The decision in Titan Support Systems Inc v Nguyen provides comfort to companies after the termination of authorised dealerships when former dealers assert there is an ongoing relationship.
It’s like a bad breakup; one party tries to convince the world that it’s not over when it really is.
In this case, Mr Nguyen had been the authorised dealer in Australia of Titan Support Systems, a manufacturer and supplier of products used in powerlifting and/or weightlifting, until the termination by Titan of the dealership in October 2013.
Mr Nguyen conducted his business entirely on the internet. He used the website “titanaustralia.com.au” and during the dealership, he registered the business name “Titan Support Australia” and the domain name “titanaustralia.com.au”.
Titan alleged that following termination of the dealership, Mr Nguyen continued to trade under its name, held out to the public that he had genuine Titan equipment to sell and that he was Titan’s authorised dealer.
Titan sent letters to Mr Nguyen demanding that he cease this conduct. It was alleged by Titan that Mr Nguyen then set up a second website displaying Titan’s logo, a certificate confirming his former appointment as Titan’s Australian dealer and numerous photographs of equipment bearing Titan’s logo, including some uploaded from Titan’s website without its permission.
The claim alleged that Mr Nguyen’s conduct was capable of creating confusion in the minds of the public as to the identity of Titan’s Australian dealer and as to whether the equipment being advertised and sold by Mr Nguyen was genuine Titan equipment.
It also claimed that Mr Nguyen had sold a new weights belt carrying the logo “Titan Australia” on it which was not a genuine Titan product.
Mr Nguyen took no part in the proceedings and put forward no defence. Justice Perry granted Titan an injunction restraining Mr Nguyen from:
- holding out that he is authorised to sell any Titan brand products manufactured or supplied by Titan
- using the Business Name “Titan Australia”, “Titan Support Australia” or any other Business Name including the word “titan” or “Titan” in connection with powerlifting and weightlifting or in connection to equipment used in those sports
- displaying in any forum connected with those sports or on any product used in those sports, any logo which contains the word “titan” or “Titan”
- using the domain name “titanaustralia” or using any domain name connected to those sports or equipment used in those sports which includes the word “titan” or “Titan”
- selling or advertising for sale any product used, or intended for use in the sports with the name “titan” or “Titan” anywhere on it which has not been supplied by Titan
- using the word “titan” or “Titan” in any website connected to the sports or equipment used in those sports
without Titan’s prior written consent.
Her Honour also ordered Mr Nguyen transfer to Titan the business name “Titan Support Australia” and the domain name “titanaustralia” and if Mr Nguyen failed to do so, that the Court’s District Registrar be authorised to do so. Mr Nguyen was also ordered to delete from any website operated by him the word ““titan” and/or “Titan” and to deliver to Titan for destruction all products used in connection with the sports held by him which have the word “titan” or “Titan” on it, which weren’t supplied to him by Titan. He was also ordered to pay Titan’s costs.
The decision demonstrates the types of remedies available to companies where a previously authorised dealer continues to hold out to the public that there is an ongoing relationship with the company. There may be additional remedies available for a breach of the dealership agreement but the use of the provisions of the Australia Consumer Law can be a powerful weapon to obtain urgent orders restraining such conduct. That is especially so because the Law applies to business that may have no physical presence in Australia, where the business is conducted via the internet.