Tim Ho Wan Pte Ltd v Viadar Holdings Pty Ltd [2018] FCA 715

Tim Ho Wan Pte Ltd v Viadar Holdings Pty Ltd [2018] FCA 715

Interlocutory relief was warranted because the applicants established prima facie cases of trade mark infringement under ss 120(1), 120(2)(c) and 120(2)(d) of the Trade Marks Act 1995 (Cth) and contraventions of the Australian Consumer Law, and the balance of convenience favoured relief given reputational concerns, the respondents' indication that they would rebrand, the two-week period allowed, and the applicants' usual undertaking as to damages.

Jurisdiction
Australia
Judgment Date
18 May 2018
Procedural Posture
Application for Urgent Interlocutory Relief in Trade Mark Infringement and Australian Consumer Law Proceedings / Interlocutory Hearing and Orders
Outcome
Interlocutory relief granted; respondents ordered to pay the applicants' costs of the interlocutory application.
Legal Topics
['trade Mark Infringement' 'interlocutory Injunction' 'australian Consumer Law' 'misleading or Deceptive Conduct' 'franchise Agreements' 'domain Name Transfer' 'balance of Convenience']
['intellectual Property' 'consumer Law' 'practice and Procedure'] ['trade Mark Infringement' 'interlocutory Injunction' 'australian Consumer Law' 'misleading or Deceptive Conduct' 'franchise Agreements' 'domain Name Transfer' 'balance of Convenience']

Case Brief

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Procedural Posture

Application for Urgent Interlocutory Relief in Trade Mark Infringement and Australian Consumer Law Proceedings / Interlocutory Hearing and Orders

Legal Issues

  1. 1 ['Whether the applicants established a prima facie case that the first to fourth respondents infringed the Tim Ho Wan Trade Mark contrary to ss 120(1), 120(2)(c) and 120(2)(d) of the Trade Marks Act 1995 (Cth).' 'Whether the applicants established a prima facie case that the respondents contravened the Australian Consumer Law by representing that restaurants were operated with sponsorship, approval or affiliation of persons controlling the Tim Ho Wan chain of restaurants.' 'Whether the balance of convenience favoured interlocutory relief restraining use of the Tim Ho Wan Trade Mark and securing or transferring the Tim Ho Wan Domain Name.']

Ratio Decidendi

Interlocutory relief was warranted because the applicants established prima facie cases of trade mark infringement under ss 120(1), 120(2)(c) and 120(2)(d) of the Trade Marks Act 1995 (Cth) and contraventions of the Australian Consumer Law, and the balance of convenience favoured relief given reputational concerns, the respondents' indication that they would rebrand, the two-week period allowed, and the applicants' usual undertaking as to damages.

Court Disposition

Interlocutory relief granted; respondents ordered to pay the applicants' costs of the interlocutory application.

Orders

  • ['Pending further order of the Court, the first to fourth respondents, whether by themselves, their servants or agents, are each restrained as of 1 June 2018 from using the Tim Ho Wan Trade Mark, the words "Tim Ho Wan", or any other trade mark that comprises the words "Tim Ho Wan", in relation to the Registered...