Intellectual Property Update - Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd (No 2)

Intellectual Property Trade Practices
Tom Cordiner Headshot
M Marcus
C Cunliffe 2
Marcus Fleming Headshot 1

[2021] FCA 783

Trade marks – appropriate form of injunctive relief consequent upon findings in principal judgment – costs – potential reduction

The parties disagreed about the form of injunctive relief (after the principal reasons for judgment were handed down) and the appropriate orders as to costs. We commented on the principal reasons in an earlier note.

In relation to the form of injunctive relief, Chevron submitted that Justice O’Callaghan had made findings in the principal reasons that extended to the proposition that advertising and offering to accept StarCard at an Ampol branded site constituted a trade mark use of STARCARD, which was not permitted by clause 14.4 of the Trade Mark Licence Agreement (TMLA) thereby necessitating a particular injunction. Justice O’Callaghan held that his principal reasons did not extend that far. Justice O’Callaghan stated that the principal reasons only dealt with Chevron’s contention that use of the phrase “StarCard accepted here” at Ampol branded petrol stations and use of “StarCard will be accepted at Ampol branded sites” in advertising are uses of STARCARD “in conjunction with” Ampol trade marks within the meaning of clause 14.4 of the TMLA.

Chevron also contended that O’Callaghan J had found that acceptance of StarCard at Ampol branded services stations constituted, or would constitute, an infringement of the Chevon marks. Justice O’Callaghan again held that he had found no such thing, and refused a form of injunction sought by Chevron to address that new claim.

His Honour also noted Chevron’s sensible agreement that any relevant injunctive relief should be delayed in its operation given the practicalities that were the subject of evidence adduced by Ampol. Our experience is that, as long as there is evidence addressing the practicality of complying with injunctive relief, the Court will be inclined to allow a respondent a reasonable (but not lengthy) time in which to achieve compliance.

On costs, notwithstanding the impression one might have from the above that Chevron won, in fact it won on a minor part of its case and his Honour concluded that Ampol should be awarded costs of the proceeding. Despite Chevon succeeding on a question involving the proper construction of clause 14.4 of the TMLA, Ampol was still awarded costs because that question did not involve the adducing of any further significant evidence and the question was of little, if any, significance in the relevant scheme of things.

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