Gram Engineering Pty Ltd v Bluescope Steel Ltd

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FEDERAL COURT OF AUSTRALIA

Gram Engineering Pty Ltd v Bluescope Steel Ltd [2018] FCA 539

File number(s): NSD 474 of 2011
Judge(s): JAGOT  J
Date of judgment: 20 April 2018
Catchwords: DAMAGES – assessment of damages – infringement of registered design of fencing panel
Legislation:

Designs Act 1906 (Cth) ss 30, 32B

Designs Act 2003 (Cth) s 156

Federal Court of Australia Act 1976 (Cth) ss 51A, 52
Cases cited:

Aristocrat Technologies Australia Pty Limited (ACN 001 660 715) v DAP Services (Kempsey) Pty Limited (in liquidation) (ACN 055 803 542) [2007] FCAFC 40; (2007) 157 FCR 564

Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2017] FCA 250; (2017) 124 IPR 23

Bluescope Steel Ltd v Gram Engineering Pty Ltd [2014] FCAFC 107; (2014) 313 ALR 311

Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50; (1968) 122 CLR 25

Elwood Clothing Pty Ltd (ACN 079 393 696) v Cotton On Clothing Pty Ltd (ACN 052 130 462) [2009] FCA 633; (2009) 81 IPR 378

Enzed Holdings Ltd v Wynthea Pty Ltd [1984] FCA 373; (1984) 3 IPR 619

Flashback Holdings Pty Ltd v Showtime DVD Holdings Pty Ltd (No 6) [2010] FCA 694; (2010) 87 IPR 346

Gerber Garment Technology Inc v Lectra Systems Ltd (1997)114 R.P.C. 443

Gram Engineering Pty Ltd v Bluescope Steel Ltd [2013] FCA 508; (2013) 106 IPR 1

Norm Engineering v Digga Australia [2007] FCA 761; (2007) 162 FCR 1

Placer (Granny Smith) Pty Ltd v Thiess Contractors Pty Ltd [2003] HCA 10; (2003) 196 ALR 257

Pneumatic Tyre Co Ltd v Puncture Proof Pneumatic Tyre Co Ltd (1899) 16 R.P.C. 209

Polygram Pty Ltd v Golden Editions Pty Ltd [1997] FCA 687; (1997) 76 FCR 565

Sellars v Adelaide Petroleum NL [1994] HCA 4; (1994) 179 CLR 332

TS and B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) [2007] FCA 151; (2007) 158 FCR 444
Date of hearing: 28 February – 8 March 2018
Registry: New South Wales
Division: General Division
National Practice Area: Intellectual Property
Sub-area: Copyright and Industrial Designs
Category: Catchwords
Number of paragraphs: 234
Counsel for the Applicant: G Laughton SC with J O’Sullivan
Solicitor for the Applicant: Stacks Champion
Counsel for the Respondent: I M Jackman SC with J M Beaumont and W H Wu
Solicitor for the Respondent: King & Wood Mallesons

ORDERS

NSD 474 of 2011
BETWEEN:

GRAM ENGINEERING PTY LTD (ACN 002 193 311)

Applicant
AND:

BLUESCOPE STEEL LIMITED (ACN 000 011 058)

Respondent

JUDGE:

JAGOT  J

DATE OF ORDER:

20 April 2018

THE COURT ORDERS THAT:

1.Within 14 days of the date of these orders, the parties are to submit agreed or competing short minutes of order in accordance with the reasons for judgment including as to costs or a proposed timetable if there is any dispute about costs.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011

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Details
Case
[2018] FCA 539
Decision Date

CaseChat Overview and Summary

Gram Engineering Pty Ltd initiated legal proceedings against Bluescope Steel Ltd, claiming infringement of a registered design for a fencing panel. The Federal Court was tasked with assessing the damages due to Gram for Bluescope's infringement. The primary legal issue revolved around the appropriate quantification of damages for the infringement of the registered design. Gram sought compensation for lost profits, while Bluescope contested the amount claimed.

The court considered the evidence presented regarding lost profits, acknowledging that Gram's net profits would be reduced by PAYG tax payments. The court ruled that the damages should not be reduced for this reason, as the tax payments were a necessary expense. Additionally, the court determined that pre-judgment interest should be awarded from 16 April 2005, based on pre-tax loss of profits, at the statutory rate. The court also decided to reserve the costs of the proceedings, in line with Bluescope's request.

Following the court's analysis, judgment was entered in favour of Gram Engineering Pty Ltd for the amount of $2,078,338. The court ordered the parties to submit short minutes of order within 14 days, reflecting the reasons for judgment and addressing any disputes regarding costs. The Federal Court's decision was clear in affirming Gram's right to compensation for the infringement of its registered design and provided a structured approach for resolving any remaining issues related to costs.

Orders

Orders of the court

1. Within 14 days of the date of these orders, the parties are to submit agreed or competing short minutes of order in accordance with the reasons for judgment including as to costs or a proposed timetable if there is any dispute about costs.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

Costs should be reserved as Bluescope requested.Conclusions For the reasons set out above, judgment should be entered for Gram in the amount of $2,078,338. It is not appropriate that there be a reduction of interest on account of the fact that Gram would only have benefited from its net profits after paying PAYG tax each month at the company rate of 30%. Pre-judgment interest should be awarded from 16 April 2005 onwards, based on pre-tax loss of profits, at the rate provided for in Part 2 of Interest on Judgments Practice Note (GPN-INT). Costs should be reserved. The parties should submit short minutes of orders reflecting these reasons for judgment, and providing a timetable for resolution of any issue as to costs, within 14 days.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.