Two Men And A Truck beat Three Men & A Truck
In Two Men and A Truck Aust Pty Ltd v Three Men & A Truck Removals and Storage Pty Ltd & Anor [2008] FMCA 1333 (26 September 2008) [2008] FMCA 1333 the applicant, Two Men And A Truck Australia Pty Limited (Two Men And A Truck), has two Australian Registered Trade Marks, with a priority date of 3 April 2003 in class 39 for: “Transportation, packing and storage of goods including removalist services; transportation and storage of waste including rubbish removal; rental of storage containers”. One is word mark No. 949361 for “TWO MEN AND A TRUCK” and the other, No. 949362, comprises the following device:
On 11 May 2007 the first respondent adopted the corporate name Three Men & A Truck Removals And Storage Pty Ltd (Three Men & A Truck) and placed an advertisement in the print edition of the Sydney Yellow Pages under the name or trade mark “Three Men & A Truck Removals and Storage Pty Ltd” in the category “Furniture Removals & Storage” as well as printed, issued and used business cards with the following representation of a truck:
Two Men And A Truck alleged that, by doing so, Three Men & A Truck engaged in conduct that was misleading or deceptive or likely to mislead or deceive in contravention of s.52 of the Trade Practices Act 1974 (Cth) and made false representations in contravention of s.53(c) of the Trade Practices Act, passed off or attempted to pass off its services as having a connection with the applicant or its business and infringed the registered trade marks of the applicant under s.120 of the Trade Marks Act 1995 (Cth).
Orders were sought in relation to a second respondent, Joseph O’Leary, on the basis that he was involved in the contraventions of the Trade Practices Act, breached s.42 of the Fair Trading Act 1987 (NSW,) engaged in passing off and infringed and procured the infringement of the applicant’s Australian Trade Marks. Two Men And A Truck sought a declaration to that effect and sued for damages under s.82 of the Trade Practices Act as well as seeking declarations as to infringement of trade marks, passing off and contravention of the Fair Trading Act, orders restraining the breaches, delivery-up of material bearing the respondent’s mark and orders enforcing a previous agreement to settle the proceedings.
Held
Orders were made against Three Men & A Truck and Mr O’Leary pretty much as follows:
- Restraining them from (jointly or separately, or through their employees or agents or otherwise) selling or promoting removalist services under or by reference to the name or trade mark “Three Men & A Truck” or any name or mark incorporating the words “Three Men & A Truck”, or any other name or mark which is substantially identical with or deceptively similar to the name and mark “Two Men and A Truck”;
- Requiring them to deliver up all promotional or other materials bearing the name or mark “Three Men & A Truck”;
- Requiring them to:
- change their company name;
- deregister the domain name “threemenandatruck.com.au”.
- cancel, or transfer to Two Men and A Truck Australia Pty Limited the telephone numbers appearing in the 2008 hard copy edition of the Sydney metropolitan Yellow Pages.
- remove from the online edition of the Australian Yellow Pages located at www.yellowpages.com.au the advertisements for Three Men & A Truck/Removals and Storage Pty Ltd.
- recall from distribution all business cards and all other materials used in connection with the provision or promotion of removals and/or storage services by reference to the mark THREE MEN & A TRUCK.
- cease to use the name or mark “Three Men & A Truck” or anything similar to the applicant’s trade marks.
- pay the applicants costs.
- Authorising the Court to take such steps, perform all such acts and sign all such documents as may be required to carry those obligations into effect if the defendants fail to do so within 21 days of the orders having been made;
So what?
According to Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog, the respondents may have done better to have made a root and branch attack on the applicant’s entitlement to claim ownership of the trade mark at the centre of this dispute and the ‘reputation’ attached to it right from the get-go. While it may not offer a complete answer, [see for example: Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCA 406 (31 March 2008)(the MONSTER ENERGY case) where sufficient spill-over reputation of a particular foreign trade mark in Australia was not established] one only need conduct a quick search to establish whether there may be reasonable grounds to seek to invalidate or revoke the applicant’s registered trade marks pursuant to ss 85 – 88 of the Trade Marks Act.
Fancy that! In the USA, a corporation called Two Men And A Truck/International, Inc. owns four registered trademarks for TWO MEN AND A TRUCK in class 39 covering “moving services; namely, the provision of trucks and labor for packing, loading, delivery, and unloading of goods and driving of trucks rented by the customers”. The word mark claims a ‘first use’ date of 18 February 1988, eight years before the applicant changed its name from ‘Hornidge Couriers’.
According to its website, the USA’s “TWO MEN AND A TRUCK® started in the early 1980s (and) has grown to more than 200 locations worldwide. Brothers Brig and Jon Sorber started moving people in the Lansing (Michigan) area using an old pickup truck. They had their mom, Mary Ellen Sheets, develop a logo to put in a weekly community newspaper. That stick-men logo still rests on every truck, sign and advertisement. ”
Mom’s logo. According to its website: “the largest franchised local moving company in the nation”.
