FEDERAL COURT OF AUSTRALIA
GM Holden Ltd v Paine [2011] FCA 569
Citation: GM Holden Ltd v Paine [2011] FCA 569 Parties: GM HOLDEN LTD (ACN 006 893 232), GENERAL MOTORS LLC and GM GLOBAL TECHNOLOGY OPERATIONS LLC v DARREN PAINE, KIT WHEEL & TYRE PTY LTD (ACN 130 334 548), RICKY WAI CHU, TYRES FOR LESS PTY LTD (ACN 119 126 653), SAMUEL ELLIOTT LEWIN, BSA WHEELS AUSTRALIA PTY LTD (ACN 103 714 076), MICKY WU, TALEB TYRES (AUST) PTY LIMITED (ACN 107 451 794), AHMED TALEB, MOHAMED TALEB, GALLOP TRADING PTY LTD (ACN 093 740 535), MIN CHAO WU, YI FEI FENG, IB INTERNATIONAL TRADING PTY LTD (ACN 125 489 161), GUO YUAN YANG, A PERSON KNOWN AND IDENTIFIED BY THE FIFTH RESPONDENT AS “FRANK”, WORK WHEELS AUSTRALIA PTY LTD (ACN 137 424 269), YOESOEF FIRDAUS, HELEN SETYANINGSIH, ZUMBO WHEELS AUSTRALIA PTY LTD (ACN 133 316 104), IGOR POCEV, WEICHUN CHEN, WEIZHEN CHEN and YI SHU File number: VID 629 of 2010 Judge: GORDON J Date of judgment: 30 May 2011 Catchwords: CORPORATIONS – stay of proceeding against company in liquidation – s 500(2) Corporations Act 2001 (Cth)
INTELLECTUAL PROPERTY – trade marks – registered designs – advertisement, purchase and sale of allegedly infringing goods – whether allegedly infringing trade marks or designs substantially identical with or deceptively similar in overall impression to registered trade marks and designs – whether infringement made out in the circumstances – insufficient evidence to support finding of design infringement where allegedly infringing product not available for comparison with registered design – ss 20, 120, 126 Trade Marks Act 1995 (Cth) – ss 71, 75 Designs Act 2003 (Cth)
TRADE PRACTICES – passing off – misleading or deceptive conduct – whether made out in the circumstances – Joint tortfeasors – ss 52, 53, 75B, 80, 82 Trade Practices Act1974 (Cth) – ss 42, 44 Fair Trading Act 1987 (NSW)
DAMAGES – compensatory damages – exemplary damages – relevant principles – additional damages under s 75 of the Designs Act 2003 (Cth)
Legislation: Corporations Act 2001 (Cth)
Designs Act 2003 (Cth)
Fair Trading Act 1987 (NSW)
Trade Marks Act 1995 (Cth)
Trade Practices Act 1974 (Cth)Cases cited: Adidas-Salomon AT v Turner (2003) 58 IPR 66
Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (in liq) (2007) 157 FCR 564
Elwood Clothing Pty Ltd (ACN 079 393 696) v Cotton On Clothing Pty Ltd (ACN 052 130 462) (2009) 81 IPR 378
Deckers Outdoor Corporation Inc v Farley (No 5) (2009) 262 ALR 53
Enzed Holdings Limitedv Wynthea Pty Limited (1984) 57 ALR 167
Jones v Dunkel (1959) 101 CLR 298
Keller v LED Technologies Pty Ltd (2010) 185 FCR 449
Lamb v Cotogno (1987) 164 CLR 1
LED Technologies Pty Ltd v Elecspess Pty Ltd (2008) 80 IPR 85
Norm Engineering Pty Ltd v Digga Australia Pty Ltd (2007) 162 FCR 1
Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293
Placer (Granny Smith) Pty Ltd v Thiess…
Keep reading for free
Create a free CaseChat account to read GM Holden Ltd v Paine and more:
- Read every judgment in full
- Ask AI and get answers linked to paragraphs
- See how each paragraph was cited in later cases
- Download judgments as PDF or Word
One click creates your free account or signs you in.
By continuing you agree to the Terms and Privacy Policy.
Details
- Case
- [2011] FCA 569
- Decision Date
CaseChat Overview and Summary
GM Holden Ltd, the owner of registered trademarks and designs, brought an action against Mohamed Taleb and Taleb Tyres, alleging infringement of these trademarks and designs through the sale of counterfeit Holden wheels on eBay. The case was heard by the Federal Court of Australia, which had to determine whether the products sold by the respondents infringed the trademarks and designs, and whether this constituted misleading or deceptive conduct under the Trade Practices Act 1974 (Cth) and the Fair Trading Act 1987 (NSW). Additionally, the court had to decide on the appropriate damages to be awarded.
The primary legal issues revolved around the identification of whether the products sold by the respondents were substantially identical or deceptively similar to the registered trademarks and designs, as well as whether the sale of these products constituted misleading or deceptive conduct. The court also had to consider the appropriate compensatory, exemplary, and additional damages under the Designs Act 2003 (Cth).
The court found that the "Supersport" style wheels sold by Taleb Tyres included the centre wheel caps bearing the Holden Lion Mark and that the advertisements used the word "Holden" in respect of the products they sold. This conduct constituted trademark infringement and passing off. Additionally, the court determined that the respondents engaged in misleading or deceptive conduct by representing that their products were the same as, or emanated from the same trade source as, Holden products, which was not the case. The court rejected the respondents' claims that the products sold did not include the Holden caps and found the evidence provided to be a recent invention. The court also concluded that the respondents' products were substantially similar in overall impression to the registered designs, thus constituting design infringement.
In light of these findings, the court directed the parties to confer and bring in orders to give effect to these reasons for decision by no later than 4:00 pm on 3 June 2011.
The primary legal issues revolved around the identification of whether the products sold by the respondents were substantially identical or deceptively similar to the registered trademarks and designs, as well as whether the sale of these products constituted misleading or deceptive conduct. The court also had to consider the appropriate compensatory, exemplary, and additional damages under the Designs Act 2003 (Cth).
The court found that the "Supersport" style wheels sold by Taleb Tyres included the centre wheel caps bearing the Holden Lion Mark and that the advertisements used the word "Holden" in respect of the products they sold. This conduct constituted trademark infringement and passing off. Additionally, the court determined that the respondents engaged in misleading or deceptive conduct by representing that their products were the same as, or emanated from the same trade source as, Holden products, which was not the case. The court rejected the respondents' claims that the products sold did not include the Holden caps and found the evidence provided to be a recent invention. The court also concluded that the respondents' products were substantially similar in overall impression to the registered designs, thus constituting design infringement.
In light of these findings, the court directed the parties to confer and bring in orders to give effect to these reasons for decision by no later than 4:00 pm on 3 June 2011.
Orders
Orders of the court
1. The parties are directed to confer and bring in orders to give effect to these reasons for decision by no later than 4:00 pm on 3 June 2011.
Note:
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
In addition to the advertisements, Mr Pieris exhibited an eBay “Feedback Profile” for the “wheel_tech” eBay account, which included customers who had purchased “19 INCH VE SUPERSPORT STYLE WHEELS” from the eBay account. The feedback profile listed 21 such transactions, each for $699 per set of wheels, a total of $14,679. The relevant entries are dated between October 2009 and April 2010. Again, the goods were dealt with under and by reference to the term “HOLDEN”.(c) Later evidence of Mohamed and Moussa Taleb The trial of this proceeding was held on 18 April 2011. On 8 April 2011, Mohamed Taleb filed an affidavit in these proceedings in which he asserted, for the first time, that the “Supersport” style wheels supplied by Taleb Tyres did not include the caps on which the relevant Trade Mark appears. I reject this evidence. It is directly contradicted by the contemporaneous advertisements placed by Taleb Tyres on eBay, namely the 19″ Advertisement and the Wheels and Tyres Advertisement, both of which referred to the fact that Holden caps were included: see [26] and [27] above. It is also directly contradicted by the products themselves. Each of the wheel centre caps, the wheels and the label on the packaging of the “Supersport” style wheels bears the same part designation “S7”, which suggests that the components were manufactured, packaged and imported together. It is also recent invention. In addition to the contemporaneous advertisements, it is contrary to the fact that Mohamed Taleb failed to refer to or assert that the “Supersport” style wheels supplied by Taleb Tyres did not include the caps on which the relevant Trade Mark appears in any of the following contexts:1.in telephone discussions with the applicants’ solicitor on 26 February 2010 when they discussed the removal of the 19″ Advertisement from the eBay website;2.in response to a letter of demand sent by the applicants’ solicitor dated 10 March 2010 which included allegations of infringement of the Trade Marks by the sale of “Supersport” style wheels to Bob Jane Bankstown;3.in response to further emails sent by the applicants’ solicitor dated 17 and 25 March 2010;4.in the Fast Track Response dated 24 November 2010; and5.in his initial affidavit sworn on 24 November 2010.Moreover, there was no reference to the claim in any letter sent by the respondents’ solicitors to the applicants’ solicitors, including the letter dated 11 January 2011. For these reasons it is not necessary to further consider the respondents’ submissions regarding the wheel centre caps. Moussa Taleb was called by the respondents to give evidence. He also filed an affidavit sworn on 8 April 2011 in which he said that he drafted these advertisements but “inadvertently included the word, ‘Holden’ because he had used a template which contained that word in relation to sales of other Holden wheels (inclusive of wheel centre caps) which Taleb Tyres had acquired as a result of trade-ins by customers”. His further evidence was that the wheels that were sold on eBay described as “Supersport” style wheels would have been supplied without any caps whatsoever but that if someone particularly wanted caps, they would supply generic caps that had no markings on them. I also reject this evidence. It is also recent invention. I do not accept that the text in the 19″ Advertisement and the Wheels and Tyres Advertisement was extracted from a template for the sale of second hand goods. The products offered for sale in these advertisements were new goods which were identified in a precise manner. Moreover, as the applicants’ Counsel submitted, these advertisements offered delivery to all parts of Australia. The advertisements were not advertisements for one or two products but advertisements drafted to offer for sale a significant volume of these products, which is what Taleb Tyres did: see [28] above.
Decision
Reasons for decision
Mohamed Taleb’s evidence was to the effect that the wheel centre caps bearing the Holden Lion Mark were added to the products by Bob Jane and that the applicants were required to call evidence from Bob Jane. I reject that contention. As explained above, there is more than sufficient evidence to reject the contention that each of the “Supersport” style wheels supplied by Mohammed Taleb and Taleb Tyres did not include caps bearing the Holden Lion Mark. (3) Conclusion on Trade Mark Infringement I therefore find that:1.each of the “Supersport” style wheels supplied by Mohammed Taleb and Taleb Tyres did include the centre wheel caps bearing the Holden Lion Mark; and2.each of the advertisements used the word “Holden” in respect of the products they sold,such that this conduct constituted infringement of the Holden Lion Mark, and there was both passing off of the wheels sold and/or advertised as genuine Holden wheels and a misrepresentation that they were manufactured by or under the licence of the applicants, when they were not. (B) TRADE PRACTICES ACT AND FAIR TRADING ACT INFRINGEMENT As just noted, I have concluded that in relation to both the trap purchases and the sales on eBay, each sale amounted to passing off the wheels as genuine Holden wheels and a misrepresentation that the wheels were manufactured by or under the licence of the applicants, when they were not. In particular, it is clear that Taleb Tyres represented that their products were the same as, or emanated from the same trade source as, the Holden products, or were authorised by or associated with the applicants (when they were not), thereby engaging in misleading or deceptive conduct in breach of ss 52 and 53(a) of the TPA and ss 42 and 44(a) of the FTA, and passing off the products as certified Holden products when they were not.(C) DESIGN INFRINGEMENT The applicants submitted that products sold by the respondents also infringed the Designs. The question is whether the products sold by the respondents embody designs that are “identical to, or substantially similar in overall impression to” the Designs: s 71(1)(a) of the Designs Act. The principles relevant to infringement of designs registered under the Designs Act were conveniently summarised in LED Technologies Pty Ltd v Elecspess Pty Ltd (2008) 80 IPR 85 at [68] – [83]. As those paragraphs make clear:1.infringement is determined by comparing the allegedly infringing product against the registered design, not by comparing a product embodying the registered design against the infringing product: s 71;2.infringement is determined by comparing only the visible features of the design to the infringing product: ss 7 and 19;3.the Court assesses whether the allegedly infringing design is substantially similar in overall impression to the registered design by comparing the allegedly infringing product to the registered design in the context of the whole appearance of the designs: see s 71 (read with s 19 of the Designs Act);4.the whole appearance is relevant as the context for the design even though, strictly, the design is only the distinctive visual features of the product. Greater weight is given to distinctive features than to other parts of the design, although still in the context of the whole of the appearance; and5.in determining whether a design is infringed the Court must give more weight to similarities between the designs than to differences between them: s 19(1).
Ratio Decidendi
Legal Principle Established
Full text does not contain this section.