Case: Natural Floor Covering Centre v Monamy (No 3) [2006] FCA 602
Outcome: referred to
the matter was returned this morning the respondent was represented by Mr Webb SC and Mr Altan. They have submitted that I should revisit the finding I made in my judgment delivered on 12 May 2006, Natural Floor Covering Centre Pty Ltd v Monamy (No 3) [2006] FCA 602 , on the basis that the reformulated charge has elevated the sign depicted in order 1 made by Wilcox J on 15 December 2005 to the status itself of the trademarks, the protection of which was understood to be the object of order 1. The respondent has referred to the phrasing of the handwritten heads of agreement reached in the mediation between the parties on 12 December 2005 and in particular to par 1 which reads: injunction against respondent restraining his use of the applicant's registered trademarks and the applicant's guide to estimating on the respondent's website.' The respondent submits that a reasonable construction of order 1 would involve the use of the well developed concepts of 'substantial identity' and 'deceptive similarity' over many years of trademarks law under various statutes, including the concepts in ss 10 and 120 of the Trademarks Act 1995 (Cth). Against that background the respondent submits that order 1 made on 15 December 2005 was clearly intended to protect the registered trademarks numbered 981970 and 1013021 from infringement by the use of signs, symbols or devices that were the same or substantially identical with those marks. The respondent submits that when one has regard to the fact that the concept employed by the parties in their consent orders eschewed the broader concept of deceptive similarity as explained in The Shell Co of Australia Limited v Esso Standard Oil (Australia Limited) [1961] HCA 75 ; (1963) 109 CLR 407, it is at least open to raise a reasonable doubt as to whether what the respondent did, as previously found by me (in Natural Floor Covering Centre Pty Ltd v Monamy (No 3) [2006] FCA 602 at [12] ) was in fact a use that was the same or substantially identical with either of the registered marks. (The respondent does not accept that that finding was one which should have been arrived at on the facts, but has left such rights as he may have to deal with that matter to be the subject of an appeal rather than seeking leave to reopen generally.) One of the surrounding circumstances in this case is the fact that there were heads of agreement made between the parties prior to the formulation of the consent orders accepted by the solicitor then acting for the respondent. There does appear to be a variance between what is in the heads of agreement and the consent orders made by Wilcox J on 15 December 2005, although, as the applicant points out, the provisions of the heads of agreement ought to be read as a whole. Secondly, the applicant points to the fact that the consent orders specifically identify a particular sign as being agreed to be one the use of which is prohibited as an aid to the construction which would support the finding that I have made. The applicant urged that findings I had made in Natural Floor Covering Centre Centre Pty Ltd v Monamy (No 3) [2006] FCA 602 at [12] in any event precluded the respondent having success on the reopening. This was because I found that by causing the animation to produce in sequence what was ultimately the shape that amounted to the spiral or cover-roll design and then the words 'Simply Natural Floorcoverings', the respondent had used and displayed a sign on his website in contravention of order 1 as charged in amended charge number 2. As I understand it though, the respondent's contention really goes to the fact that charge number 2 elevates the sign depicted in order number 1 into a mark in itself that was capable of protection. I am of opinion that the order is capable of being read in the sense that the respondent has advocated today, although that is not the way I, myself, would read it for the reasons I have given earlier. However, I think that I ought to find that the charge number 2 has not been proved beyond reasonable doubt because of the difference in interpretation which order 1 made by Wilcox J could give rise to having regard to the heads of agreement. I therefore vacate my finding that charge 2 has been proved beyond reasonable doubt and I will enter a judgment of not guilty on that count. I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Rares. Associate: Dated: 31 August 2006 Counsel for the Applicant: Mr C D Freeman Solicitor for the Applicant: Purcell Lawyers Counsel for the Respondent: Mr R Webb SC with Mr H Altan (pro bono) Date of Hearing: 29 May 2006 Date of Judgment: 29 May 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1197.html