[2020] NSWSC 1858

COLAS Australia Group Pty Ltd v COLAS Road Surfacing Pty Ltd & Anor

Interlocutory relief granted

Catchwords

CIVIL PROCEDURE – application for interlocutory injunction – passing off – misleading or deceptive conduct – where defendant without authority using similar name to plaintiff – where serious question to be tried established – where balance of convenience favoured making order

Judgment

[1]
This matter was listed before me as Commercial List Duty Judge earlier today.
[2]
The defendants were called but did not appear.
[3]
I made the following orders:
1. (1)
  Upon the plaintiff by its counsel giving to the Court the usual undertaking as to damages, ORDER that until further order of the Court:
2. (2)
  Grant to the defendants liberty to apply to the Commercial List Duty Judge (to 5.00pm on 18 December 2020) and thereafter to Equity Vacation Judge to apply to vacate or vary these orders on 48 hours’ notice, such notice to be served on the plaintiff care of its solicitors at dfitzpatrick@piperalderman.com.au and to specify the directions or relief to be sought.
3. (3)
  Order that these orders be taken out forthwith.
4. (4)
  Stand the proceedings over to 19 February 2021 before the Commercial List Judge for directions.
5. (5)
  Order that the costs of the proceedings to date be reserved.
6. (6)
  Direct that:
[4]
These are my reasons for making those orders.
[5]
The plaintiff, COLAS Australia Group Pty Ltd (“COLAS Australia”) is a wholly-owned subsidiary of COLAS Société anonyme (“COLAS SA”).
[6]
COLAS SA is a public limited company incorporated in France in 1925. COLAS SA is based in Paris and has since 1925 traded under the name, and has extensively used the trademark “COLAS” in relation to the supply of goods and services including the supply of a range of road surfacing materials and the provision of road construction and maintenance surfaces.
[7]
At all material times, COLAS SA has been the registered owner of trademarks in Australia which include the name “COLAS” and relate to goods and services relevant to road surfacing, including such matters as bituminous emulsions and paint.
[8]
By a “Technical Assistance Agreement” dated 17 November 2017, COLAS SA has licensed COLAS Australia to use these trademarks.
[9]
On 7 October 2020, COLAS Australia became aware of the fact that the first defendant, Colas Road Surfacing Pty Ltd (“Road Surfacing”) was using the name “Colas Road Surfacing” in relation to its driveway re-sealing business.
[10]
Road Surfacing was incorporated on 28 August 2020. Its sole director, secretary and shareholder is the second defendant, Mr Jamie Thistlethwaite.
[11]
Road Surfacing’s website states:
[12]
COLAS Australia, through its solicitors, wrote to Road Surfacing demanding that it cease using the “COLAS” name.
[13]
In response, on 15 October 2020, Mr Thistlethwaite sent COLAS Australia’s solicitors an email:
[14]
Despite the assurance given by Mr Thistlethwaite in this email, Road Surfacing has not yet changed its name to a name that does not use the term “Colas” and has not taken down information on its website which uses that name.
[15]
COLAS Australia contends that neither COLAS SA nor COLAS Australia has given Road Surfacing or Mr Thistlethwaite any authority to use the “Colas name”.
[16]
The evidence establishes that, since 7 October 2020, Road Surfacing has provided goods and services similar to those provided by COLAS Australia and has represented itself as being associated with COLAS Australia.
[17]
I was satisfied that there is a serious question to be tried that Road Surfacing has thereby engaging in misleading or deceptive conduct and that Mr Thistlethwaite has been knowingly concerned with that conduct.
[18]
I was also satisfied that there is a serious question to be tried that Road Surfaces passing itself off as being associated with COLAS Australia in a manner likely to mislead or deceive consumers.
[19]
I was also persuaded that, because of Mr Thistlethwaite’s unfulfilled promise to change “our company name” and the failure of the defendants to appear, the balance of convenience required me to make the orders set out above.