Rolls-Royce Motors Ltd & Anor v. D.I.A (Engineering) Pty Ltd [1981] FCA 36

Rolls-Royce Motors Ltd & Anor v. D.I.A (Engineering) Pty Ltd [1981] FCA 36

The applicants have established a prima facie case that the respondent's use of the 'Phantom' name, emblem, and a radiator grille substantially similar to the Rolls-Royce grille is likely to mislead or deceive, infringes the applicants' trade marks, and constitutes passing off. The balance of convenience favours...

Source-derived case information.

Parties
Applicant: Rolls-Royce Motors Limited; Applicant: Rolls-Royce Limited; Respondent: D.I.A. (Engineering) Pty. Limited
Jurisdiction
Australia
Judgment Date
05 March 1981
Procedural Posture
Application for Interlocutory Injunction / Interlocutory – Orders Made on Application for Interim Relief
Outcome
Interlocutory injunction granted restraining respondent pending final hearing; security for undertaking as to damages to be provided; costs reserved as costs in the proceeding.
Legal Topics
Misleading or Deceptive Conduct, Trade Mark Infringement, Passing Off, Interlocutory Injunction
Trade Practices Intellectual Property Torts Misleading or Deceptive Conduct Trade Mark Infringement Passing Off Interlocutory Injunction

Source-derived case record

Summary, issues, holding and outcome

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Parties

Rolls-Royce Motors Limited

Applicant

Rolls-Royce Limited

Applicant

D.I.A. (Engineering) Pty. Limited

Respondent

Procedural Posture

Application for Interlocutory Injunction / Interlocutory – Orders Made on Application for Interim Relief

Legal Issues

  1. 1 Whether the respondent's use of 'Phantom', a similar emblem, and a similar radiator grille constitutes misleading or deceptive conduct under the Trade Practices Act 1974 ss. 52, 53, and 55
  2. 2 Whether such conduct infringes the applicants' registered trade marks
  3. 3 Whether such conduct constitutes the tort of passing off

Ratio Decidendi

The applicants have established a prima facie case that the respondent's use of the 'Phantom' name, emblem, and a radiator grille substantially similar to the Rolls-Royce grille is likely to mislead or deceive, infringes the applicants' trade marks, and constitutes passing off. The balance of convenience favours granting interlocutory injunctive relief, as the applicants face potentially irreparable harm to their goodwill and brand, while any loss to the respondent is compensable by the usual undertaking as to damages.

Court Disposition

Interlocutory injunction granted restraining respondent pending final hearing; security for undertaking as to damages to be provided; costs reserved as costs in the proceeding.

Orders

  • The respondent, by itself, servants or agents, is restrained until further order from advertising, promoting, displaying, offering for sale, selling, or otherwise dealing with any motor vehicle: (a) having a radiator grille as depicted in exhibit 'C'; (b) having a radiator grille colourably different from that; (c)...
  • Applicants to secure undertaking as to damages in form and amount to be determined by the Court failing agreement.