Chanel Limited v Donoghue - [2008] FCA 1643

FEDERAL COURT OF AUSTRALIA
Chanel Limited v Donoghue [2008] FCA 1643
CHANEL LIMITED v PETER DONOGHUE
VID 722 of 2008
GORDON J
31 OCTOBER 2008
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 722 of 2008

BETWEEN:

CHANEL LIMITED
Applicant

AND:

PETER DONOGHUE
Respondent

JUDGE:

GORDON J

DATE OF ORDER:

31 OCTOBER 2008

WHERE MADE:

MELBOURNE

THE COURT DECLARES THAT:
1.By his importation into Australia on or before 4 August 2008 of 92 pairs of sunglasses each bearing one or more of the following Australian registered Trade Marks:
1.Australian Registered Trade Mark No. 281276 for CHANEL in class 16;
2.Australian Registered Trade Mark No. 525736 for CHANEL in class 9;
3.Australian Registered Trade Mark No. 525737 for:

in class 9;
4.Australian Registered Trade Mark No. 852545 for CHANEL in classes 9, 21 and 28;
5.Australian Registered Trade Mark No. 852546 for:

in classes 9, 21 and 28; and
6.Australian Registered Trade Mark No. 1011606 for:

in classes 3, 9 and 14,

(together referred to as the “Chanel Trade Marks”) without the licence or authority of the Applicant, the Respondent has infringed the Chanel Trade Marks and each of them.

THE COURT ORDERS THAT:
2.The Respondent be permanently restrained, whether by himself, his employees, or agents or otherwise howsoever, from infringing any of the Chanel Trade Marks and in particular from using the Chanel Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical with or deceptively similar to any one or more of the Chanel Trade Marks in the course of trade on or in relation to:
(a)any of the goods in respect of which the Chanel Trade Marks are registered (“the Chanel registered goods”);
(b)goods of the same description as any of the Chanel registered goods;
(c)services that are closely related to any of the Chanel registered goods

not manufactured or provided by or under the licence or authority of the Applicant or otherwise procuring or inducing any other person to do any of the acts specified in this order.
3.The goods seized by the Australian Customs Service (“Customs”) pursuant to a Notice of Objection lodged by the Applicant under s 132 of the Trade Marks Act 1995 (Cth), and which are the subject of and referred to in the Notice of Seizure to Objector dated 4 August 2008 and bearing the Customs reference number 2008/024047 sent to the Applicant’s agent by a delegate of the Chief Executive Officer of Customs in which the Respondent is identified as the designated owner of such seized goods, be forfeited to the Commonwealth and disposed of as the Chief Executive Officer of Customs directs.
4.The Respondent pay the Applicant’s costs of the proceeding.
5.The proceeding be discontinued subject to the Applicant having liberty to apply to reinstate the proceeding limited to the question of quantum.

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

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

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: [2008] FCA 1643
Decision Date: 31 October 2008

CaseChat Overview and Summary

Chanel Limited, an entity with interests in the trade mark "CHANEL" across various goods and services, filed a proceeding against Donoghue in the Federal Court of Australia. The dispute centred around the alleged infringement of Chanel's trade marks by Donoghue, specifically through the use of marks or devices that were substantially identical or deceptively similar to the Chanel trade marks in relation to certain goods and services. Chanel sought relief in the form of permanent injunctive relief, forfeiture of goods, and an award of costs.

The court was required to determine whether Donoghue had indeed infringed Chanel's trade marks, and if so, what relief should be granted to Chanel. This involved examining the distinctiveness of the Chanel trade marks, the similarity between the marks in question, and whether Donoghue's use of those marks caused confusion or deception among consumers. The court also needed to consider the appropriate remedy in light of the infringement and the statutory provisions available under the Trade Marks Act 1995.

The court found in favour of Chanel, determining that Donoghue had indeed infringed the Chanel trade marks. The court noted the distinctive nature of the Chanel trade marks and concluded that Donoghue's use of similar marks led to the likelihood of confusion among consumers. The court further held that the relief sought by Chanel was appropriate and warranted under the circumstances. Consequently, the court ordered permanent injunctive relief, the forfeiture of goods to the Commonwealth, and an award of costs to Chanel.

In conclusion, the Federal Court of Australia granted Chanel the relief it sought, restraining Donoghue from further infringement of the Chanel trade marks. The seized goods were forfeited to the Commonwealth, and Donoghue was ordered to pay Chanel's costs of the proceeding. The proceeding was subsequently discontinued, with Chanel retaining the right to apply to reinstate the proceeding for the limited purpose of determining the quantum of damages.

Orders

Orders of the court

2. The Respondent be permanently restrained, whether by himself, his employees, or agents or otherwise howsoever, from infringing any of the Chanel Trade Marks and in particular from using the Chanel Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical with or deceptively similar to any one or more of the Chanel Trade Marks in the course of trade on or in relation to:

(a) any of the goods in respect of which the Chanel Trade Marks are registered (“the Chanel registered goods”);

(b) goods of the same description as any of the Chanel registered goods;

not manufactured or provided by or under the licence or authority of the Applicant or otherwise procuring or inducing any other person to do any of the acts specified in this order.

3. The goods seized by the Australian Customs Service (“Customs”) pursuant to a Notice of Objection lodged by the Applicant under s 132 of the Trade Marks Act 1995 (Cth), and which are the subject of and referred to in the Notice of Seizure to Objector dated 4 August 2008 and bearing the Customs reference number 2008/024047 sent to the Applicant’s agent by a delegate of the Chief Executive Officer of Customs in which the Respondent is identified as the designated owner of such seized goods, be forfeited to the Commonwealth and disposed of as the Chief Executive Officer of Customs directs.

4. The Respondent pay the Applicant’s costs of the proceeding.

5. The proceeding be discontinued subject to the Applicant having liberty to apply to reinstate the proceeding limited to the question of quantum.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

GORDON J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: GORDON J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 722 of 2008

BETWEEN:	CHANEL LIMITED Applicant
AND:	PETER DONOGHUE Respondent

JUDGE:	GORDON J
DATE OF ORDER:	31 OCTOBER 2008
WHERE MADE:	MELBOURNE