Caterpillar Inc v Sun Forward Pty Ltd - [1996] FCA 983

CATCHWORDS

SUMMARY JUDGMENT - application for summary judgment under O 20 r 1 in respect of the applicants’ claims against the respondent for infringement of its trade mark in respect of Caterpillar “Logger” boots; infringement of its copyright in a bulldozer device stamped on the heel of the boots; passing off of the respondent’s “GAT-TANK” footwear for Caterpillar footwear and misleading and deceptive conduct.

SUMMARY JUDGMENT - trade mark infringement - inappropriate to grant application for summary judgment having regard to factual conflict as to origin of boots the subject of complaint which is not able to be resolved on the affidavit material and complex questions of construction of Trade Marks Act 1995 (Cth).

SUMMARY JUDGMENT - copyright infringement - whether the respondent had the requisite knowledge, for the purposes of s 37 the Copyright Act 1968 (Cth), that importation into Australia for the purpose of trade of Caterpillar boots bearing the applicants’ bulldozer device would infringe the applicants’ copyright.

SUMMARY JUDGMENT - passing off - applicants establish reputation in words “CAT” and “Caterpillar” as applied to footwear - whether respondent’s “GAT-TANK” footwear likely to be associated with the applicants’ “CAT” footwear - clear inference that similar get-up adopted deliberately to falsely create impression “GAT” shoe associated with the applicants’ footwear - registration of “GAT-TANK” as a trade mark no bar to a claim of passing off.

SUMMARY JUDGMENT - approach to be taken by the Court - text of O 20 r 1 not to be fettered by restrictions applicable to traditional summary judgment rules - relevance of case management system provided for by O 10 - O 20 r 1 not an alternative to trial, but rather an expeditious means of resolving litigation where an applicant can clearly demonstrate there is no real defence to the claims made by it - whether appropriate for Court to give summary judgment in respect of part of a case, when other causes of action are only suitable to be resolved by trial.

Federal Court Rules - O 10, O 20 r 1
Copyright Act 1968 (Cth) - s 37
Trade Marks Act 1995 (Cth) - ss 120, 123
Trade Practices Act 1974 (Cth) - ss 52, 53

Cases Considered

Australian Woollen Mill Ltd v F S Walton & Co Ltd (1937) 58 CLR 641
Bell v Clare (1989) 23 FCR 274
Burswood Management Ltd v Burswood Casino Motel/Hotel Pty Ltd (1985) 7 FCR 186
Central Equity Ltd v Central Corporation Pty Ltd (1995) 17 ATPR 41-443
Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 12 FCR 375
Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302
Erven Warnink Besloten Vennootschap v J Townend & Sons (Hull) Ltd [1979] AC 731
Fancourt v Mercantile Credits Ltd (1983) 154 CLR 87
Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388
Milpurrurru v Indofurn Pty Ltd (1994) 54 FCR 240

CATERPILLAR INC and DESERT STORM MANAGEMENT PROPRIETARY LIMITED v SUN FORWARD PTY LTD
VG 185 OF…

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: [1996] FCA 983
Decision Date: 8 NOVEMBER 1996

CaseChat Overview and Summary

The case of Caterpillar Inc v Sun Forward Pty Ltd was heard by Drummond J in the Federal Court of Australia. The applicants, Caterpillar Inc and Desert Storm Management Proprietary Limited, sought final judgment against the respondent, Sun Forward Pty Ltd, for alleged trade mark infringement, copyright infringement, passing off, and misleading and deceptive conduct under the Trade Practices Act 1974 (Cth). The applicants sought summary judgment under O 20 r 1 of the Federal Court Rules.

The court considered the appropriate approach to an application under O 20 r 1, noting that the rule was not subject to the restrictions applicable to traditional summary judgment rules. The court must focus on the real issues in dispute and endeavour to ensure the most expeditious and economical disposition of the case. The court found that the applicants were not entitled to summary judgment in respect of trade mark infringement due to a factual conflict that could not be resolved on the affidavit material. However, the court found that the applicants were entitled to summary judgment in respect of copyright infringement, as the respondent had the requisite knowledge that its importation of Caterpillar boots bearing the applicants' bulldozer device would infringe their copyright. The court also found that the respondent's sale of "GAT-TANK" footwear for Caterpillar footwear amounted to passing off, and that this conduct also constituted misleading and deceptive conduct under the Trade Practices Act.

In summary, the court found that the applicants were entitled to judgment in respect of copyright infringement, passing off, and misleading and deceptive conduct, but not in respect of trade mark infringement. The applicants agreed to discontinue their claims for relief in respect of trade mark infringement and under the Trade Practices Act in respect of the sale by the respondent of the "Logger" boots, as a condition of the grant of relief in respect of their claims based on breach of copyright and passing off. The court ordered that the respondent deliver up the "GAT-TANK" footwear unless it made an application to the Court and showed cause why such orders should not be made.

Orders