Geneva Laboratories Limited v Prestige Premium Deals Pty Ltd (No 5)

Geneva Laboratories Limited and Union-Swiss Laboratories Ltd sought compensatory damages, additional damages, and exemplary damages against Prestige Premium Deals, United Prestige Clearance, United Prestige Group, and Andrew Christopher. This was following a default judgment finding liability for copyright infringement, trade mark infringement, misleading or deceptive conduct, and passing off in relation to counterfeit skin care products. The applicants sought compensatory damages, including for reputational damages, and additional and exemplary damages. The applicants also sought lump sum costs in lieu of taxation. The primary legal issue was the quantum of damages and costs to be awarded. The Court had to consider the nature of the infringement, the loss suffered by the applicants, and the need to deter and punish the respondents' conduct.

The Court awarded compensatory damages of $475,000, comprising $425,000 for direct compensatory damages and $50,000 for reputational damages. It awarded additional damages for trade mark and copyright infringement and exemplary damages for passing off. The Court found that the copyright and trade mark infringements were flagrant and deceptive, and occurred over a long period of time. The respondents' conduct was uncooperative and obstructive, including defiance of Court orders. The Court found a substantial need to deter this conduct and similar conduct in the future. The Court awarded lump sum costs of $540,000, finding that taxation would prolong the process and impose a further burden on the applicants without any certainty of recovery from the respondents. The Court held that the applicants were entitled to pre-judgment interest on the damages and costs. The applicants were to provide interest calculations within seven days of the reasons, and the respondents were to respond within seven days of receiving the draft orders and interest calculations.

The final orders will be made in Chambers without any further hearing or submissions unless either party satisfies the Court that this is necessary. The applicants are to provide draft orders, accompanied by interest calculations, within seven days of the reasons or such later period as may be directed. The respondents are to respond to the draft orders and interest calculations within seven days of service of a draft by the applicants. Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.