Hoover Co (Australia) Pty Ltd v Spackman [1999] FCA 70

Hoover Co (Australia) Pty Ltd v Spackman [1999] FCA 70

The word 'Hoovex' is deceptively similar to 'Hoover' such that its use would likely cause confusion among consumers, particularly given the applicants' reputation. The similarity is both visual and aural, and evidence of actual confusion exists. The past and present conduct of the controlling mind of the respondent companies justifies the grant of a permanent quia timet injunction to restrain threatened trade mark infringement. The respondents cannot resist relief on the grounds of prior use or acquiescence as there was no assignment of any common law mark. The applicants also succeed on their claims for passing off and contravention of s 52 of the Trade Practices Act 1974 (Cth).

Parties
First Applicant: Hoover Company (Australia) Pty Limited; Second Applicant: Southcorp Appliances Pty Ltd; Third Applicant: Hoover Appliances (Aust) Ltd; Fourth Applicant: Southcorp Manufacturing Pty Ltd; Fifth Applicant: Southcorp Holdings Limited; Sixth Applicant: Southcorp Whitegoods Pty Ltd; First Respondent: Julie Anne Spackman; Second Respondent: Domicor Holdings BV; Third Respondent: Maytag Corporation Inc; Fourth Respondent: Business Marketing Australia Pty Ltd; Fifth Respondent: Stanley Spackman; Sixth Respondent: Marcia Jacobson; Seventh Respondent: SS Appliances Pty Ltd; Eighth Respondent: Telstra Corporation Limited; Ninth Respondent: Hoover, Access to Washing Machine and Clothes Dryer Service by Tesco Pty Ltd; Tenth Respondent: Terence Spackman; Eleventh Respondent: Vulcan Dishlex, Access to Dishwasher Service by Tesco Pty Ltd; Twelfth Respondent: Tesco Services Pty Ltd
Jurisdiction
Australia
Judgment Date
17 February 1999
Procedural Posture
Trade Mark Infringement and Related Relief / Judgment After Hearing (final Orders and Reasons)
Outcome
Applicant succeeds (permanent injunction and ancillary orders granted against specified respondents)
Legal Topics
Trade Mark Infringement, Deceptive Similarity, Passing Off, Quia Timet Injunction, Acquiescence, Misleading or Deceptive Conduct
Intellectual Property Competition and Consumer Law Trade Mark Infringement Deceptive Similarity Passing Off Quia Timet Injunction Acquiescence Misleading or Deceptive Conduct

Case Brief

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Parties

Hoover Company (Australia) Pty Limited

First Applicant

Southcorp Appliances Pty Ltd

Second Applicant

Hoover Appliances (Aust) Ltd

Third Applicant

Southcorp Manufacturing Pty Ltd

Fourth Applicant

Southcorp Holdings Limited

Fifth Applicant

Southcorp Whitegoods Pty Ltd

Sixth Applicant

Julie Anne Spackman

First Respondent

Domicor Holdings BV

Second Respondent

Maytag Corporation Inc

Third Respondent

Business Marketing Australia Pty Ltd

Fourth Respondent

Stanley Spackman

Fifth Respondent

Marcia Jacobson

Sixth Respondent

SS Appliances Pty Ltd

Seventh Respondent

Telstra Corporation Limited

Eighth Respondent

Hoover, Access to Washing Machine and Clothes Dryer Service by Tesco Pty Ltd

Ninth Respondent

Terence Spackman

Tenth Respondent

Vulcan Dishlex, Access to Dishwasher Service by Tesco Pty Ltd

Eleventh Respondent

Tesco Services Pty Ltd

Twelfth Respondent

Procedural Posture

Trade Mark Infringement and Related Relief / Judgment After Hearing (final Orders and Reasons)

Legal Issues

  1. 1 Whether the use of 'Hoovex' infringes the 'Hoover' registered trade mark under s 120 of the Trade Marks Act 1995 (Cth)
  2. 2 Whether 'Hoovex' is deceptively similar to 'Hoover'
  3. 3 Whether a quia timet injunction should be granted to restrain threatened future use

Ratio Decidendi

The word 'Hoovex' is deceptively similar to 'Hoover' such that its use would likely cause confusion among consumers, particularly given the applicants' reputation. The similarity is both visual and aural, and evidence of actual confusion exists. The past and present conduct of the controlling mind of the respondent companies justifies the grant of a permanent quia timet injunction to restrain threatened trade mark infringement. The respondents cannot resist relief on the grounds of prior use or acquiescence as there was no assignment of any common law mark. The applicants also succeed on their claims for passing off and contravention of s 52 of the Trade Practices Act 1974 (Cth).

Court Disposition

Applicant succeeds (permanent injunction and ancillary orders granted against specified respondents)

Orders

  • Specified respondents are permanently restrained from using designated telephone numbers.
  • Specified respondents to insert particular disclaimers on telephone numbers until certain dates.