Facton Ltd v Toast Sales Group Pty Ltd

The applicants, collectively known as G-Star, sought relief against Toast Sales Group Pty Ltd for alleged infringement of trade marks and copyright, and for misleading or deceptive conduct. The applicants sought an account of profits for the alleged infringements, along with declaratory and injunctive relief. They claimed that Toast Sales used their registered trade marks and copyright works without consent, and engaged in conduct that was misleading or deceptive.

The primary legal issues in the case revolved around whether Toast Sales used the G-Star Trade Marks in relation to the retailing of goods or retail services, and if the use fell within certain statutory defences under the Trade Marks Act 1995 (Cth). Another issue was whether Toast Sales’ use of the G-Star Trade Marks in promotional materials was misleading or deceptive, or gave a false impression of authorisation or approval by G-Star. Additionally, the court had to decide whether an account of profits should be ordered for the trade mark and copyright infringement, and if the infringing party must have known of the infringement.

The court found that Toast Sales did use the G-Star Trade Marks in relation to the retailing of goods, but the use did not constitute an infringement because it was with the consent of the trade mark owner. The court also found that Toast Sales’ use of the G-Star Trade Marks in promotional materials did not fall within the statutory defences, and that the promotion of the G-Star brand in Toast Sales’ promotional materials was misleading or deceptive. The court held that G-Star was entitled to an account of profits for the copyright infringement, but not for the trade mark infringement, as the profits were not solely attributable to the infringing conduct.

The court ordered the parties to confer and file agreed minutes of order within 10 days, or failing agreement, submit written submissions in support of their respective positions. This case highlights the importance of obtaining consent for the use of registered trade marks and the consequences of misleading or deceptive conduct.