Ahiida Pty Ltd v JB Trading Group Pty Ltd - [2016] FCCA 3146

FEDERAL CIRCUIT COURT OF AUSTRALIA

AHIIDA PTY LTD v JB TRADING GROUP PTY LTD

[2016] FCCA 3146

Catchwords:
INTELLECTUAL PROPERTY – Admitted infringement of design – damages hearing – whether compensatory damages should be paid to the applicant by the respondent – whether damages for reputational damage should be paid to the applicant by the respondent – whether additional damages should be paid to the applicant by the respondent – whether the respondent’s conduct was flagrant – no flagrancy – whether additional damages should be ordered in where no loss proved and infringement admitted – what constitutes other relevant matters – additional damages ordered.

Legislation:
Federal Circuit Court Rules 2001 (Cth), pt.27
Designs Act 2003 (Cth), ss.71,75
Copyright Act 1968 (Cth), s.115

Cases cited:
Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (in liq)(2007) 157 FCR 564
Placer (Granny Smith) Pty Ltd v Theiss Contractors Pty Ltd (2003) 196 ALR 257
Commonwealth v Amann Aviation Pty Ltd (1991) 174 CLR 64
GM Holden Ltd v Paine (2011) 281 ALR 406
Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2009) 81 IPR 378
MJA Scientifics International Pty Ltd v SC Johnson & Son Pty Ltd (1998) 43 IPR 275
Raben Footwear Pty Ltd v Polygram Records Inc (1997) 145 ALR 1
Prior v Lansdowne Press Pty Ltd [1977] VR 65
Ravenscroft v Herbert and New English Library Ltd [1980] RPC 193
Autodesk Australia Pty Ltd v Cheung (1991) 94 ALR 472
Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589
Microsoft Corporation v Ezy Loans Pty Ltd (2004) 63 IPR 54
Review Australia Pty Ltd v Innovative Lifestyles Investments Pty Ltd & Anor (2008) 166 FCR 358

Applicant:

AHIIDA PTY LTD (ACN 109 448 491)

Respondent:

JB TRADING GROUP PTY LTD (ACN 132 410 729)

File Number:

SYG 2363 of 2015

Judgment of:

Judge Emmett

Hearing date:

28 November 2016

Date of Last Submission:

28 November 2016

Delivered at:

Sydney

Delivered on:

19 December 2016

REPRESENTATION

Counsel for the Applicant:

Mr Greg Johnson

Solicitors for the Applicant:

Gestalt Law

Respondent:

No appearance by or on behalf of the Respondent

FEDERAL CIRCUIT
COURT OF AUSTRALIA AT
sydney

SYG 2363 of 2013

Ahiida Pty Ltd

(ACN 109 448 491)

Applicant

And

JB Trading Group Pty Ltd

(ACN 132 410 729)

Respondent

REASONS FOR JUDGMENT

1. Background

This is an application commenced by way of Statement of Claim filed on 3 October 2013, seeking damages for lost profit, damage to reputation, and additional damages allegedly arising out of the respondent’s infringement of the applicant’s Australian Registered Designs.
In October 2014, the applicant filed an Application seeking default judgment based on various failures by the respondent to comply with directions made by the Court. On 24 March 2015, by consent, the Court made Orders requiring the respondent to answer a Notice to Produce by 31 March 2015. The Orders agreed to by the parties provided that Judgment would be entered for the applicant and…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2016] FCCA 3146
Decision Date: 19 December 2016

CaseChat Overview and Summary

Ahiida Pty Ltd (the applicant) sought an interlocutory injunction against JB Trading Group Pty Ltd (the respondent) to restrain alleged infringement of registered designs and copyright. The dispute concerned the manufacture and sale of a particular type of mobile phone holder.

The primary legal issues before the Federal Circuit Court were whether the applicant had established a strong prima facie case of infringement of its registered designs under the *Designs Act 2003* (Cth) and its copyright under the *Copyright Act 1968* (Cth), and whether the balance of convenience favoured granting an interlocutory injunction. The court also considered whether the respondent's product was substantially similar to the applicant's registered designs, and whether the respondent had engaged in conduct that constituted copyright infringement.

Emmett J applied the principles governing the grant of interlocutory injunctions, requiring the applicant to demonstrate a serious question to be tried and that damages would not be an adequate remedy. His Honour considered the visual appearance of the respective products, comparing them against the registered designs and the requirements of substantial similarity. The court also examined the evidence of copying in relation to the copyright claim.

The court found that the applicant had not established a strong prima facie case of infringement of its registered designs, nor had it demonstrated a serious question to be tried in relation to copyright infringement. Consequently, the application for an interlocutory injunction was dismissed.

Orders