Facton Ltd v Dash Industries Pty Ltd - [2010] FMCA 709

FEDERAL MAGISTRATES COURT OF AUSTRALIA

FACTON LTD & ORS v DASH INDUSTRIES PTY LTD & ANOR

[2010] FMCA 709

Copyright Act 1968, ss.115(2), 115(4)
Designs Act 2003
Fair Trading Act 1987 (NSW)
Federal Court Rules
Federal Magistrates Court Rules 2001, rr.13.03A(2), 13.03B(2)
Trade Marks Act 1995, ss.125, 125(2), 190
Trade Practices Act 1974

Arthur and Ors v Vaupotic Investments Pty Ltd and Ors [2005] FCA 433
Elwood Clothing Pty Ltd v Cotton on Clothing Pty Ltd (2009) 81 IPR 378; [2009] FCA 633
Facton Ltd & Anor v Chung Lim Sports Cap Pty Ltd and Ors [2010] FMCA 584
Facton Ltd & Anor v Yao [2010] FMCA 433
G-Star Raw Denim KFT and Ors v Urban Culture Pty Ltd and Anor [2009] FMCA 1317
Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd and Anor (2008) 166 FCR 358; [2008] FCA 74
Review Australia Pty Ltd v New Cover Group Pty Ltd (2008) 79 IPR 236; [2008] FCA 1589

First Applicant:

FACTON LTD

Second Applicant:

G-STAR INTERNATIONAL B.V

Third Applicant:

G-STAR AUSTRALIA PTY LTD

(ACN 096 765 123)

First Respondent:

DASH INDUSTRIES PTY LTD

(ACN 133 864 267)

Second Respondent:

HAI YIM CHEN

File Number:

MLG 20 of 2010

Judgment of:

Riley FM

Hearing date:

25 August 2010

Date of Last Submission:

25 August 2010

Delivered at:

Melbourne

Delivered on:

23 September 2010

REPRESENTATION

Counsel for the Applicants:

Mr Feder

Solicitors for the Applicants:

Middletons

Counsel for the Respondents:

No appearance

Solicitors for the Respondents:

No appearance

ORDERS

PENAL NOTICE TO THE RESPONDENTS:

IF YOU

A.REFUSE OR NEGLECT TO DO ANY ACT WITHIN THE TIME SPECIFIED IN THIS ORDER FOR THE DOING OF THE ACT; OR
B.DISOBEY THE ORDER BY DOING AN ACT WHICH THE ORDER REQUIRES YOU TO ABSTAIN FROM DOING,

YOU WILL BE LIABLE TO IMPRISONMENT, SEQUESTRATION OF PROPERTY OR OTHER PUNISHMENT.

ANY OTHER PERSON WHO KNOWS OF THIS ORDER AND DOES ANYTHING WHICH HELPS OR PERMITS YOU TO BREACH THE TERMS OF THIS ORDER MAY BE SIMILARLY PUNISHED.

THE COURT DECLARES THAT:

The respondents have:
(a)infringed the G-Star Trade Marks (as defined in paragraph 5 of the Statement of Claim) in breach of section 120 of the Trade Marks Act 1995 (Cth);
(b)infringed or authorised the infringement of the Copyright Works (as defined in paragraph 7 of the Statement of Claim);
(c)contravened sections 42 and 44 of the Fair Trading Act 1987 (NSW); and
(d)engaged in conduct which constitutes the tort of passing off.
The first respondent has contravened sections 52 and 53 of the Trade Practices Act 1974 (Cth).
The second respondent has contravened sections 52 and 53 of the Trade Practices Act 1974 (Cth) (by virtue of the operation of section 75B of the Trade Practices Act 1974 (Cth)).

AND THE COURT ORDERS THAT:

The respondents, whether by themselves, their servants, employees, agents or otherwise howsoever be restrained, in trade or commerce from:
(a)importing, manufacturing, promoting, advertising, distributing,…

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: [2010] FMCA 709
Decision Date: 23 September 2010

CaseChat Overview and Summary

The case of Facton Ltd v Dash Industries Pty Ltd was heard in an Australian court, involving a dispute between the parties over alleged infringement of trademarks, copyright, and unfair trading practices. Facton Ltd, the plaintiff, alleged that Dash Industries Pty Ltd, the defendant, had infringed on their trademarks and copyright, engaged in misleading or deceptive conduct, and passed off their products as the plaintiff's products. The court was required to determine whether the defendant had indeed infringed on the plaintiff's intellectual property rights, engaged in misleading or deceptive conduct, and passed off their products as the plaintiff's products. The court also needed to decide on the appropriate remedies for the plaintiff.

The court found that the defendant had indeed infringed on the plaintiff's trademarks and copyright, engaged in misleading or deceptive conduct, and passed off their products as the plaintiff's products. The court noted that the defendant had used the plaintiff's trademarks and copyright materials without permission, and had also represented their products as being affiliated with the plaintiff. The court held that the defendant's conduct constituted infringement of the plaintiff's intellectual property rights, as well as misleading or deceptive conduct and passing off. The court ordered the defendant to cease all infringing activities, deliver up all infringing materials, and pay damages and costs to the plaintiff. The court also issued a penal notice to the defendant, warning of the severe consequences of non-compliance with the order. Overall, the court's decision upheld the plaintiff's intellectual property rights and provided appropriate remedies for the infringement.

Orders

Orders of the court

PENAL NOTICE TO THE RESPONDENTS:

IF YOU

A. REFUSE OR NEGLECT TO DO ANY ACT WITHIN THE TIME SPECIFIED IN THIS ORDER FOR THE DOING OF THE ACT; OR

B. DISOBEY THE ORDER BY DOING AN ACT WHICH THE ORDER REQUIRES YOU TO ABSTAIN FROM DOING,

YOU WILL BE LIABLE TO IMPRISONMENT, SEQUESTRATION OF PROPERTY OR OTHER PUNISHMENT.

ANY OTHER PERSON WHO KNOWS OF THIS ORDER AND DOES ANYTHING WHICH HELPS OR PERMITS YOU TO BREACH THE TERMS OF THIS ORDER MAY BE SIMILARLY PUNISHED.

THE COURT DECLARES THAT:

The respondents have:

(a) infringed the G-Star Trade Marks (as defined in paragraph 5 of the Statement of Claim) in breach of section 120 of the Trade Marks Act 1995 (Cth);

(b) infringed or authorised the infringement of the Copyright Works (as defined in paragraph 7 of the Statement of Claim);

(d) engaged in conduct which constitutes the tort of passing off.

The first respondent has contravened sections 52 and 53 of the Trade Practices Act 1974 (Cth).

The second respondent has contravened sections 52 and 53 of the Trade Practices Act 1974 (Cth) (by virtue of the operation of section 75B of the Trade Practices Act 1974 (Cth)).

AND THE COURT ORDERS THAT:

The respondents, whether by themselves, their servants, employees, agents or otherwise howsoever be restrained, in trade or commerce from:

(a) importing, manufacturing, promoting, advertising, distributing, offering for sale, selling or exhibiting in public, the Dash Garments (as defined in paragraph 11 of the Statement of Claim) or any other clothing or clothing accessories to which the G-Star Trade Marks and Copyright Works have been affixed or applied without the knowledge, authority or licence of the applicants or any of them (Counterfeit G-Star Products);

(b)

disposing or dealing with the Dash Garments or Counterfeit

G-Star Products in any other way than in accordance with order 2 below;

(c) authorising, causing, procuring or inducing any person to do any act which would be an infringement of the injunction referred to in order (1)(a) above;

(d) representing that the Dash Garments, or Counterfeit G-Star Products are imported, manufactured, advertised, promoted, offered for sale or sold with the sponsorship or approval of the applicants or any of them;

(e) representing that the Dash Garments or Counterfeit G-Star Products are the G-Star Products (as defined in paragraph 3 of the Statement of Claim);

(f) representing that the Dash Garments or Counterfeit G-Star Products emanate from the same trade source as the G-Star Products;

(g) representing that the Dash Products or Counterfeit G-Star Clothing are made by the applicants or any of them;

(h) passing themselves off as the applicants or any of them; and

(i) passing off the Dash Garments or Counterfeit G-Star Products:

i) as and for the G-Star Products (as defined in paragraph 3 of the Statement of Claim); and

ii) as having the sponsorship, approval or a connection or affiliation in the course of trade with the Applicants or any of them and the G-Star Products.

The respondents, whether by themselves, their servants, employees, agents or otherwise howsoever, deliver up to the applicants:

(a) all the Dash Garments and Counterfeit G-Star Products in their possession, custody or control;

(b) any and all brochures, pamphlets, advertising, labels, swing tags, promotional or marketing material and the like in their power, possession, custody or control which bear the G-Star Trade Marks or the Copyright Works; and

(c) any materials, products or things in the respondents’ power, possession or control, the exploitation of which by the respondents would be an infringement of the foregoing injunctions.

The respondents pay the applicants’ damages of $50,000.

The respondents pay the applicants’ costs of the proceeding fixed in the sum of $3,815 together with disbursements fixed in the sum of $2,205.62.

The applicants serve a copy of these orders on the respondents as soon as practicable.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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