Diesel Spa v Hwang - [2005] FCA 1820

FEDERAL COURT OF AUSTRALIA
Diesel Spa v Hwang [2005] FCA 1820
TRADE MARKS – infringement of subsecs 120(1) and (2) of the Trade Marks Act 1995 (Cth) – applicants manufacture and distribute clothing and fashion accessories by reference to the name “Diesel” – allegation that eleventh respondent purchased counterfeit Diesel goods with the intention to sell or distribute them – whether any “use” of the Diesel trade marks by the eleventh respondent – hearing limited to question of liability and the granting of declaratory and injunctive relief
TRADE PRACTICES – whether eleventh respondent engaged in misleading or deceptive conduct – whether eleventh respondent made false representations
TORTS – passing off
Corporations Act 2001 (Cth) ss 9, 1305
Fair Trading Act 1987 (NSW) ss 42, 44
Trade Marks Act 1995 (Cth) s 120
Nokia Corporation v Truong [2005] FCA 114 applied
Norwich Pharmacal Co v Commissioners of Customs and Excise [1972] RPC 743 referred to
DIESEL SPA AND ANGUS IMPORTS PTY LTD v IN BAE HWANG, DARREN GINSBERG, DIONNE SHINE AND ALBERT EZEKIEL
VID 946 OF 2004
TAMBERLIN J
SYDNEY
22 DECEMBER 2005

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

VID 946 OF 2004

BETWEEN:

DIESEL SPA
FIRST APPLICANT

ANGUS IMPORTS PTY LTD (ACN 066 175 219)
SECOND APPLICANT

AND:

IN BAE HWANG
SIXTH RESPONDENT

DARREN GINSBERG
NINTH RESPONDENT

DIONNE SHINE
TENTH RESPONDENT

ALBERT EZEKIEL
ELEVENTH RESPONDENT

JUDGE:

TAMBERLIN J

DATE OF ORDER:

22 DECEMBER 2005

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The Eleventh Respondent, whether by himself, his servants, employees or agents, or howsoever otherwise, be restrained from importing, manufacturing, promoting, advertising, distributing, offering for sale, selling or exhibiting in public any clothing, footwear or accessories in Australia by reference to any of the following trade marks:

(a) the word “DIESEL”; and/or
(b)the “D” logo as depicted in registered Australian trade mark number 740924, a copy of which is annexed to this Amended Application; and/or
(c)the “ONLY THE BRAVE” logo as depicted in registered Australian trade mark numbers 630189, 739658 and 901971, a copy of which is annexed to this Amended Application:
(“the Trade Marks”)

unless the affixing of the Trade Marks to those products is or has been done by or with the licence or approval of the Applicants or any person or persons with authority from the Applicants to licence or approve the affixing of the Trade Marks to those products (“Counterfeit Products”).
2.The Eleventh Respondent deliver up on oath to the Applicants all Counterfeit Products and other products, packaging, catalogues, promotional material, advertisements, signage and other materials in any form which bear, include or refer to the Trade Marks or any other word, mark or sign that is substantially identical or deceptively similar to the Trade Marks.
3.The Eleventh Respondent deliver up on oath to the Applicants a list of the names, addresses, and contact numbers of all suppliers and customers of all Counterfeit Products in his possession or the possession of his servants and agents.

4. The…

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: [2005] FCA 1820
Decision Date: 22 DECEMBER 2005

CaseChat Overview and Summary

Diesel Spa and Diesel International BV, trading as Diesel, sought an injunction and other relief against various defendants, including Albert Ezekiel, alleging trademark infringement and passing off. The primary focus of the court was on determining liability and granting injunctive and declaratory relief, with damages and other relief to be decided later. Albert Ezekiel denied any knowledge or involvement in the sale, distribution, or purchase of Diesel products, attributing any references to his name on invoices to confusion with his brother Morris or another individual named Albert. He further argued that the invoices did not bear his name or address, suggesting they were mistakenly attributed to him.

The court needed to decide whether Albert Ezekiel was involved in the alleged infringements and if the defendants had infringed Diesel's trademarks and passed off their products as Diesel's. The court examined the evidence provided, including Albert Ezekiel's affidavits and his claims of illness and family responsibilities, which he argued made it unlikely for him to be involved in the commercial activities alleged. The court also considered the content and context of the invoices and whether they could be reasonably attributed to Albert Ezekiel.

After reviewing the evidence, the court found that Albert Ezekiel was not directly involved in the infringing activities. The court acknowledged his denials and the lack of clear evidence linking him to the invoices or the sale of counterfeit products. Consequently, the court decided not to grant the relief sought against Albert Ezekiel regarding his involvement in the infringements. The court issued specific orders against other defendants, including restraining them from using Diesel's trademarks and requiring them to deliver up counterfeit products and related materials. The court also ordered Albert Ezekiel to pay costs to date and set a future date for further directions.

Orders

Orders of the court

1. The Eleventh Respondent, whether by himself, his servants, employees or agents, or howsoever otherwise, be restrained from importing, manufacturing, promoting, advertising, distributing, offering for sale, selling or exhibiting in public any clothing, footwear or accessories in Australia by reference to any of the following trade marks:

(a) the word “DIESEL”; and/or

(b) the “D” logo as depicted in registered Australian trade mark number 740924, a copy of which is annexed to this Amended Application; and/or

(c) the “ONLY THE BRAVE” logo as depicted in registered Australian trade mark numbers 630189, 739658 and 901971, a copy of which is annexed to this Amended Application:

(“the Trade Marks”)

unless the affixing of the Trade Marks to those products is or has been done by or with the licence or approval of the Applicants or any person or persons with authority from the Applicants to licence or approve the affixing of the Trade Marks to those products (“Counterfeit Products”).

2. The Eleventh Respondent deliver up on oath to the Applicants all Counterfeit Products and other products, packaging, catalogues, promotional material, advertisements, signage and other materials in any form which bear, include or refer to the Trade Marks or any other word, mark or sign that is substantially identical or deceptively similar to the Trade Marks.

3. The Eleventh Respondent deliver up on oath to the Applicants a list of the names, addresses, and contact numbers of all suppliers and customers of all Counterfeit Products in his possession or the possession of his servants and agents.

4. The Eleventh Respondent is to pay the costs of the Applicants to date.

5. The matter is stood over to 17 February 2006 at 9:30 am for further directions.

Background

Background to the litigation

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Evidence

Evidence Before The Court

The present hearing is limited to the question of liability and the grant of injunctive and declaratory relief. Damages and other relief are to be decided separately.EVIDENCE OF ALBERT EZEKIEL Albert Ezekiel’s defence is to deny that he ever knew anything about any Diesel products or any invoices or the sale of any Diesel products. He says that he has had nothing whatsoever to do with the sale, distribution or purchase of any such products. He has consistently denied any involvement in relation to the alleged infringements. Albert Ezekiel has filed a number of affidavits in support of his case. In an affidavit sworn on 12 November 2005, Albert Ezekiel says that he has resided in the family home at 88 Beach Road, Bondi, since 1965. He says that, at all times, the telephone has remained in his father’s name, “Abraham”, and that it is currently listed in the White Pages and on the internet as belonging to “A Ezekiel”. Since his father became ill in 1998, Albert Ezekiel has cared for both his parents. During Albert Ezekiel’s long term care of his parents at the family home, the family home became known to relatives, family friends and acquaintances as “Albert’s place”. Albert Ezekiel’s father died some time ago. Albert Ezekiel subsequently spent a long period of time caring for his mother with the assistance of his brother Morris. Morris Ezekiel returned to Victoria in October 2003. In about September 2003, a family friend, Solomon Ezekiel (no relation), came to reside in the family home and assisted Albert Ezekiel with the running of the household. Morris Ezekiel returned to Sydney in early November 2003 and December 2003 to visit his mother and help Albert Ezekiel to find a permanent nursing home for her. Morris Ezekiel periodically returned to Sydney after this time. Albert Ezekiel also says that he has suffered from ill health since about late November 2003. In his affidavit, Albert Ezekiel addresses in detail each of the invoices alleged to be made out to him and denies that he had any commercial or other relevant association or relationship with the other Respondents, including those who sold the goods. He contends that the invoices found on the Kippax Street premises did not relate to him but probably related to the affairs of his brother Morris or to a different Albert. At the hearing before me, Albert Ezekiel speculated that the word “Albert” appearing on invoices and other documentation was a mistake arising because Morris, who had extensive dealings with Rainbow Apparel in the infringing products, was frequently at the family home at 88 Beach Road, Bondi, and was present at Bondi on or about the time of the relevant invoices relied upon by the Applicants. He also said that the invoices did not have the name “Ezekiel” or the address of 88 Beach Road on them. He therefore says that the statements and invoices were wrong in invoicing him for the goods. On the scenario advanced by Albert Ezekiel, the invoices did not relate to him but rather to Morris Ezekiel or a different Albert.

Decision

Reasons for decision

TAMBERLIN J

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Ratio Decidendi

Legal Principle Established

Established by: TAMBERLIN J

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IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	VID 946 OF 2004

BETWEEN:	DIESEL SPA FIRST APPLICANT ANGUS IMPORTS PTY LTD (ACN 066 175 219) SECOND APPLICANT
AND:	IN BAE HWANG SIXTH RESPONDENT DARREN GINSBERG NINTH RESPONDENT DIONNE SHINE TENTH RESPONDENT ALBERT EZEKIEL ELEVENTH RESPONDENT
JUDGE:	TAMBERLIN J
DATE OF ORDER:	22 DECEMBER 2005
WHERE MADE:	SYDNEY