Australian Olympic Committee Inc. Aussie Made T-Shirt Shop

[1992] FCA 452

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LIMITED	DISTRIBUTION	,
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Injunctive relief - injunction to restram sale or offering of	$,.
sale goods bearing the Olympic symbol - copyright - monopoly	I
of design - undertakings - agreement for delivery up of any
infringing goods - innocent infringer - no demand prior to	l:
institution of action - institution of proceedings in another	!
State - no order as to costs.	i.-
Olvmpic Insisnia Protection Act 1986
Australian Olvm~ic	Committee Inc. v. Aussie Made T-shirt Shoe
NG 198/92

Cooper 3 . . Brisbane, 19 June, 1992

IN TkIE FEDERAL COURT OF AIJSTRALIA

GENERAL DIVISIOU

BETWEEN:

AIJSTRALIAN OLYMPIC COMMITTEE INC

Apolicant

AND:

AUSSIE MADE T-SHIRT SI1OP

Respondent

MINUTES OF ORDER

JUDGE MAKING ORDER:	Cooper J .
WHERE MADE:	Brisbane
DATE OF ORDER:	19 June, 1992
THE COURT ORDERS :

UPON Goldwealth Pty. Ltd. A.C.N. 011 020 956 (hereafter

"Goldwealth") which trades under the name Aussie Made T-shirt Shop by its director Susan Elizabeth Litherland whose signature appears below undertaking that it will not, save with the Applicant's permission :

(a)

sell, offer for sale, distribute, advertise or exhibit in any manner any garments depicting or containing the Olympic Symbol being the Olympic

Symbol as defined in the Schedule to the Olvmpic

Insisnia Protection Act 1987 (hereafter "the Olympic

Symbol") or any fraudulent or obvious imitation of the Olympic Symbol.

(b)

(i)	represent that its goods are the goods of and/or are provided by and/or approved by and/or connected and/or associated and/or have the sponsorship and/or approval of the Applicant;
(li)	represent that it has the sponsorship and/or approval of and/or is affiliated and/or connected with the Applicant;
(iii)	engage in conduct that is misleading and/or deceptive or that is likely to mislead and/or decelve; and
(iv)	use in any manner whatsoever the Olympic Symbol, designations "Barcelona 92", "Olympic XXV" , the official mascot and/or emblem of the 1992 Barcelona Olympic Games ;

(C)

(i)	pass off its goods as and for the goods of and/or provided by and/or approved by and/or connected and/or associated with the Applicant;
( ii)	pass off its trade or business as and for a trade or business of and/or approved by and/or connected and/or associated with the Applicant; or
(iii)	use in any manner whatsoever the Olympic Symbol, designations "Barcelona 92", "Olympic XXV", official mascot and/or emblem of the Barcelona 1992 Olympic Games.

THE COURT ORDERS:

1.        By Consent:

(a)	that Goldwealth deliver up to the Applicant, its solicitors, or such person as may be nominated by it at Brisbane (or such other place as may be agreed) on or before 5.00 p.m. on Friday, 19 June, 1992 all articles in its possession which display the Olympic Symbol, "Barcelona 92 " , "Olympic XXV" and/or the official mascot and/or emblem of the Barcelona 1992 Olympic Games;
(b)	that the Application be dismissed; and

2.        that there be no order as to costs.

NOTE : 

Settlement and entry of orders is dealt with in

Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

GENERAL DIVISION

BETWEEN :

AUSTRALIAN OLYMPIC COMMITTEE INC

ADDlicant

AND:

AUSSIE MADE T-SHIRT SHOP

CORAM:	Cooper J	.
PLACE :	Brisbane

DATE 19 June, 1992

EX TEMPORE REASONS FOR JUDGMENT

This application concerns proceedings instituted by the Australian Olympic Committee Incorporated seeking injunctive relief in relation to restraining the sale or offering for sale by the respondent of goods bearing the Olympic symbol.

The applicant is the owner of the copyright in, and has a monopoly of the design over the Olympic symbol, and such copyright is protected by the Olvm~ic Insisnia Protection Act, 1986. The respondent is the business name of a company, Goldwealth Pty. Ltd., which carries on business at the Gold Coast and other places selling T-shirts and associated products. On 3 June, 1992 a Mr. Bevan, who 1s associated with the marketing agent of the applicant, purchased from the respondent's store at the Gold Coast a pair of shorts, which I bore the Olympic symbol.

On 9 June, 1992 he reported that matter to the applicant, and steps were taken by the applicant at that time to instruct solicitors to seek injunctive relief. The business name, "Aussie Made T-shirt Shop", is not registered, and therefore it was not possible on the material to ascertain the identity of the person conducting the shop. An application was brought ex par te at 3.45pm on 11 June, 1992 before Mr. Justice Ryan in Melbourne seeking interim relief.

An affidavit has been filed by Susan Elizabeth Litherland, a director of Goldwealth Pty. Ltd. She deposes that the goods in question were purchased from a wholesaler in Sydney as part of a general consignment of goods for sale in the respondent's shops. She swears that the bulk of the goods which bore the Olympic symbol were, to her recollection, returned in April of 1992, and that there were few in number in the store in recent weeks, and certainly at the time the

respondent first became aware that proceedings had been	instituted.
The respondent has given to the Court undertakings and agreed to an order for delivery up of any infringing goods which remain in its possession in satisfaction of the applicant's claims in the proceedings.

!Chei respondent submits that no order for costs ought

to be made, because the proceedings were not denlonstrably urgent, and not of such a nature that the giving of some prior warning, or seeking of an undertaking, was unnecessary. It is submitted on behalf of the applicant, that having regard to the closeness of the Olympic Games and the difficulties in establishing the identity of the persons operating the store, it was appropriate to proceed ex parte, and that costs ought to be awarded against the respondent.

In her affidavit, Mrs. Litherland indicates that if warning had been given any offending material would have been withdrawn from sale, and, in the first instance at least, returned to the wholesaler. It is clear from that affidavit - and it has not been challenged - that the case put forward by the respondent is that it was an innocent infringer of the copyright.

In my view, the applicant, or its marketing agent,

was aware of the location of the shop, and was aware that

proceedings were served upon persons in that shop, and when	there were persons conducting a business in that shop. The
proceedings were received, steps were immediately taken to stop any infringement and offer the undertakings which have been given this morning, which undertakings are substantially in accordance with the injunctive relief sought by the applicant in these proceedings.

~urkher, the respondent is prepared to agree to an

order for delivery up of any goods which remain in its possession which may infringe the applicant's rights in the symbol.

There is nothing in the material which persuades me that a demand prior to the institution of the action could not or ought not to have been made. The material satisfies me that immediately upon becoming aware of the rights of the applicant in relation to its mark, the respondent was prepared to desist from any possible infringement and assist the applicant in the matter. The respondent has disclosed the source of the supply to it of the offending material, which disclosure has placed the applicant in a position to exercise its rights against the ultimate supplier.

There was, in my view, no reason not to take an initial step without filing these proceedings, namely, the step of seeking an undertaking before incurring legal costs by instituting proceedings in Victoria. I am not necessarily

critical of the instituting of the proceedings in that State,	as I see no increase in costs at this stage by instituting
there.
Having regard to all of the circumstances, I propose to make no order for costs in relation to the action. The parties are agreed as to the terms of undertakings to be given by the respondent and the terms of a consent order. The parties are a d o agreed that the proceedings shall be finally determined by the giving of those undertaking8 and that there will be no further proceedings taken in relation to the claims for damages. The application, so far as the damages and other relief claimed is concerned, will be dismissed. The formal orders and undertakings are to be reduced to writing by the parties this morning to be signed by the respondent by its director and delivered to my chambers. The orders can be initialled by counsel. I will initial the document and place it on the file.

I certify that this and the four ( 4 )

preceding pages are a true copy of the reasons for judgment herein of the Honourable Mr. Justice Cooper.

Date: 19 June, 1992

~ w l . ~ l[ . I J a m u .

Associate

Counsel for applicant:  Ms. D. Skennar

Solicitors for applicant:	Gadens Ridgeway
Counsel for respondent:	Mr. 3. Logan
Solicitors for respondent:	Holloway Jenkins