Cody Opal (Australia) Pty Ltd v Dimasi

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Supreme Court of South Australia

(Civil)

CODY OPAL (AUSTRALIA) PTY LTD v DIMASI

Judgment of The Honourable Justice Mullighan

11 November 2004

INTELLECTUAL PROPERTY - COPYRIGHT - INFRINGEMENT

INTELLECTUAL PROPERTY - TRADE MARKS AND TRADE NAMES - INFRINGEMENT AND PASSING OFF

TRADE AND COMMERCE - TRADE AND COMMERCE GENERALLY - STATUTES RELATING TO MISLEADING OR DECEPTIVE CONDUCT IN TRADE - SOUTH AUSTRALIA

TRADE AND COMMERCE - TRADE PRACTICES AND RELATED MATTERS - CONSUMER PROTECTION - MISLEADING, DECEPTIVE OR UNCONSCIONABLE CONDUCT

Alleged infringement by defendant of plaintiff's trade mark and copyright relating to advertising signs and promotional material - alleged misleading and deceptive conduct in contravention of the Fair Trading Act 1987 (SA) and passing off by the defendant in relation to the plaintiff's opal business - plaintiff holds copyright and registered trade mark over The National Opal Collection with use of an opalized border adapted from a photograph taken on behalaf of the plaintiff - defendant registered and traded under the name The Australian Opal Collection and used the opalized border from the front cover of a book published by the plaintiff - whether use of two elevated signs by the defendant breached the plaintiff's trade mark in being substantially identical or deceptively similar to it - whether the two elevated signs were used in good faith - whether the defendant breached the plaintiff's copyright in the opalized border through reproduction - whether the defendant used the name, marks, publications and signs so as to induce customers to believe that the goods were the goods of the plaintiff - whether the conduct of the defendant in the use of its publications and signs contravenes s56 and s58(f) of the Fair Trading Act.

The two overhead signs breached the plaintiff's registered trade mark - the use of the opalized border breached the plaintiff's copyright - the use of the name, marks, publications and signs constituted misleading and deceptive conduct and passing off.

Lahore Copyright and Designs 2003, referred to.
Nationwide News Pty Ltd & Ors v Copyright Agency Limited (1996) 65 FCR 399; Wingate Marketing Ltd v Levi Strauss & Co (1994) 49 FCR 89; R & C Products Pty Limited trading as Samuel Taylor v SC Johnson & Sons Pty Limited (1993) 42 FCR 188; Dart Industries v Decor Corporation Pty Ltd (1993) 179 CLR 101; Autodesk Inc & Anor v Dyason & Ors (No 2) (1993) 176 CLR 300; Equity Access Pty Ltd v Westpac Banking Corporation & Anor (1989) 16 IPR 431; Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd & Ors (1985) 84 FLR 101; Caterpillar Loader Hire (Holdings) Pty Ltd & Ors v Caterpillar Tractor Co (1983) 48 ALR 511; Erven Warnink BV & Anor v J Townend & Sons (Hull) & Anor [1979] AC 731; British Northrop Limited & Ors v Texteam Blackburn Limited & Ors [1974] RPC 57; Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25; FH Faulding…

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Details
Case
[2004] SASC 357
Decision Date

CaseChat Overview and Summary

Cody Opal (Australia) Pty Ltd, the plaintiff, brought an action against Dimasi, the defendant, in relation to alleged infringement of the plaintiff's trade mark and copyright, as well as misleading and deceptive conduct. The plaintiff claimed that the defendant infringed its registered trade mark and copyright by using the plaintiff's opalized border design and signs, and engaged in conduct that was misleading and deceptive under the Fair Trading Act 1987 (SA). The court was required to determine whether the defendant's use of the signs and the opalized border design amounted to an infringement of the plaintiff's trade mark and copyright, and whether the defendant's conduct constituted misleading and deceptive conduct and passing off.

The court found that the defendant's use of the two elevated signs breached the plaintiff's registered trade mark, as they were substantially identical or deceptively similar. The court also found that the defendant's use of the opalized border design from the plaintiff's book constituted an infringement of the plaintiff's copyright. Furthermore, the court held that the defendant's use of the name, marks, publications, and signs constituted misleading and deceptive conduct and passing off. The court accepted the plaintiff's evidence regarding the development and operation of its business, as well as the reputation of the plaintiff and its founder, Mr Andrew Cody.

The court concluded that the plaintiff was entitled to declarations that the defendant's conduct infringed its trade mark and copyright, and that the defendant passed off its business as the plaintiff's and engaged in misleading and deceptive conduct. The court also granted injunctions to restrain the defendant from using the publications and signs in question. However, the court held that the plaintiff was not entitled to damages or an account of profits for the infringement of the trade mark or copyright, or for the contravention of the Fair Trading Act, unless and until the plaintiff proved loss or damage. The court referred the matter to a Master to determine if loss and damage to the plaintiff was established or an account of profits should be taken. The court also heard the parties as to the terms of the judgment and any consequential orders that should be made.

Orders

Orders of the court

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Background

Background to the litigation

What follows represents the findings fact which I have made based upon the evidence of the various witnesses and the many documents which were admitted into evidence. I accepted the evidence of the various witnesses, including the evidence of Mr Andrew Cody and Mr Damien Cody, who are brothers and the directors of the plaintiff, as to the development and operation of the business of the plaintiff. They control the business of the plaintiff. In the main, I also accepted the evidence of the defendant and his wife, Mrs Dimasi, but not entirely. I concluded that at times they tailored their evidence to suit the defendant’s case and in some respects I did not think either of them was entirely truthful. Where their evidence differs from the findings which I have made, I rejected it.Background of the plaintiff The plaintiff’s business was established by Mr Andrew Cody in 1971. In 1978 the plaintiff was incorporated under the name Andrew Cody Pty Ltd and that name was later changed to Cody Opal (Australia) Pty Ltd. Mr Andrew Cody commenced business originally as an opal cutter, manufacturer of jewellery and a wholesaler of opals in 1971 and a retail operator in 1979 in the central business district in Melbourne. His brother, Mr Damien Cody joined the plaintiff in February 1998 when he became a director. Before that time he had worked extensively in the insurance industry. Mr Andrew Cody and the business of the plaintiff are well known in Australia and internationally as leading Australian opal cutters, wholesalers and exporters. The plaintiff carries on business at 125 Swanson Street, Melbourne where there are administration offices and retail premises. It has an office in Hong Kong and agencies in Japan and in the United States. Also, it has office and retail premises at 119 Swanson Street, Melbourne, which is in the Central Business District. It also has premises at 176 Pitt Street Mall in Sydney, which is in the Central Business District of that city where it carries on business as “The National Opal Collection”. The plaintiff has been established regularly since about 1990 at major international gem and jewellery shows in leading centres of the world which are in Japan, Hong Kong, Switzerland, France, Germany and the United States of America. Mr Andrew Cody is a founding member of the Australian Jewellery and Gemstone Industry Council in 1999. He is Chairman of the Council and has been President of the Australian Opal and Gem Industry Association and an Associate of the Australian Museum in 1999. I accept that in 1993 the opal was proclaimed the national gemstone of Australia but the evidence does not disclose by whom. Mr Andrew Cody was the chairman of the National Gemstone Committee which promoted this proclamation. I accept that the opal is widely known and accepted as the national gemstone of this country. Mr Andrew Cody is the author of a well-known book entitled “Australian Precious Opal - a Guide Book for Professionals” (“Mr Andrew Cody’s book”) which was first printed and published in 1991. It is used by persons engaged in the Australian Opal Industry. 7,000 copies in hard cover and 14,000 copies with a soft cover were printed and distributed between 1991 and 2002 to selected persons. A version printed in Japanese was also published and distributed. Later I mention features of this book which are relevant to matters in issue in these proceedings.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

The plaintiff has proved this cause of action and upon proof of loss or damage is entitled to relief.Conclusions I have found that the defendant infringed the plaintiff’s trade mark, infringed its copyright in the various publications and the first elevated sign, passed off his business as and for the business of the plaintiff and engaged in conduct that is misleading and deceptive or is likely to mislead and deceive. The plaintiff is entitled to the following declarations:1that the conduct of the defendant in using the first elevated sign and the second elevated sign infringed the plaintiff’s trade mark;2that the defendant infringed the plaintiff’s copyright in the opalized border on the front corner of Mr Andrew Cody’s book and the photograph which I have mentioned by the production and use of the publications and signs set out in paragraphs 73, 78, 79, 85, 87, 89, 92 and 95 of these reasons.The plaintiff is entitled to injunctions to restrain the use of the publications set out in paragraphs 73, 78 and 79 hereof and the first elevated sign, the second elevated sign and the opalized adhesive strip. The plaintiff is not entitled to damages or an account of profits for infringement of the trade mark or copyright unless and until losses sustained by it or enrichment of the defendant in consequence of such infringements have been proved. The tort in passing off has been established against the defendant except for the component of loss and damage. Injunctive relief for contravention of the Fair Trading Act is not required to protect the plaintiff because of the injunctive relief to be granted for infringement of the trade mark and copyright as indicated. Damages for contravention of the Fair Trading Act have not yet been proved. Further hearing of the action is to be referred to a Master to determine if loss and damage to the plaintiff is established or an account of profits should be taken. I shall hear the parties as to the terms of the judgment and any consequential orders which should now be made.

Ratio Decidendi

Legal Principle Established

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