IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NO 12345 OF 2012 WILD TRAVEL PTY LTD ACN 123 456 789 APPLICANT COWBOYS PTY LTD ACN 101 112131 FIRST RESPONDENT RICHARD WILD SECOND RESPONDENT STATEMENT OF CLAIM 1. The Applicant is and was at all material times a company incorporated under the Corporations Act and is entitled to sue and be sued in its corporate name and style. 2. The First Respondent is a web site designer and internet based supplier of services and advertising space to customers and is and was at all material times: a. a company incorporated under the Corporations Act b. a trading corporation within the meaning of the Trade Practices Act 1974. 3. The Second Respondent is and was at all material times the sole Director, Secretary and shareholder of the First Respondent. 4. The Applicant is the registered owner of Australian registered trade marks ("Applicant's trademarks"): Registered Trademark Description Lodgement Date Goods & Services 926573 Word: wild travel Image: backpacker 12345 Word: wild travel global wide Image: globe and footprints 67892 Word: wild travel adventures Image: backpacker July 2000 July 2005 September 2006 Class 39 Travel agenttravel arrangement Class 39 Travel arrangements Class 43 Temporary accommodation (provision of) Class 39 Travel arrangements Class 43 Temporary accommodation Filed on behalf of the Applicants Kravaths DX 123 Sydney MLC Centre Tel 61 2 9221 3109 Martin Place Fax 61 2 9385 3859 NSW Sydney 2000 Ref: 12345
5. The Applicant has since January 2000 been a supplier of services to tourists to Australia, for the provision of temporary accommodation, travel and related services. 6. The Applicant has extensively promoted the services referred to in the preceding paragraph by reference to the Applicant's trade marks. Particulars a. The Applicant is the largest backpacker retailer in Australia. The Applicant and its related companies have fifty shops that cater for backpackers throughout Australia and New Zealand; b. The Applicant registered the business name "Wild Travel" in January 2000 and has been trading as Wild Travel ever since. The Applicant is widely known and referred to as "Wild Travel"; c. Trademark 926573 is the Applicant's "mascot" and has been extensively used since its registration; d. The Applicant's trademarks have been used extensively by the Applicant in every aspect of the business, appearing on the shops in light boxes and as signage, on uniforms, ticket wallets, note pads, business pads and so on; e. The Applicant has utilised its trademarks in extensive advertising campaigns. Some of the publications advertised in include TNT (both locally and overseas), The Word and various university press and diaries. The Applicant's trademarks have also been displayed at Backpacker Expos (both locally and overseas), on promotional flyers, bags, banners and so on. The Applicant estimates $100,000 is currently spent annually on this type of advertising; f. All of the Applicant's trademarks start with the words "Wild Travel"; g. The Applicant owns websites www.wildtravel.com and www.wildtravels.com which re-direct to the same website. The Applicants trademarks appear extensively on the websites. 7. By reason of its use of its trade marks and the promotion of its services the applicant has attained a substantial reputation amongst backpackers in Australia (and abroad) for the provision of the services set out in paragraph 5 above. 8. Since at least September 2007 the First Respondent has supplied services ("the Services") to the public relating to travel arrangements, temporary accommodation, travel and services available to tourists in Australia. 9. In about July 2009 the First Respondent registered and used the following domain name with Melbourne IT www.wildtravel.com.au ("the website"). 10. A logo ("the Logo") consisting of the words "Wild Travel" and a depiction of a backpacker appears in the top left hand side of each page of the website. 11. The Logo is substantially identical with or deceptively similar to Applicants registered trademark 926573. 12. The Logo has been applied in relation to services in respect of which the Applicant's trade mark 926573 has been registered. 13. By reason of the First Respondent's use of the Logo, the First Respondent has infringed the registered trade mark 926573. 14. The First Respondent has, since a date unknown to the Applicant but at least since July 2009 used the Logo in the course of trade and commerce to supply the Services. 15. In using the Logo, the First Respondent has represented to consumers, in trade and
commerce, that it: a. has the sponsorship and approval of the Applicant; b. is affiliated with the Applicant; c. supplies the services supplied by the Applicant; and/or d. has the approval of the Applicant; 16. In using the Logo the First Respondent has engaged in conduct that is misleading and deceptive or is likely to mislead or deceive in that: a. The First Respondent does not have the sponsorship and approval of the Applicant; b. The First Respondent is not affiliated with the Applicant; c. The First Respondent does not supply the services supplied by the Applicant; d. The First Respondent does not have the approval of the Applicant. 17. By reason of the matters pleaded in paragraphs 14-16, the First Respondent has: a. engaged in conduct in contravention of sections 52 of the Trade Practices Act, 1974; and b. passed off its services as the services of the Applicant. 18. The conduct of the First Respondent pleaded in paragraphs 9-17 has been engaged in by the Second Respondent. 19. In the circumstances pleaded in paragraph 18, the Second Respondent has aided, abetted, counselled and procured; and been directly or indirectly knowingly concerned in: a. contravention of s 120 Trade Marks Act 1995 by the First Respondent as pleaded in paragraphs 8 to 13 above and b. contravention of s.52 of the Trade Practices Act by the First Respondent as pleaded in paragraphs 14-17 above. 20. By reason of the matters pleaded above the Applicant has suffered loss and damage within the meaning of s.82 of the Trade Practice Act and is entitled to damages under s.126 of the Trade Marks Act 1995. Particulars Particulars will be provided following discovery AND THE APPLICANT CLAIMS THE RELIEF SET OUT IN THE APPLICATION [You have not been provided with the application] KRAVATHS, SOLICITORS Date: 17 April 2012 [Legal Profession Act certification]
IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NO 12345 OF 2012 WILD TRAVEL PTY LTD (ACN 123 456 789) APPLICANT COWBOYS PTY LTD (ACN 101 112 131) FIRST RESPONDENT RICHARD WILD SECOND RESPONDENT DEFENCE 1. The respondents admit the allegations contained in paragraph 1 of the Statement of 2. In relation to the allegations contained in paragraph 2 of the Statement of Claim, the respondents: a. admit that, at all material times, the first respondent has been a company incorporated under the Corporations Act 2001 and a trading corporation within the meaning of the Trade Practices Act; b. say that the first respondent has supplied travel services to adventure travellers; c. otherwise deny the allegations. 3. The respondents admit the allegations contained in paragraph 3 of the Statement of 4. The respondents do not admit the allegations contained in paragraph 4 of the Statement of 5. The respondents do not admit the allegations contained in paragraph 5 of the Statement of 6. The respondents do not admit the allegations contained in paragraph 6 of the Statement of 7. The respondents do not admit the allegations contained in paragraph 7 of the Statement of Filed on behalf of the First Respondents MacMahons DX 163 Sydney MLC Centre Tel 61 2 9221 5626 Martin Place Fax 61 2 9385 8976 NSW Sydney 2000
8. In answer to the allegations contained in paragraph 8 of the Statement of Claim, the respondents: a. say that, since September 2007, the first respondent has marketed travel packages to adventure travellers in Australia, inter alia, under or by reference to the name "Wild Travels"; b. say that since July 2009, the first respondent has marketed the services referred to in paragraph (a) by way of, inter alia, a website using the domain name www.wildtravels.com.au; c. otherwise deny the allegations. 9. The respondents admit the allegations contained in paragraph 9 of the Statement of 10. The respondents admit the allegations contained in paragraph 10 of the Statement of 11. The respondents do not admit the allegations contained in paragraph 11 of the Statement of 12. The respondents do not admit the allegations contained in paragraph 12 of the Statement of 13. The Respondents deny the allegations contained in paragraph 13 of the Statement of 14. In answer to the allegations contained in paragraph 14 of the Statement of Claim, the respondents; a. say that, since July 2009, the First Respondent has marketed travel packages to adventure travellers in Australia, inter alia, using the logo; b. otherwise deny the allegations. 15. The respondents deny the allegations contained in paragraph 15 of the Statement of 16. The respondents deny the allegations contained in paragraph 16 of the Statement of 17. The respondents deny the allegations contained in paragraph 17 of the Statement of 18. In answer to the allegations contained in paragraph 18 of the Statement of Claim, the respondents: a. Admit that, at all material times, the second respondent has been the sole director, secretary and shareholder of the first respondent; b. Otherwise do not admit the allegations. 19. The respondents deny the allegations contained in paragraph 19 of the Statement of 20. The Respondents deny the allegations contained in paragraph 20 of the Statement of
21. Further, in answer to the whole of the Statement of Claim, the Respondents say: a. Since 1 September 2007, the second respondent has conducted a business providing travel services to the public under the name "Wild Travels"; b. The second respondent has a substantial reputation in relation to travel services under the name "Wild Travels"; c. The name "Wild Travel" is substantially identical or deceptively similar to the name and mark "Wild Travels"; d. The second respondent would obtain registration of the "Wild Travels" trade mark in his name if he were to apply for it; e. By reason of s. 122 of the Trade Marks Act 1995 and the matters pleaded in paragraphs (a)-(d) above, the respondents have not infringed any right of the Applicant to use the trade mark "Wild Travels". 22. Further, in answer to the whole of the Statement of Claim, the Respondents: a. repeat the matters alleged at paragraph 21(a)-21(d) of this Defence; b. say that the second respondent has continuously used in the course of trade the unregistered trade mark "Wild Travels" in relation to providing travel services to the public from a time before the date of registration of the trade mark "Wild Travel"; c. say that by reason of s.124 of the Trade Marks Act 1995 and the matters pleaded in paragraphs (a)-(b) above, the respondents have not infringed any right of the Applicant to use the trade mark "Wild Travel". 23. Further, in answer to the whole of the Statement of Claim, the Respondents say: a. that the respondents wrote to the applicant in July 2009 informing it of the pending registration of the domain name www.wildtravels.com.au and also informed the applicant that unless it objected at the time, the respondents would proceed with the registration; b. That the applicants did not reply to the respondents' letter; c. That the applicant has acquiesced in the registration and use of the domain name in respect of the website. Dated: Solicitor for the Respondents
IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NO 12345 OF 2012 WILD TRAVEL PTY LTD (ACN 123 456 789) APPLICANT COWBOYS PTY LTD (ACN 101 112 131) FIRST RESPONDENT RICHARD WILD SECOND RESPONDENT SUBPOENA To the First Respondent: THE COURT ORDERS that you shall attend and produce this subpoena and the documents and things described in the Schedule: (a) before the Court (b) at Queens Square, Sydney (c) on 10 May 2012 at 4.30pm SCHEDULE 1. All files, file notes, correspondence, memoranda, letters, advertisements, articles, relating to the use of the trade mark "Wild Travels" prior to March 2008. 2. All financial documentation of the First Respondent including taxation returns, cash books, bank statements, cheque books and deposit books. 3. All registration forms and associated documentation used by the First Respondent in April 2008 to register the domain name with Melbourne IT www.wildtravel.com.au. [NOTE: these items have not been attached to your brief] DATED: 7 May 2012. Filed on behalf of the Applicants Kravaths DX 123 Sydney MLC Centre Tel 61 2 9221 3109 Martin Place Fax 61 2 9385 3859 NSW Sydney 2000 Ref: 12345
IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NO 12345 OF 2012 WILD TRAVEL PTY LTD (ACN 123 456 789) APPLICANT COWBOYS PTY LTD (ACN 101 112 131) FIRST RESPONDENT RICHARD WILD SECOND RESPONDENT NOTICE OF MOTION The abovenamed First Respondent will at 4.30 pm on 10 May 2012 at Law Courts Building, Queens Square, Sydney move the Court for orders that: 1. The subpoena served upon the First Respondent dated 7 May 2012 be set aside. 2. Costs. DATED: 8 May 2012 Solicitor for the First Respondent Filed on behalf of the First Respondents MacMahons DX 163 Sydney MLC Centre Tel 61 2 9221 5626 Martin Place Fax 61 2 9385 8976 NSW Sydney 2000