Chanel Limited v Design Elegance Pty Ltd (ACN 083 361 755)

[2005] FCA 1664

FEDERAL COURT OF AUSTRALIA

Chanel Limited v Design Elegance Pty Ltd (ACN 083 361 755) [2005] FCA 1664

Trade Practices Act 1974 (Cth), s 52, s 53
Fair Trading Act 1989 (Qld), s 38, s 40

CHANEL LIMITED AND CHANEL AUSTRALIA PTY LIMITED (ACN 000 012 153) v DESIGN ELEGANCE PTY LTD (ACN 083 361 755) AND BARBARA MASKIELL
NSD 1004 OF 2005

GYLES J
18 NOVEMBER 2005
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1004 OF 2005

BETWEEN:

CHANEL LIMITED
FIRST APPLICANT

CHANEL AUSTRALIA PTY LIMITED (ACN 000 012 153)
SECOND APPLICANT

AND:

DESIGN ELEGANCE PTY LTD (ACN 083 361 755)
FIRST RESPONDENT

BARBARA MASKIELL
SECOND RESPONDENT

JUDGE:

GYLES J

DATE OF ORDER:

18 NOVEMBER 2005

WHERE MADE:

SYDNEY

THE COURT DECLARES THAT:

1.The First Respondent has infringed Australian registered trade marks 74368, 122296, 174921, 292821, 297157, 304615, 335147, 463755, 463758, 469762, 525736, 525737, 852545 and 852546 (together, the Chanel Trade Marks).

2.The Second Respondent has infringed the Chanel Trade Marks and/or authorised, aided, abetted, counselled or procured the infringement of the Chanel Trade Marks by the First Respondent, or acted in concert or common design with the First Respondent to infringe the Chanel Trade Marks.

3.The First Respondent has, in contravention of s 52 of the Trade Practices Act 1974 (Cth), engaged in conduct, in trade or commerce, that is misleading and deceptive or likely to mislead or deceive by selling or offering for sale goods which bear the word CHANEL or which bear the CHANEL Crossed C's Device (depicted below), which are not the goods of the Applicants.

4.The First Respondent has, in contravention of s 53 of the Trade Practices Act 1974 (Cth), in trade or commerce, in connection with the supply or possible supply of goods, made false representations by selling or offering for sale goods which bear the word CHANEL or which bear the CHANEL Crossed C's Device, which are not the goods of the Applicants.

5.The Second Respondent has, in contravention of s 38 of the Fair Trading Act 1989 (Qld), engaged in conduct, in trade or commerce, that is misleading and deceptive or likely to mislead or deceive by selling or offering for sale goods which bear the word CHANEL or which bear the CHANEL Crossed C's Device, which are not the goods of the Applicants.

6.The Second Respondent has, in contravention of s 40 of the Fair Trading Act 1989 (Qld), in trade or commerce, in connection with the supply or possible supply of goods, made false representations by selling or offering for sale goods which bear the word CHANEL or which bear the CHANEL Crossed C's Device, which are not the goods of the Applicants.

7.The Second Respondent has aided, abetted, counselled or procured, or has been, directly or indirectly, knowingly concerned in or party to, a contravention of s 52 and/or s 53 of the Trade Practices Act 1974 (Cth) by the First Respondent.

8.The First Respondent has passed off its goods as the goods of one or both of the Applicants, or as goods otherwise associated with one or both of the Applicants.

9.        The Second Respondent has:

(a)passed off her goods as the goods of one or both of the Applicants, or as goods otherwise associated with one or both of the Applicants;

(b)authorised, aided, abetted, counselled or procured, the First Respondent to pass off its goods as the goods of one or both of the Applicants or as goods associated with one or both of the Applicants; or

(c)acted in concert with or engaged in a common design with the First Respondent to pass off its goods as the goods of one or both of the Applicants, or as goods associated with one or both of the Applicants.

THE COURT ORDERS THAT:

1.Judgment be entered in favour of the Applicants against the First and Second Respondents.

2.The Respondents by themselves, their servants and agents, be restrained from infringing the Chanel Trade Marks.

3.The Respondents by themselves, their servants and agents, be restrained from making, importing, promoting, distributing, offering for sale or selling any goods or services under or by reference to:

(a)the word CHANEL;

(b)any word or name which is substantially identical with or deceptively similar to the word CHANEL;

(c)the CHANEL Crossed C's Device; or

(d)any mark which is substantially identical with or deceptively similar to the CHANEL Crossed C's Device,

without the licence of one or both of the Applicants.

4.The Respondents deliver up to the Applicants all goods in the Respondents' possession, or in the possession of any servant or agent of the Respondent, which bear:

(a)any of the Chanel Trade Marks;

(b)any mark which is substantially identical with or deceptively similar to the Chanel Trade Marks;

(c)the word CHANEL; or

(d)any word or name which is substantially identical with or deceptively similar to the word CHANEL.

5.The First and Second Respondents pay the Applicants’ damages in an amount to be determined by the Court.

6.        The First and Second Respondents pay the costs of the Applicants in this proceeding.

Note:   Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1004 OF 2005

BETWEEN:

CHANEL LIMITED
FIRST APPLICANT

CHANEL AUSTRALIA PTY LIMITED (ACN 000 012 153)
SECOND APPLICANT

AND:

DESIGN ELEGANCE PTY LTD (ACN 083 361 755)
FIRST RESPONDENT

BARBARA MASKIELL
SECOND RESPONDENT

JUDGE:	GYLES J
DATE:	18 NOVEMBER 2005
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. On 9 November 2005 I held that this was an appropriate case for the exercise of the power in O 35A of the Federal Court Rules to enter judgment.  I indicated that I needed to look more closely at the relief sought.  I have done that with the aid of written submissions from the solicitors for the applicants.  I am prepared to make declarations 1–9 (inclusive) as sought in the Short Minutes of Order.  I am prepared to make orders 10–13 (inclusive), 15 and 16 in the draft Short Minutes of Order.  I am not prepared to make order 14.

I certify that the preceding one (1) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles.

Associate:

Dated:            18 November 2005

Solicitor for the Applicants:	R Gay of Shelston IP Lawyers
Solicitor for the Respondents:	The Respondents did not appear
Date of Hearing:	9 November 2005
Date of Judgment:	18 November 2005