLAND Respondent

JUDGE:	GREENWOOD J
DATE OF ORDER:	25 MAY 2020

THE COURT ORDERS THAT:

1. The applicant’s application for an interlocutory injunction filed on 13 May 2020 is dismissed.

2. Costs of the application are reserved.

3. The applicant is given leave to file and serve an amended statement of claim by 4 June 2020.

4. The respondent is to file and serve any amended defence by 11 June 2020.

5. The matter is referred to the Registrar for mediation on a date mutually convenient to the parties.

6. The matter is listed for a remote final hearing using Microsoft Teams on Tuesday, 30 June 2020 at 10.15am.

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

EX TEMPORE REASONS FOR JUDGMENT

GREENWOOD J:

1. These proceedings are concerned with an interlocutory application filed on 11 May 2020 in which the applicant, Robert Kenneth Campbell, seeks an order, pending trial, restraining the respondent, Bradley George Sutherland, from using the applicant’s intellectual property. The particular intellectual property is a trade mark registered under the Trade Marks Act 1995 (Cth) (the “Act”). It is Trade Mark No. 1538767 described as “Porkys”.

2. The applicant commenced proceedings on 10 March 2020, in which a range of relief in relation to contended trade mark infringement is claimed. The relief is claimed by reference to s 120 of the Act, and, of course, that section contains at least two primary, and in fact three, possibilities giving rise to trade mark infringement. The short point is that the applicant asserts that the conduct of the respondent falls within s 120 of the Act because the conduct is properly characterised as use of a mark, which is deceptively similar to, or substantially identical with, the registered trade mark in respect of goods or services for which the mark is registered.

3. The affidavit material from Mr Campbell exhibits the trade marks in question and as to the “Porkys” mark, the searches show that it is registered in Class 43 in relation to a reasonably wide range of food‑related services and activities. The mark has a priority date of 2 February 2013. Mr Campbell has filed an affidavit in which he exhibits a number of advertisements which appear to have been copied or drawn down from the Facebook page for the business conducted by Mr Sutherland.

4. Mr Sutherland established and commenced operating a business on 19 February 2020, under the name “Porky’s Pizza”. That name appears to be the dominant mark adopted by the respondent, notwithstanding that the business name registration appears to be “Porky’s Pizza HQ”. The mark, “Porky’s Pizza”, as reflected in the Facebook printouts, is Porky’s Pizza. I am willing to proceed on the basis that there is at least a serious question to be tried as to whether or not the mark adopted by the respondent is deceptively similar to the registered mark. It may be that Mr Campbell will seek to assert in the proceeding that the mark adopted by the respondent is substantially identical to the applicant’s trade mark. The precise scope of the true basis upon which the claim will be made needs to be identified clearly in the statement of claim by reference to the material facts in question.

5. The history of the matter shows that Mr Campbell did seek to agitate his concern about the conduct of Mr Sutherland prior to Mr Sutherland commencing the pizza undertaking. It seems clear enough that Mr Campbell sent Facebook message on 15 February 2020, and an emailed letter on 17 February 2020, agitating his position as the registered proprietor of a number of trade marks, but in particular, relevantly for the moment, “Porkys”. It seems to be the accepted position of the respondent that, notwithstanding those communications, the respondent elected to commence the business on 19 February 2020 in the face of those express notifications of a concern by Mr Campbell. That may come back to haunt Mr Sutherland at a later date, depending upon how the proceedings emerge and the findings of fact that are made.

6. It is odd that a party would receive those communications and consciously choose to commence the business using the mark, unless of course he was confident of his position that doing so did not involve any infringement of the applicant’s trade mark. Of course, it may well emerge that Mr Sutherland undertook the steps he took in the firm belief that he was entitled to do what he was doing, possibly by reference to a registered business name, which is often a source of confusion in the minds of citizens in relation to use of trade names and trade marks. In any event, these questions will fall to be decided at a later date.

7. The question for the moment is that there is evidence which is not contradicted, but called into question (although not expressly contradicted), by reference to photographs and other images of displays and other things, which suggests that there are a number of steps to be taken by the respondent, should an interlocutory injunction order be made requiring him to cease use of the trade mark he has adopted. It would be necessary for him to alter the badging, identification, livery, menus and other things, which are said to incur a certain body of costs and it is also said that these costs would be effectively thrown away and may well not be recoverable should the respondent be successful in the proceedings.

8. For present purposes, I must proceed on the footing that the affidavit of Mr Sutherland gives an indication of the detriment or damage or harm that would flow to him should an order be made. On the other hand, Mr Campbell, of course, has a major interest as the registered owner of the trade mark in the trade mark and its integrity. That interest is...