Edwards v Liquid Engineering 2003 Pty Ltd

[2008] FCA 970

FEDERAL COURT OF AUSTRALIA

Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970

CONTRACTS – whether post-contractual conduct is admissible on the question of what a contract means – relevance of the subjective intentions of the parties to a contract – whether contract may be formed where there is an agreement to agree as to price or other substantive term – whether silence or failure to object to an unsolicited offer may constitute acceptance

COSTS – whether costs should be awarded in favour of applicant where application is dismissed as moot but would otherwise have been successful on the merits

EQUITY – estoppel – whether silence between intermittent threats of infringement may give rise to estoppel – whether equity will intervene when there is an adequate remedy at law – whether silence or failure to object to an unsolicited offer may give rise to an estoppel – whether wrongfully registered proprietor of a trade mark holds the mark on constructive trust for true owner – whether injunction should be granted where there is no showing of likelihood of future infringement

TRADE MARKS – appeal from decision of Registrar of Trade Marks that registered proprietor’s name be removed from the Register due to lack of intent to use the mark in good faith – whether appeal should be dismissed as moot where Court cannot grant relief sought even if applicant is successful – how mark is to be defined – whether mark includes or is associated with an image or particular graphic representation – whether ownership rights with respect to a mark are limited to goods of the same description – infringement action based on deceptive similarity – whether side-by-side comparison is required – whether presence or absence of additional descriptive word or associated image will avoid finding of deceptive similarity where distinctive or essential feature of the mark is borrowed – whether evidence of intent to deceive raises rebuttable presumption of consumer confusion – ownership of unregistered mark – right to register – meaning of “person aggrieved” under s 88 of the Trade Marks Act 1995 (Cth) – power of Court to direct amendment of Register by substitution of registered proprietor’s name with the applicant’s – power and discretion of the Court under ss 89, 122, 123, and 124 of the Trade Marks Act 1995 (Cth) to refuse relief where a party would otherwise be liable for infringement – quantum – election – whether applicant must elect between damages and account of profits before the close of evidence in non-split trial – whether applicant has the burden of establishing the infringer’s gross sales – whether respondent in non-split trial has burden of establishing costs incurred in relation to, including portion of general overhead reasonably attributable to, infringing goods – whether profits may be calculated using a measure of guesswork and estimation

Trade Marks Act 1995 (Cth)
Trade Practices Act 1974 (Cth)

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