- The Pokémon Company International, Inc (TPCI) is a wholly owned subsidiary of Nintendo. TPCI manages the licensing and marketing of merchandise of the Pokémon franchise.
- PPL, a company unrelated to Nintendo, was incorporated on 7 December 2016 and its director registered the domain name https://pokeworld/game/ on 16 August 2022. This domain name hosted a website called “PokeWorld” (Website).
- The Website advertised a Pokémon themed game called “PokeWorld” offered by PPL and “Kotiota Studios”, an entity related to PPL and its director. The Website promoted the upcoming launch of “PokeWorld” and also the release of NFTs which would display Pokémon characters, such as the well-known “Pikachu” character.
- The Website stated that the NFTs were scheduled for release in January 2023.
- The Website also contained a “White Paper” which led to a further website that provided a high level of detail about “PokeWorld”, the NFTs and other items. The Website falsely represented that “PokeWorld” was owned and authorised by TPCI.
- PPL’s promotion of “PokeWorld” also included a Twitter account which also promoted “PokeWorld” and the NFTs. This account had approximately 13,500 followers and was not associated with TPCI. It advertised the impending release of the NFTs.
- TPCI sought an interim injunction in the Federal Court pursuant to section 234 of the Australian Consumer Law, alleging that a significant amount of consumers would be mislead or deceived that PPL, the NFTs and/or “PokeWorld” were associated with TPCI and legitimate Pokémon products.
- Was TPCI entitled to an interim injunction?
- The Court granted TPCI an interim injunction.
- The principles to be applied when seeking an interlocutory injunction, as set out in Reckitt Benckiser (Australia) Pty Limited v Procter & Gamble Australia Pty Limited  FCA 753, are:
- whether there is a prima facie case;
- whether the inconvenience or injury which the plaintiff would be likely to suffer if an injunction were refused outweighs or is outweighed by the injury the defendant would suffer if an injunction were granted. This involves an assessment of the real consequences to each party, and the public and private interests involved; and
- if the granting or refusal of interlocutory relief is going to have the practical consequences of deciding the applicant’s claims for final relief, the applicant must demonstrate a relatively strong case.
- Collier J considered that TPCI’s evidence “strongly suggested” that PPL and its director’s conduct was designed to mislead consumers and other businesses into believing that it was licensed or authorised by TPCI or Nintendo to deal with Pokémon intellectual property.
- Collier J accepted that there was a “real prospect of reputational risk” to TPCI from PPL’s conduct, that it would be difficult to quantify the number of customers who would purchase the NFTs with a mistaken belief of association and that damages would be an inadequate remedy.
“The relevant principles in Australia are those explained in Beecham Group Ltd v Bristol Laboratories Pty Ltd  HCA 1; [(1968)  HCA 1; 118 CLR 618]. This Court (Kitto, Taylor, Menzies and Owen JJ) said that on such applications the court addresses itself to two main inquiries and continued [at 622-623]:
“The first is whether the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief … The second inquiry is … whether the inconvenience or injury which the plaintiff would be likely to suffer if an injunction were refused outweighs or is outweighed by the injury which the defendant would suffer if an injunction were granted.”
By using the phrase “prima facie case”, their Honours did not mean that the plaintiff must show that it is more probable than not that at trial the plaintiff will succeed; it is sufficient that the plaintiff show a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial. That this was the sense in which the Court was referring to the notion of a prima facie case is apparent from an observation to that effect made by Kitto J in the course of argument [at 620]. With reference to the first inquiry, the Court continued, in a statement of central importance for this appeal [at 622]:
“How strong the probability needs to be depends, no doubt, upon the nature of the rights [the plaintiff] asserts and the practical consequences likely to flow from the order he seeks.“
(Collier J citing at paragraph  Gleeson J’s explanation of the High Court’s statement in Beecham)
The full text is available here: https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2022/2022fca1561
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