Fendi Adele SRL v Friedland

[2002] FCA 352

FEDERAL COURT OF AUSTRALIA

Fendi Adele SRL v Friedland [2002] FCA 352

Federal Court Rules:  O 20 r 1

Trade Marks Act 1995 (Cth): s 120(1)

FENDI ADELE SRL & ANOR v ARIEH FRIEDLAND

V 835 of 2001

GOLDBERG J
20 MARCH 2002
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 835 of 2001

BETWEEN:

FENDI ADELE SRL
First Applicant

LOUIS VUITTON MALLETIER SA
Second Applicant

AND:

ARIEH FRIEDLAND
Respondent

JUDGE:

GOLDBERG J

DATE OF ORDER:

20 MARCH 2002

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:

1.        The second applicant be granted leave to amend:

(a)the notice of motion to add par 1(a)(xi) in accordance with amended notice of motion handed to the Honourable Justice Goldberg and initialled by his Honour and placed on the Court file;

(b)the application to add par 11(k) in the terms of the draft amended application handed to the Honourable Justice Goldberg and initialled by his Honour and placed on the Court file;

(c)the statement of claim to add par 4(k) in accordance with the draft amended statement of claim initialled by his Honour and placed upon the Court file.

2.There be summary judgment for the second applicant pursuant to O 20 r 1 of the Federal Court Rules permanently restraining the respondent, whether by himself, his employees or agents or otherwise howsoever, from infringing Australian registered trade mark number 729025 for “CHECK SQUARE” in Class 18 (“the Louis Vuitton trade mark”) and, in particular, from using the Louis Vuitton trade mark or any sign which is substantially identical or deceptively similar thereto in the course of trade on or in relation to:

(a)any of the goods in resect of which the Louis Vuitton trade mark is registered (“the Louis Vuitton registered goods”);

(b)       goods of the same description as any of the Louis Vuitton registered goods; or

(c)       services that are closely related to any of the Louis Vuitton registered goods.

3.There be a trial limited to the question of liability referred to in pars 1 to 23 of the amended statement of claim other than in relation to par 4(k) thereof with all issues as to damages and any account of profits including in relation to the trade mark referred to in par 4(k) thereof to be dealt with after the trial on liability.

4.The applicants file and serve any further affidavit material upon which they intend to rely at the trial of this proceeding on or before 4.00pm on 8 April 2002.

5.The respondent file and serve any further affidavit material upon which he intends to rely at the trial of this proceeding on or before 4.00pm on 29 April 2002.

6.The applicants file and serve any affidavits in reply on or before 4.00pm on 6 May 2002.

7.Each party file and exchange an outline of facts and contentions on or before 4.00pm on 13 May 2002.

8.The proceeding be referred to mediation, pursuant to O 72 of the Federal Court Rules, such mediation to be conducted by a mediator nominated by the District Registrar.  The mediation shall be concluded before 1 May 2002.  The mediator is to report the result to the Court in writing of the outcome of the mediation no later than 8 May 2002.

9.The respondent pay 25 per cent of the second applicant’s costs of the amended notice of motion.  The remaining 75 per cent of the second applicant’s costs of the amended notice of motion be costs in the cause.

10.      Adjourn the directions hearing to 5 June 2002.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 835 of 2001

BETWEEN:

FENDI ADELE SRL
First Applicant

LOUIS VUITTON MALLETIER SA
Second Applicant

AND:

ARIEH FRIEDLAND
Respondent

JUDGE:	GOLDBERG J
DATE:	20 MARCH 2002
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. The applicants have instituted proceedings against the respondent alleging that the respondent has infringed a number of trade marks, of which the first applicant and the second applicant are respectively registered as the proprietors.  Some relate generally to the mark “Fendi”.  Others relate generally to the mark “Louis Vuitton”.

2. The applicants have alleged that the respondent has infringed those trade marks in a number of respects.  On 1 February 2002 the second applicant (“the Louis Vuitton company”) filed a motion seeking summary judgment pursuant to O 20 r 1 of the Federal Court Rules for injunctive and declaratory relief in relation to the ten registered Louis Vuitton trade marks, which were the subject of the application and the statement of claim.  In relation to its claim for summary judgment, the Louis Vuitton company relies substantially on the evidence of Ms Dani Yvonne Williams who said that she purchased a bag, which is exhibited to her affidavit, from the respondent’s shop.

3. There is other evidence from Ms Tracey‑Anne Ford which verifies that the bag is a counterfeit bag which does not emanate from the Louis Vuitton company.  There is also evidence of the registration of the relevant trade marks which are alleged to be infringed by the respondent offering for sale and selling the bag.

4. The respondent has filed an affidavit in response to the Louis Vuitton company’s evidence in which he disputes that he sold the bag which Ms Williams said she purchased from him.  The respondent asserts in his affidavit that he sold Ms Williams a different bag which is not, on the face of it, a bag which infringes any of the registered trade marks. 

5. In order for me to be satisfied that summary judgment should be given under O 20 r 1, I need to be satisfied that the respondent does not have an arguable defence, or that any defence which he raises cannot possibly succeed, to use a very general expression.  On the material before me, there are contested facts which I cannot resolve until such time as the parties are given the opportunity to cross-examine the relevant deponents.  In those circumstances, although the Louis Vuitton company’s evidence is very cogent, I cannot disregard the affidavit filed by the respondent.  I am not disposed to grant summary judgment in respect of the ten trade marks registered in the name of the Louis Vuitton company which were the subject of the primary application and statement of claim. 

6. However, in the course of the affidavit which he swore on 21 February 2002 and filed in Court on that day, the respondent made the following statement in par 5:

   “I do not agree with Ms Williams statement at paragraph 4 of her affidavit that she ‘observed no less than thirty bags, each of which bore one or more of the trade marks owned by the Second Applicant’.  I do not sell or offer to sale any products bearing trade marks of the Second Applicant.  I do sell bags and wallets which incorporate a check pattern and have graffiti patterns.  Now shown to me and marked ‘AF2’ are two bags of the Red Berry brand.  These products are sold under the Red Berry brand name.  Now shown to me and marked ‘AF3’ are copies of invoices evidencing purchase of bags and other products under the Red Berry name.  It has come to my attention that certain products of the Second applicant also incorporate check patterns and graffiti patterns.” 

   As a result of that affidavit, further material was filed on behalf of the Louis Vuitton company.  In particular, an affidavit was sworn on 8 March 2002 by Ms Ford and filed on 12 March.  In her affidavit filed on 12 March, Ms Ford referred to her earlier affidavit sworn on 1 February 2002, in which she described her position with the applicants and her ability to swear as to matters relating to the trade marks of the Louis Vuitton company.  Ms Ford also referred to one of the handbags contained in exhibit AF2 to the respondent’s affidavit which was the bag which bore the pattern of light brown and dark brown checks.  Ms Ford said that the check handbag bore the trade mark known as “Damier Canvas” and she was informed by Mr Merrick, from the applicants’ solicitors, that the Damier Canvas pattern was the subject of Australian trade mark registration number 729025.

7. Ms Ford said that on the basis of her experience, referred to in pars 4 to 7 of her earlier affidavit, she held the opinion that the check handbag produced by the respondent was counterfeit, that is, it was not manufactured by or under the authority of the Louis Vuitton company, nor was the trade mark affixed to the bag with its authority.  She explained her reasons why she said the handbag was counterfeit.  Mr Merrick, in an affidavit sworn on 12 March, produced a certified copy of the registration of the trade mark in relation to class 18, which includes bags.  The trade mark was described in the certificate as consisting of “a checked pattern of contrasting light and dark brown squares applied directly to the goods as shown in the representation attached to the application form”.

8. As a result of that evidence coming forward, the applicants sought leave to amend their application, statement of claim and notice of motion to include a claim for infringement of Australian trade mark number 729025 for the check square in class 18.  Approximately two and a half weeks’ notice had been given to the respondent of the applicants’ proposal to amend those documents.  In these circumstances, I grant the applicants leave to amend the application, statement of claim and notice of motion in the terms sought. 

9. The Louis Vuitton company submitted that on the evidence before the Court it was entitled to summary judgment on the basis that there was an infringement of the check square trade mark by virtue of the provisions of s 120(1) of the Trade Marks Act 1995 (Cth) (“the Act”) which provides:

   “A person infringes a registered trade mark if the person uses as a trade mark a sign which is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.” 

10. In the course of the respondent’s submissions, I drew the respondent’s attention to the fact that he had sworn in his affidavit that he had sold bags which incorporated the check pattern.  The respondent, who appeared in person, unaided by legal representation, explained from the bar table that he had not sold bags which incorporated the check pattern.  In his evidence, the respondent produced invoices which showed that he had purchased fourteen of those bags.  The respondent said from the bar table that he had not sold any of the fourteen bags.  Although this statement was not verified on oath, I am disposed to accept it for reasons which I will indicate shortly.  One of the bags was produced as an exhibit and the respondent said that three bags had been unpacked from their wrapping.  It appeared initially that the respondent was saying that three of those bags had been displayed for sale in his shop, but he later said that only one bag had been displayed for sale. 

11. In this context, any infringement of the mark by the displaying of bags for sale bearing the infringing trade mark is not a quantitative matter and is satisfied if only one bag with the infringing mark is offered for sale. Accordingly, it is sufficient for me to accept that, although in his affidavit the respondent said that he had sold bags which incorporated the check pattern, an infringement of the mark is established even though he may only have offered for sale and displayed for sale in his shop one bag bearing or incorporating the check pattern. In those circumstances, I am satisfied on the evidence before me that an infringement of s 120(1) of the Act is established on the basis that the respondent has displayed for sale one bag incorporating the infringing mark.

12. I am therefore satisfied that there should be summary judgment for the Louis Vuitton company in relation to the check square trade mark, but not in relation to the other trade marks.  All the other matters alleged in the amended statement of claim should proceed to trial in the usual way.  I propose to order that the Louis Vuitton company be granted leave to amend the notice of motion, the application and the statement of claim to incorporate the claim in relation to the check square trade mark and that there be summary judgment for the Louis Vuitton company pursuant to O 20 r 1 of the Federal Court Rules for an injunction restraining the respondent from infringing the square trade mark and using it in relation to any goods in respect of which that trade mark is registered, or goods of the same description of those goods, or any services closely related to those goods.

13. Having regard to the fact that the Louis Vuitton company only succeeded in its application for summary judgment in relation to one trade mark, I propose to order that the respondent pay 25 per cent of the Louis Vuitton company’s costs of the amended notice of motion and that the remaining 75 per cent of the Louis Vuitton company’s costs of the amended notice of motion be costs in the cause.

I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Goldberg.

Associate:

Dated:             26 March 2002

Counsel for the Applicant:	S M Anderson
Solicitor for the Applicant:	Corrs Chambers Westgarth
The Respondent appeared in person
Date of Hearing:	20 March 2002
Date of Judgment:	20 March 2002