You’ve Got The Power! (To Rebaptise an Infringer)

Last week, in an undefended trade mark infringement proceeding¹, the Federal Court of Australia made novel Orders. These Orders permit brand owners to themselves undertake certain actions in seeking to obliterate the infringing sign (and take the instrument of fraud from the hands of an infringer).

Proceeding

The proceeding concerned a failed aphantasic Internet scam to embezzle close to AU$11 million in bank funds from CARGILL group of companies.

In furtherance of the scam, the respondents adopted the sign ‘cargiii² / CARGILL‘ as their online and corporate identity by registering the domain name <cargiii.com>, incorporating an entity under the company name Cargill Financial Services International Pty Ltd, and by opening an associated bank account under that name. Fraudulent payment requests impersonating the applicants were sent by the respondents to the bank. The scam was uncovered and sabotaged by the bank in time.

The applicants sued for an infringement of their registered trade marks CARGILL and for contraventions of the Australian Consumer Law (which proscribe misleading or deceptive conduct). The respondents did not take any active steps in the proceeding.

The Court ruled in the favour of the applicants and issued standard declarations and injunctions.

Given the complete lack of engagement and compliance with the interlocutory Orders by the respondents, the Court also made additional Orders permitting the applicants’ legal representative to change the name of the respondent company from Cargill Financial Services International Pty Ltd to 674795754 Pty Ltd with ASIC. These are novel Orders made by the Court for the first time.

It is unclear whether in the present proceeding the applicants had sought a specific Order to have the infringing domain name <cargiii.com> cancelled or transferred to them, as no such Order was made.

Key Takeaways

The responsibility of ensuring that every instance of trade mark infringement has been eradicated by an infringer falls on the brand owners. This process is often drawn-out, inefficient, frustrating, and costly for the brand owner as the passive party. Whilst these additional Orders further shift some of the compliance costs onto the brand owners themselves, they crucially allow trade mark owners greater control over the enforcement process.

Otherwise, in cases of intellectual property infringement, it is best practice for the rights’ owner to address all infringing indicia (business names, domain names, company names, marketing collateral, social media accounts, etc.). As part of their obligations under the Uniform Domain Name Dispute Resolution Policy, all ICANN accredited domain name registrars undertake to cancel, transfer or otherwise make changes to domain name registrations upon receipt of a Court Order requiring such action.

Footnotes

1. Cargill, Incorporated v Cargill Financial Services International Pty Ltd [2024] FCA 604.
2. Capitalising the two last letters in the word ‘cargiii‘ creates an optical illusion (= cargiII). This way the domain name <cargiii.com> appears as <cargiII.com> on business communications.