Hit Entertainment Limited v Lodin - [2006] FCA 722

FEDERAL COURT OF AUSTRALIA
HIT Entertainment Limited v Lodin [2006] FCA 722
CORRIGENDUM
HIT ENTERTAINMENT LIMITED & ANOR v BASHIR LODIN
NSD 147 OF 2006
STONE J
8 JUNE 2006 (CORRIGENDUM 13 JUNE 2006)
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 147 OF 2006

BETWEEN:

HIT ENTERTAINMENT LIMITED
FIRST APPLICANT

GULLANE (THOMAS) LIMITED
SECOND APPLICANT

AND:

BASHIR LODIN
RESPONDENT

JUDGE:

STONE J

DATE OF ORDER:

6 JUNE 2006

WHERE MADE:

SYDNEY

CORRIGENDUM
1.On the orders page delete “DATE OF ORDER: 8 JUNE 2006”, insert “DATE OF ORDER: 6 JUNE 2006”.
2.In the certification delete “6 June 2005”, insert “6 June 2006”.
3.In the certification delete “Date of Judgment”, insert “Date of Reasons”.

I certify that the preceding three (3) numbered paragraph are a true copy of the Corrigendum to the Reasons for Judgment herein of the Honourable Justice Stone.

Associate:
Dated: 13 June 2006

FEDERAL COURT OF AUSTRALIA
HIT Entertainment Limited v Lodin [2006] FCA 722
INTELLECTUAL PROPERTY – trade marks – infringement - importation of infringing articles – offering for sale and sale of infringing articles
TRADE PRACTICES – misleading and deceptive conduct – passing off – false representations that infringing articles were authorised by owners of trade marks
PRACTICE AND PROCEDURE – application for default judgment
Trade Marks Act 1995 (Cth) s 132
Fair Trading Act 1999 (Vic) ss 9, 12
Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433 referred to
Australian Securities Commission v Macleod (1994) 54 FCR 309 applied
HIT ENTERTAINMENT LIMITED & ANOR v BASHIR LODIN
NSD 147 OF 2006
STONE J
8 JUNE 2006
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 147 OF 2006

BETWEEN:

HIT ENTERTAINMENT LIMITED
FIRST APPLICANT

GULLANE (THOMAS) LIMITED
SECOND APPLICANT

AND:

BASHIR LODIN
RESPONDENT

JUDGE:

STONE J

DATE OF ORDER:

8 JUNE 2006

WHERE MADE:

SYDNEY

THE COURT DECLARES THAT:
1.The Respondent has infringed Australian registered trademarks 789198, 826787 and 826795 (together, the Bob the Builder Marks).
2.The Respondent has infringed Australian registered trademarks 618252 and 903053 (together, the Thomas the Tank Engine Marks).
3.The Respondent has, in contravention of section 9 of the Fair Trading Act 1999 (Vic), engaged in conduct, in trade or commerce, that is misleading and deceptive or likely to mislead or deceive by selling or offering for sale goods which bear:
(a)one or more of the Bob the Builder Marks, which are not goods of the First Applicant; and/or
(b)one or more of the Thomas the Tank Engine Marks, which are not goods of the Second Applicant.

4.The Respondent has, in contravention of section 12 of the Fair Trading Act 1999 (Vic), in trade or commerce, in connection with the supply or possible supply of goods, made false representations by selling or offering for sale goods which bear:
(a)one or more of the Bob the Builder Marks, which are not goods of the First Applicant; and/or
(b)one or more of the Thomas the Tank Engine Marks, which are not goods of…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2006] FCA 722
Decision Date: 6 JUNE 2006

CaseChat Overview and Summary

The case of Hit Entertainment Limited v Lodin was heard by Justice Gilmour of the Federal Court of Australia. The applicants, Hit Entertainment Limited and its subsidiary, sought an injunction against the respondent, Lodin, for the infringement of their registered trademarks. The trademarks in question were associated with the popular children's characters "Bob the Builder" and "Thomas the Tank Engine." The applicants alleged that the respondent had attempted to import and sold clothing bearing these trademarks without authorisation, thus infringing their intellectual property rights.

The central legal issues before the court were whether the respondent had indeed infringed the applicants' trademarks and, if so, what relief should be granted. The applicants argued that the respondent's actions constituted trademark infringement as they used the characters and associated images without permission, which was evident from the affidavits and testimonies presented. The respondents' conduct, as detailed in the affidavits, involved the sale and attempted sale of counterfeit goods bearing the trademarked names and images. The court had to determine whether these actions amounted to trademark infringement and, if so, what the appropriate remedy would be.

Justice Gilmour accepted the evidence presented by the applicants and found that the respondent had indeed engaged in activities that constituted trademark infringement. The court accepted the testimonies and affidavits as credible and sufficient to establish the respondent's unauthorised use of the trademarks. Based on this evidence, the court ruled in favour of the applicants, granting them an injunction against the respondent to prevent further infringement of their trademarks. The court also ordered the delivery of all infringing goods to the applicants, the destruction of seized counterfeit goods, and awarded damages to the applicants to be determined at a later date.

In summary, the court found the respondent liable for trademark infringement and issued comprehensive orders to protect the applicants' intellectual property rights. These orders included injunctions against further infringement, the delivery of all infringing goods, the destruction of seized counterfeit goods, and the awarding of damages to the applicants. The court further ordered the respondent to pay the applicants' costs of the proceeding.

Orders

Orders of the court

1. Judgment be entered in favour of the Applicants against the Respondent.

2. The Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the Bob the Builder Marks.

3. The Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the Thomas the Tank Engine Marks.

4. The Respondent, by himself, his servants or agents or otherwise, be restrained from making, importing, promoting, distributing, offering for sale or selling any goods or services under or by reference to:

(a) the name BOB THE BUILDER;

(b) any name that is substantially identical with or deceptively similar to the name BOB THE BUILDER;

(d) any mark substantially identical with or deceptively similar to any of the Bob the Builder Marks

without the licence of the First Applicant.

5. The Respondent, by himself, his servants or agents or otherwise, be restrained from making, importing, promoting, distributing, offering for sale or selling any goods or services under or by reference to:

(a) the name THOMAS THE TANK ENGINE;

(b) any name that he substantially identical with or deceptively similar to the name THOMAS THE TANK ENGINE;

(d) any mark substantially identical with or deceptively similar to any of the Thomas the Tank Engine Marks

without the licence of the Second Applicant.

6. The Respondent deliver up to the First Applicant all goods in the Respondent’s possession, or in the possession of any servant or agent of the Respondent, which bear:

(a) the name BOB THE BUILDER;

(b) any name that is substantially identical with or deceptively similar to the name BOB THE BUILDER;

(d) any mark substantially identical with or deceptively similar to any of the Bob the Builder Marks

7. The Respondent deliver up to the Second Applicant all goods in the Respondent’s possession, or in the possession of any servant or agent of the Respondent which bear:

(a) the name THOMAS THE TANK ENGINE;

(b) any name that he substantially identical with or deceptively similar to the name THOMAS THE TANK ENGINE;

(d) any mark substantially identical with or deceptively similar to any of the Thomas the Tank Engine Marks.

8. The Respondent pay to the Applicants damages in an amount to be agreed and in default of agreement to be determined by the Court on the application of the Applicants such application to be made no later than 10 August 2006.

9. Leave is granted for all goods currently in the possession of the Australian Customs Service pursuant to seizure number V04/06376 to be destroyed.

10. Leave is granted for all goods currently in the possession of the Australian Customs Service pursuant to seizure number V05/08293 to be destroyed.

11. The Respondent pay the costs of the Applicants in this proceeding.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

In their written submissions the applicants identify the offending conduct of the respondent as follows:‘(a)the attempted importation, through his agent Bakhtyar Amani, of a range of clothing bearing the names “Bob the Builder” and “Thomas the Tank Engine” and related images in October 2004 …(b)the offering for sale and sale of children’s clothing featuring the names “Bob the Builder” and “Thomas the Tank Engine”, and images of more characters, in October 2004 …(c)the attempted importation of a range of clothing bearing the names “Bob the Builder” and “Thomas the Tank Engine” and related images in October 2005 …(d)the offering for sale and sale of children’s clothing featuring the names “Bob the Builder” and “Thomas the Tank Engine”, and images of those characters in May 2006…’The applicants’ evidence The applicants have filed a number of affidavits in support of their claims. In addition to affidavits of service that I do not need to dwell on, they are:(a)affidavit of Craig Raymond Douglas, a licensed enquiry agent, sworn on 23 May 2006;(b)affidavit of Dani Muntz, Operations Manager for Nationwide Research Group Pty Limited, sworn on 24 May 2006;(c)three affidavits of Rebekah Frances Gay, solicitor, affirmed on 25 May, 5 June and 6 June 2006 respectively;(d)affidavit Joyce D Slocum, General Counsel and Executive Vice President of the HIT Entertainment group of companies, affirmed on 25 May 2006;(e)Luke Muntz, Field Agent for Nationwide Research Group Pty Limited, sworn on 26 May 2006. I accept the evidence in these affidavits which, together, present a coherent picture of the relevant facts in this matter. This evidence has satisfied me that, for reasons given below, the applicants have made out their claims and that I am justified in making the orders sought. Trade mark infringement The first applicant is the registered proprietor of the following trademarks in respect of several classes of goods: 789198 (BOB THE BUILDER); 826787 (a graphic of Bob the Builder); and 826795 (a graphic including the words “Bob the Builder”). I shall refer to these trade marks collectively as the Bob the Builder Marks. The second applicant is a wholly-owned subsidiary of the first applicant, and is the registered proprietor of the following trademarks in respect of several classes of goods: 618252 (a graphic including the words “Thomas the Tank Engine & Friends”); and 903053 (a graphic including the words “Thomas & Friends”). I shall refer to these trade marks collectively as the Thomas Marks. The first applicant is the licensee of the Thomas Marks in Australia. The applicants claim that the respondent’s conduct, which was not authorised by the applicants, infringed their trademarks. The statement of claim sets out detailed particulars of the claims which are supported by the evidence of Mr Douglas, Ms Dani Muntz and Ms Gay. Ms Muntz gave evidence that she had observed Mr Lodin at his stall in the Caribbean Gardens & Market in Scoresby, Victoria, offering the offending goods for sale. Ms Slocum’s evidence supports the claim that the respondent’s activity was not authorised by the applicants. Mr Douglas gave evidence to the same effect as Ms Muntz and identified the relevant goods as counterfeit because of their poor quality and general appearance. Ms Gay confirmed Mr Douglas’s account.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 147 OF 2006

BETWEEN:	HIT ENTERTAINMENT LIMITED FIRST APPLICANT GULLANE (THOMAS) LIMITED SECOND APPLICANT
AND:	BASHIR LODIN RESPONDENT
JUDGE:	STONE J
DATE OF ORDER:	6 JUNE 2006
WHERE MADE:	SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 147 OF 2006