Wang v Anying Group Pty Ltd [2011] FCA 1196

Wang v Anying Group Pty Ltd [2011] FCA 1196

Harry Wang did not own the Anying trade mark as he was not the first user nor assignee; the registration was procured falsely and must be cancelled. New Century, having acquired the relevant goodwill and rights from Anying Sydney No 1, is entitled to relief against Anying Auburn for misleading and deceptive conduct and passing off, including injunctions and declarations. Andrew Chen and Yanyan Sun are personally liable as accessories under s 75B TPA for intentional participation in misleading conduct. All other claims, including copyright, oppression, and unconscionable conduct, fail.

Parties
First Applicant: Hua Wei Wang; Second Applicant: Xinying Pty Ltd (ACN 118 548 977); Third Applicant: New Century 2001 Pty Ltd trading as Anying Sydney Company (ACN 114 661 568); First Respondent / First Cross Claimant: Anying Group Pty Ltd (ACN 126 282 657); Second Respondent / Second Cross Claimant: Yanyan Sun; Third Respondent / Third Cross Claimant: Yun Chen; Fourth Cross Respondent: Registrar of Trade Marks; Fifth Cross Respondent: Chuang Wang; Sixth Cross Respondent: Anying International Financial Pty Limited (ACN 105 067 990)
Jurisdiction
Australia
Judgment Date
21 October 2011
Procedural Posture
Civil / Final Judgment on Liability, With Pecuniary Relief Reserved
Outcome
Registered trade mark cancelled; applicants partially succeed; injunctive and declaratory relief granted to New Century against Anying Auburn, Andrew Chen, and Yanyan Sun; all other claims for relief rejected; costs reserved; pecuniary relief reserved.
Legal Topics
Trade Mark Ownership and Cancellation, Copyright, Passing Off, Misleading and Deceptive Conduct, Accessory Liability Under Trade Practices Act, Unconscionable Conduct, Corporate Oppression, Service Requirements
Intellectual Property Trade Practices Corporations Law Trade Mark Ownership and Cancellation Copyright Passing Off Misleading and Deceptive Conduct Accessory Liability Under Trade Practices Act +3 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 8 Authorities cited 14 Party arguments 2
Sign in to unlock

Parties

Hua Wei Wang

First Applicant

Xinying Pty Ltd (ACN 118 548 977)

Second Applicant

New Century 2001 Pty Ltd trading as Anying Sydney Company (ACN 114 661 568)

Third Applicant

Anying Group Pty Ltd (ACN 126 282 657)

First Respondent / First Cross Claimant

Yanyan Sun

Second Respondent / Second Cross Claimant

Yun Chen

Third Respondent / Third Cross Claimant

Registrar of Trade Marks

Fourth Cross Respondent

Chuang Wang

Fifth Cross Respondent

Anying International Financial Pty Limited (ACN 105 067 990)

Sixth Cross Respondent

Procedural Posture

Civil / Final Judgment on Liability, With Pecuniary Relief Reserved

Legal Issues

  1. 1 Whether Harry Wang was the owner of the registered trade mark for Anying
  2. 2 Whether registration of the trade mark should be cancelled under Trade Marks Act
  3. 3 Whether Anying Group Pty Ltd infringed the trade mark

Ratio Decidendi

Harry Wang did not own the Anying trade mark as he was not the first user nor assignee; the registration was procured falsely and must be cancelled. New Century, having acquired the relevant goodwill and rights from Anying Sydney No 1, is entitled to relief against Anying Auburn for misleading and deceptive conduct and passing off, including injunctions and declarations. Andrew Chen and Yanyan Sun are personally liable as accessories under s 75B TPA for intentional participation in misleading conduct. All other claims, including copyright, oppression, and unconscionable conduct, fail.

Court Disposition

Registered trade mark cancelled; applicants partially succeed; injunctive and declaratory relief granted to New Century against Anying Auburn, Andrew Chen, and Yanyan Sun; all other claims for relief rejected; costs reserved; pecuniary relief reserved.

Orders

  • Registered trade mark to be cancelled and removed from the Register.
  • Declarations and injunctions granted restraining Anying Auburn from using the Anying name and mark, including in websites.