Anakin Pty Ltd v Chatswood BBQ King Pty Ltd [2008] FCA 1517

Anakin Pty Ltd v Chatswood BBQ King Pty Ltd [2008] FCA 1517

The respondent selected and used the name 'Chatswood BBQ King' with intent to benefit from the reputation of the BBQ King restaurant, infringing the applicants’ trade mark and causing likelihood of confusion. The respondent must cease use, destroy associated materials, pay damages, and the registered mark be cancelled. No party established entitlement to indemnity costs; costs are apportioned at 40% to applicants, offsettable against damages and interest.

Parties
First Applicant / First Cross Respondent: Anakin Pty Ltd; Second Applicant / Second Cross Respondent: Gold Kings (Australia) Pty Ltd; Third Applicant / Third Cross Respondent: Mempoll Pty Ltd; Respondent / Cross Claimant: Chatswood BBQ King Pty Ltd
Jurisdiction
Australia
Judgment Date
10 October 2008
Procedural Posture
Civil Proceeding / Post Trial Reasons for Judgment and Final Orders
Outcome
Orders made restraining respondent’s use of 'Chatswood BBQ King', destruction of signage and materials, payment of damages and costs, cancellation of trade mark registration, dismissal of amended cross-claim, and specific costs apportionment.
Legal Topics
Trade Mark Infringement, Passing Off, Rectification of Register, Damages, Costs
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Rectification of Register Damages Costs

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Parties

Anakin Pty Ltd

First Applicant / First Cross Respondent

Gold Kings (Australia) Pty Ltd

Second Applicant / Second Cross Respondent

Mempoll Pty Ltd

Third Applicant / Third Cross Respondent

Chatswood BBQ King Pty Ltd

Respondent / Cross Claimant

Procedural Posture

Civil Proceeding / Post Trial Reasons for Judgment and Final Orders

Legal Issues

  1. 1 Whether the respondent infringed the applicants' trade mark 'BBQ King'
  2. 2 Whether the respondent should be restrained from using 'Chatswood BBQ King'
  3. 3 Whether the registration of trade mark No 1027525 should be cancelled

Ratio Decidendi

The respondent selected and used the name 'Chatswood BBQ King' with intent to benefit from the reputation of the BBQ King restaurant, infringing the applicants’ trade mark and causing likelihood of confusion. The respondent must cease use, destroy associated materials, pay damages, and the registered mark be cancelled. No party established entitlement to indemnity costs; costs are apportioned at 40% to applicants, offsettable against damages and interest.

Court Disposition

Orders made restraining respondent’s use of 'Chatswood BBQ King', destruction of signage and materials, payment of damages and costs, cancellation of trade mark registration, dismissal of amended cross-claim, and specific costs apportionment.

Orders

  • The respondent to change its name and the name of its restaurant to one not including 'Chatswood BBQ King' within 21 days.
  • The respondent, its servants and agents restrained from using 'Chatswood BBQ King' in relation to any restaurant from 21 days after the order.