FEDERAL COURT OF AUSTRALIA
Hugo Boss AG v Hardge [2024] FCA 1325
File number(s): VID 373 of 2024 Judgment of: NESKOVCIN J Date of judgment: 19 November 2024 Catchwords: PRACTICE AND PROCEDURE – application for default judgment pursuant to r 5.23(2)(c) of the Federal Court Rules 2011 (Cth) – where substituted service orders made – where respondent in default of appearance – allegations of trade mark infringement, misleading and deceptive conduct and passing off – whether the applicant is entitled to relief – relief granted Legislation: Australian Consumer Law, Schedule 2 of the Competition and Consumer Act 2010 (Cth) ss 18, 232, 29(g)-(h)
Business Names Registration Act 2011 (Cth) s 51(1)
Federal Court of Australia Act 1976 (Cth) s 22
Trade Marks Act 1995 (Cth) ss 120, 126(1)(a)-(b)
Federal Court Rules 2011 (Cth) rr 5.22, 5.23(2), 10.24, 30.21(1)(b)(i)
Cases cited: Australian Competition and Consumer Commission v Employsure Pty Ltd (2021) 392 ALR 205; [2021] FCAFC 142
Australian Competition and Consumer Commission v Google LLC (No 2) [2021] FCA 367
Chamberlain Group, Inc v Giant Alarm System Co, Ltd (No 2) [2019] FCA 1606
Christian v Societe Des Produits Nestle Sa [2015] FCAFC 153; (2015) 115 IPR 421
Dr Martens Australia Pty Ltd v Bata Shoe Co of Australia Pty Ltd (1997) 75 FCR 230; [1997] FCA 505
Macquarie Bank Ltd v Seagle [2008] FCA 1417
Macquarie Bank v Seagle (2005) 146 FDr MCR 400; [2005] FCA 1239
Microsoft Corporation v Short [2011] FCA 247
Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186; [2023] HCA 8
Speedo and Vitaco Health IP Pty Ltd v AFI Cosmetic Pty Ltd (No 3) [2024] FCA 598
Speedo Holdings BV v Evans (No 2) [2011] FCA 1227
State Street Global Advisors Trust Co v Maurice Blackburn Pty Ltd (No 2) (2021) 164 IPR 420
Division: General Division Registry: Victoria National Practice Area: Intellectual Property Sub-area: Trade Marks Number of paragraphs: 46 Date of hearing: 15 October 2024 Counsel for the Applicant: Mr A Middleton Solicitor for the Applicant: Corrs Chambers Westgarth Counsel for the Respondent The Respondent did not appear ORDERS
VID373 of 2024 BETWEEN: HUGO BOSS AG
Applicant
AND: BILLY HARDGE
Respondent
ORDER MADE BY:
NESKOVCIN J
DATE OF ORDER:
19 NOVEMBER 2024
THE COURT NOTES THAT:
A.In these orders:
(i)Hugo Boss Trade Marks means the trade marks set out in Schedule 1 to these orders;
(ii)Infringing Marks means the TBOSS Word Mark and the TBOSS Device Mark;
(iii)TBOSS Word Mark means the word “TBOSS”.
(iv)TBOSS Device Mark is the following device:
THE COURT ORDERS THAT:
1.Pursuant to s 5.23 of the Federal Court Rules 2011 (Cth), judgment be given against the Respondent.
2.Pursuant to s 126(1) of the Trade Marks Act1995 (Cth), the Respondent be restrained, whether by himself, his employees or agents or otherwise howsoever, from:
(a)infringing any of the Hugo Boss Trade Marks by using any of them or any name(s), word(s) mark(s), sign(s) or…
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- Case
- [2024] FCA 1325
- Decision Date
CaseChat Overview and Summary
The central legal issues revolved around the validity of the trade mark infringement claims, the respondent's failure to respond, and the appropriate relief to be granted to the applicant. Specifically, the court had to decide if the applicant was entitled to an order for default judgment, injunctive relief, and damages or an account of profits.
The court found that the respondent's failure to respond to the proceedings justified the granting of a default judgment. The respondent had not provided any evidence to counter the applicant's claims, and had been duly served with the proceedings. The court further held that the respondent's use of the "TBOSS" mark was likely to cause confusion with the Hugo Boss Trade Marks, and that the respondent's conduct constituted trade mark infringement, misleading and deceptive conduct, and passing off. Consequently, the court granted the relief sought by the applicant, including injunctive relief, an order for damages or an account of profits, and an order for the cancellation of the respondent's domain name and business names.
The court also ordered the respondent to deliver up all infringing goods and materials, and to pay the applicant's costs of the proceeding. The decision underscored the importance of protecting trade marks and intellectual property rights, and the court's willingness to grant relief to the applicant in the absence of any defence from the respondent.
Orders
Orders of the court
1. Pursuant to s 5.23 of the Federal Court Rules 2011 (Cth), judgment be given against the Respondent.
2. Pursuant to s 126(1) of the Trade Marks Act 1995 (Cth), the Respondent be restrained, whether by himself, his employees or agents or otherwise howsoever, from:
(a) infringing any of the Hugo Boss Trade Marks by using any of them or any name(s), word(s) mark(s), sign(s) or device(s) which are substantially identical with or deceptively similar to any of the Hugo Boss Trade Marks, including but not limited to by using the TBOSS Word Mark and/or TBOSS Device Mark in the course of trade on or in relation to:
(i) any of the goods in respect of which any of the Hugo Boss Trade Marks are registered; or
(ii) goods of the same description as any of the goods in respect of which any of the Hugo Boss Trade Marks are registered,
not manufactured or provided by or under the licence or authority of the Applicant; and
(b) using either of the Infringing TBOSS Marks or any other name, word or trade mark misleadingly or deceptively similar to the Hugo Boss Trade Marks,
or otherwise procuring or inducing any other person to do any of the acts specified in this order 2.
3. Pursuant to s 232 of the Australian Consumer Law, Schedule 2 of the Competition and Consumer Act 2010 (Cth), the Respondent take all such steps as are necessary or desirable to cancel the domain name registration for https://tboss.com.au/.
4. Pursuant to s 51(1) of the Business Names Registration Act 2011 (Cth), the Respondent take all such steps as are necessary or desirable to cancel business name registration number 630277986 for “Tennis Boss Sportswear” and business name registration number 658764295 for “TBOSS”.
5. Pursuant to s 22 of the Federal Court of Australia Act 1976 (Cth), the Respondent deliver up on oath to the Applicant or its duly authorised agents for destruction under supervision:
(a) all goods in the possession, power, custody or control of the Respondent, his employees or agents, bearing any of the Hugo Boss Trade Marks or any name(s), word(s), mark(s), sign(s) or device(s) which are substantially identical with or deceptively similar to any of the Hugo Boss Trade Marks, including but not limited to the Infringing TBOSS Marks, without the licence or authority of the Applicant; and
(b) all catalogues, price lists, brochures and other documents and materials, including materials which are or which are capable of being stored, generated or transmitted via any electronic media in the possession, power, custody or control of the Respondent, his employees or agents, bearing any of the Hugo Boss Trade Marks or any name(s), word(s), mark(s), sign(s) or device(s) which are substantially identical with or deceptively similar to any of the Hugo Boss Trade Marks, including but not limited to the Infringing TBOSS Marks, without the licence or authority of the Applicant.
6. Pursuant to s 126(1)(b) of the Trade Marks Act, the Respondent pay to the Applicant, at the Applicant's option:
(a) damages with interest; or
(b) an account of profits,
in a sum to be assessed by the Court.
7. The Respondent pay the Applicant's costs of and incidental to this proceeding, to be taxed.
8. Liberty to apply.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
SCHEDULE 1
MARK
REGISTRATION NUMBER
CLASS
BOSS
345175
class: 25 clothing of all kinds, including headwear and footwear
BOSS
442954
class: 25 clothing, clothing accessories, headgear, footwear, all being goods in Class 25 and all other goods in class 25
BOSS
647108
class: 25 clothing, clothing accessories in
this class, headgear and footwear
BOSS
902472
class: 9 eyewear and parts thereof Class: 14 clocks and watches, jewellery
Class: 18 goods made of leather and leather imitations (included in this class); belts made of textile or plastic materials, suitcases and bags, umbrellas and parasols
class: 24 table linen and bed linen, woven fabrics, curtains, bathroom textiles, namely towels; handkerchiefs made of textile material
class: 25 Articles of clothing for ladies, gentlemen and children, especially suits, coats, jackets, trousers, shirts, raincoats, outer garments and underwear, socks, stockings, tricots, pullovers, knitted shirts; footwear and head coverings, ties, gloves, belts, braces, bathrobes
class: 28 gymnastic and sports equipment; balls
Class: 34 tobacco products, lighters
BOSS HUGO BOSS
442956
class: 25 Clothing, clothing accessories, headgear, footwear, all being goods in Class 25 and all other goods in Class 25
BOSS
461876
class: 42 Wholesaling and retailing of clothing, clothing accessories, footwear, glasses and parts and accessories therefor, tobacco products, cigarette papers, cigarette holders, smokers' articles, matches, gymnastic and sports articles, games, toys and playthings, leather goods, cases, bags, umbrellas, parasols, belts made of leather, articles made of or coated with precious metals and precious metal
alloys, jewellery, clocks and watches
BOSS
650119
class: 42 Wholesaling and retailing of clothing, clothing accessories, footwear, headwear, sunglasses and spectacles and parts and accessories therefor, cigarette holders, smokers' articles, gymnastic and sports articles and equipment, games, toys and playthings, leather goods, including small articles of leather, imitation leather goods, wallets, cases, key cases, handbags, trunks, travelling bags, purses, briefcases, travelling sets, bags for climbers (rucksacks), bags, umbrellas, parasols, belts, articles made of or coated with precious metals and precious metal alloys, jewellery, clocks and watches, textiles and textile goods, including cloths, curtains, blinds, household linen, table linen, bed
linen, bed covers and table covers
BOSS HUGO BOSS
889514
class: 9 Spectacles and parts thereof
class: 14 Precious metals and their alloys as well as goods made thereof or coated therewith (included in this class); jewellery, costume jewellery; clocks and watches
class: 18 Leather and leather imitations as well as goods made therefrom (included in this class); in particular, small articles of leather; trunks and suitcases; bags; umbrellas and parasols
class: 24 Woven fabrics and textile goods (included in this class), in particular, handkerchiefs and towels; bed and table linen; textile wallpapers
class: 25 Articles of clothing for ladies, gentlemen and children; socks and stockings; headgear, underwear; nightwear; swimwear; bathrobes; belts; scarves and shawls; accessories, namely head scarves, neck scarves, shoulder scarves, pocket kerchiefs; ties; gloves; footwear; belts made of leather
class: 28 Games, toys; gymnastic and sports equipment, in particular, skies, golf clubs and tennis rackets; balls; gymnastic and sports articles (included in this class)
class: 34 Tobacco and tobacco products; smokers` articles; matches
class: 35 Advertising; business administration; business management; sales consultancy
class: 42 Planning of business premises
Background
Background to the litigation
Evidence
Evidence Before The Court
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Decision
Reasons for decision
Ratio Decidendi
Legal Principle Established
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