A W Faber-Castell v FBA Imports

IN THE FEDERAL COURT OF AUSTRALIA
NOT FOR GENERAL
DISTRIBUTION

VICTORIA DISTRICT REGISTRY

VG 696 of 1997

BETWEEN:

A W FABER-CASTELL
APPLICANT

AND:

FBA IMPORTS
RESPONDENT

JUDGE:

HEEREY J

DATE:

16 DECEMBER 1997

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

I am satisfied this is an appropriate case for an interlocutory injunction. There is no dispute that these pens were a unique product on the market for some four years and on the face of the material at the moment there has been a fairly blatant copying of them. The suggested attack on the validity of the shape mark seems at the moment not much more than speculation and in any event there is strong evidence of passing off and breach of copyright. The respondents went into this activity with their eyes open. It is not an attractive argument for them to say that most of the damage has been done and there is only a relatively small number of products left.

By the same token the respondents cannot complain of great hardship in being injuncted pending trial. The offer to keep an account of profits is, in my opinion, not adequate to protect the applicant's interests in a case of this nature when we are dealing with products which, I infer, are relatively cheap items sold by retail. Also intangible factors such as loss of reputation would be difficult to prove.

There will be an injunction in terms of the draft order. I am prepared to make an order in those terms but I suggest the applicants may wish to add paragraphs which specify more clearly the actual conduct which is to be enjoined.

Costs will be reserved.

I certify that this and the preceding page are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey

Associate:

Dated: 16 December 1997

Counsel for the Applicant: G C McGowan

Solicitor for the Applicant: Davies Collison Cave

Counsel for the Respondent: J G Samargas

Solicitor for the Respondent: Pearsons

Date of Hearing: 16 December 1997

Date of Judgment: 16 December 1997

CaseChat Overview and Summary

In the Federal Court of Australia, A W Faber-Castell, the applicant, filed a lawsuit against FBA Imports, the respondent, to seek relief from alleged infringement of their intellectual property rights. The applicant claimed that the respondent had been manufacturing and selling pens that closely resembled their unique product design, which had been on the market for four years. The applicant also alleged that the respondent's actions constituted passing off and a breach of copyright. The matter was heard by Justice Heerey, who was required to determine whether an interlocutory injunction should be granted to the applicant to prevent the respondent from continuing their allegedly infringing activities.

Justice Heerey found that there was no dispute that the respondent's pens were a blatant copy of the applicant's unique product design, and that the respondent had gone into the activity with their eyes open. The judge also found that the applicant had a strong case for passing off and copyright infringement. He noted that the suggested attack on the validity of the shape mark was speculative, and that there was strong evidence of passing off and breach of copyright. Additionally, the judge found that the applicant would suffer significant damage if the respondent's activities were not stopped immediately. The judge also considered the respondent's argument that most of the damage had already been done, and that there was only a relatively small number of products left. However, he found that this argument was not compelling, and that the applicant's interests would be protected by an interlocutory injunction.

Justice Heerey concluded that the applicant was entitled to an interlocutory injunction to prevent the respondent from continuing their allegedly infringing activities. He found that the applicant would suffer significant damage if the injunction was not granted, and that the respondent would not suffer great hardship as a result of the injunction. The judge also found that the applicant's offer to keep an account of profits was not adequate to protect their interests in this case. The judge suggested that the applicant's lawyers may wish to add paragraphs to the draft order to specify more clearly the actual conduct that was to be enjoined. Costs were reserved.

In summary, Justice Heerey granted the applicant's application for an interlocutory injunction to prevent the respondent from continuing their allegedly infringing activities. The judge found that the applicant had a strong case for passing off and copyright infringement, and that the respondent's activities had caused significant damage to the applicant's business. The judge also found that the applicant's offer to keep an account of profits was not adequate to protect their interests, and that the respondent would not suffer great hardship as a result of the injunction.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established

IN THE FEDERAL COURT OF AUSTRALIA	NOT FOR GENERAL DISTRIBUTION
VICTORIA DISTRICT REGISTRY	VG 696 of 1997

BETWEEN:	A W FABER-CASTELL APPLICANT
AND:	FBA IMPORTS RESPONDENT

JUDGE:	HEEREY J
DATE:	16 DECEMBER 1997
PLACE:	MELBOURNE

Counsel for the Applicant:	G C McGowan
Solicitor for the Applicant:	Davies Collison Cave
Counsel for the Respondent:	J G Samargas
Solicitor for the Respondent:	Pearsons
Date of Hearing:	16 December 1997
Date of Judgment:	16 December 1997