ESPN, Inc v Thomas [2010] FCA 1232

ESPN, Inc v Thomas [2010] FCA 1232

The applicant established a prima facie case for interlocutory relief on the basis of trade mark infringement, passing off, misleading or deceptive conduct, and copyright infringement. The first respondent's use of 'XSport Games' is sufficiently similar to the applicant's well-known 'X GAMES' marks and event to cause confusion and damage. The balance of convenience favoured granting the injunction, particularly in light of the applicant's substantial goodwill, the potential for damage, and the respondent's non-engagement.

Parties
Applicant: ESPN, Inc; First Respondent: Andrew Thomas; Second Respondent: Royal Agricultural Society of NSW trading as Sydney Showground
Jurisdiction
Australia
Judgment Date
09 November 2010
Procedural Posture
Application for Interlocutory Injunction / Interlocutory (ex Parte) Determination
Outcome
Interlocutory injunction granted (ex parte)
Legal Topics
Interlocutory Injunctions, Trade Mark Infringement, Passing Off, Copyright Infringement, Misleading or Deceptive Conduct
Intellectual Property Trade Marks Copyright Consumer Protection Tort Interlocutory Injunctions Trade Mark Infringement Passing Off +2 more

Case Brief

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Parties

ESPN, Inc

Applicant

Andrew Thomas

First Respondent

Royal Agricultural Society of NSW trading as Sydney Showground

Second Respondent

Procedural Posture

Application for Interlocutory Injunction / Interlocutory (ex Parte) Determination

Legal Issues

  1. 1 Whether a prima facie case for infringement, passing off, or contravention of the Fair Trading Act was made out
  2. 2 Whether the balance of convenience favours granting interlocutory injunctive relief
  3. 3 Whether registration of 'XSport Games' affects the ability to obtain interlocutory restraint for trade mark infringement

Ratio Decidendi

The applicant established a prima facie case for interlocutory relief on the basis of trade mark infringement, passing off, misleading or deceptive conduct, and copyright infringement. The first respondent's use of 'XSport Games' is sufficiently similar to the applicant's well-known 'X GAMES' marks and event to cause confusion and damage. The balance of convenience favoured granting the injunction, particularly in light of the applicant's substantial goodwill, the potential for damage, and the respondent's non-engagement.

Court Disposition

Interlocutory injunction granted (ex parte)

Orders

  • The first respondent is restrained from promoting or conducting the event in Sydney on 13 and 14 November or any similar event using the names 'XSport Games', 'X GAMES', or substantially identical/deceptively similar names or devices, pending final determination.
  • The first respondent is restrained from distributing promotional materials and broadcasting certain advertisements without the applicant's licence.