Louis Vuitton Malletier SA v American Vintage Clothing Pty Ltd

[2003] FCA 200

FEDERAL COURT OF AUSTRALIA

Louis Vuitton Malletier SA v American Vintage Clothing Pty Ltd [2003] FCA  200

TRADE MARKS – infringement – summary judgment

Trade Marks Act 1995 (Cth) s 120(1)

LOUIS VUITTON MALLETIER SA v AMERICAN VINTAGE CLOTHING PTY LTD AND OTHERS
V 657 OF 2002

HEEREY J
7 MARCH 2003
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V657 OF 2002

BETWEEN:	LOUIS VUITTON MALLETIER SA APPLICANT
AND:	AMERICAN VINTAGE CLOTHING PTY LTD and OTHERS RESPONDENT

JUDGE:	HEEREY J
DATEOF ORDER:	7 MARCH 2003
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1.Pursuant to O 6 rr 2 and 8 of the Federal Court Rules, Clothing Outlet Pty Ltd (ACN 056 273 851) be joined as a Respondent to this proceedings.

2.The Applicant have leave to amend its Application and Amended Statement of Claim consequent upon:

a.The orders made in paragraphs 1 and 2 of the Order of Mr Deputy Registrar Efthim on 11 December 2002 adding the Fifth Respondent and giving leave to amend the Statement of Claim;

b.        The order made in paragraph 1 of this order.

3.There be summary judgment for the Applicant pursuant to 0 20 r 1 in the following terms:

a.The Court declares that the use by the Fifth and Sixth Respondents of the LOUIS VUITTON Trade Marks set out in this paragraph constituted an infringement of the LOUIS VUITTON Trade Marks;

i.Australian Registered Trade Mark No. 852136 for the FLOWER IN DIAMOND WITH CONCAVE SIDES DEVICE in class 25;

ii.Australian Registered Trade Mark No. 852138 for the GROT. FLOWER IN CIRCLE DEVICE in class 25;

iii.Australian Registered Trade Mark No. 852140 for the GROT FLOWER DEVICE in class 25;

iv.Australian Registered Trade Mark No 364941 for LV VL and DEVICE in class 25; and

v.Australian Registered Trade Mark No 366170 for LV VL and DEVICE in class 25; and

vi.Australian Registered Trade mark No. 544420 for LV and DEVICE in class 25,

(hereinafter referred to as the “LOUIS VUITTON Trade Marks”)

b.The Second, Fifth and Sixth Respondents each be permanently restrained whether by themselves, their respective directors, officers, employees or agents or otherwise howsoever from infringing any of the LOUIS VUITTON Trade Marks and, in particular, from using the LOUIS VUITTON Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto in the course of trade on or in relation to hats, headwear, headgear and clothing which are not manufactured or supplied by or under the authority of the Applicant;

c.The Second, Fifth and Sixth Respondents deliver up on oath to the Applicant or its duly authorised agents for destruction under supervision all goods in the possession, power, custody or control of the Second or Fifth Respondents, or their respective directors, officers, employees or agents to which the LOUIS VUITTON Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto has been applied without the licence or authority of the Applicant;

d.The Second, Fifth and Sixth Respondents deliver up on oath to the Applicant or its duly authorised agent for destruction under supervision all catalogues, price lists, brochures and other documents and materials in the possession, power, custody or control of the Second or Fifth Respondents or their respective directors, officers, employees or agents, which bear the LOUIS VUITTON Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto and which were not produced by or under the authority of the Applicant;

e.The Fifth and Sixth Respondents pay the Applicant damages for infringement of the LOUIS VUITTON Trade Marks, to be assessed together with interest thereon, or, at the option of the Applicant on a date to be fixed, the Fifth and Sixth Respondents account for the profits made by them by the said infringements and pay to the Applicant the amount found to be due on the taking of such account, together with interest thereon; and

f.The Fifth and Sixth Respondents pay the Applicant’s costs of incidental to the proceedings, including the hearing of this Notice of Motion, insofar as those costs relate to the Second, Fifth or Sixth Respondents or any of them.

4.The Second, Fifth and Sixth Respondents provide discovery verified by affidavit to the Applicant within 28 days of the making of these orders in respect of an accounting of the sales made by them or any related company by the said infringement of the LOUIS VUITTON Trade Marks, including but not limited to:

a.All documents relating to the manufacturing, purchase, importation and/or acquisition (on consignment or otherwise) by the Second, Fifth or Sixth Respondents or any related company or their respective directors, employees, servants or agents of any goods to which the LOUIS VUITTTON Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto has been applied without the licence or authority of the Applicant (hereinafter referred to as the “Infringing Goods”)

b.All documents relating to the wholesale, retail sale and/or other sale or disposal of the Infringing Goods by the Second, Fifth or Sixth Respondents or any related company or their respective directors, employees, servants or agents (including all banking documents); and

c.All other documents which would assist in the calculation of the profit made by the Second, Fifth or Sixth Respondents or any related company from such sales or disposal.

5.The Second, Fifth and Sixth Respondents provide to the Applicant on Affidavit, within 7 days of the making of these orders, the name(s), address(es), telephone and facsimile number(s) and all other relevant contact details of each supplier that has supplied the Infringing Goods to them, or any related company or any of their respective directors, employees, servants or agents, by way of wholesale, export, consignment or otherwise.

6.The hearing in relation to the assessment of damages, or alternatively, the account of profits arising from the said infringements, be adjourned to a date to be fixed by the Court.

7.        The respondents to pay the applicant's costs.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V657 OF 2002

BETWEEN:	LOUIS VUITTON MALLETIER SA APPLICANT
AND:	AMERICAN VINTAGE CLOTHING PTY LTD and OTHERS RESPONDENT

JUDGE:	HEEREY J
DATE:	7 MARCH 2003
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. This is an application for summary judgment in a claim for trade mark infringement.  The test for summary judgment is whether there is an issue fit to be tried.  One must keep in mind that the ultimate test, of course, is the balance of probabilities.  The mere fact that a respondent avers in general terms something that might amount to a defence does not necessarily stand in the way of summary judgment if, on the material as a whole, it is clear that there is not a genuine dispute in this matter.

2. I am satisfied that, upon a visual comparison, the hats that have been sold bear marks which are substantially identical with or deceptively similar to the applicant's flower marks: Trade Marks 1995 (Cth) s 120(1). Indeed, they appear to be blatant copies. The only argument advanced against summary judgment on behalf of the second and fifth respondents was an attempt to shuffle responsibility within the various companies in the respondents’ group. In my opinion, it has not been shown that there is sufficient ground to avoid summary judgment.

3. Dealing with the second respondent, Charlie Brown Pty Ltd, it is clear that the hats were sold within a bag and with a swing tag bearing the name “Charlie Brown”.  “Charlie Brown” also is part of the name of the web site ( on the swing tag.  Charlie Brown Pty Ltd is an Australian company.  Notwithstanding Mr Avidan’s bald assertion that Charlie Brown Pty Ltd “does not undertake any manufacturing, wholesale or retail of clothing.  It does not trade but owns certain real property assets”, the commercial reality is that in the absence of some totally unexplained intervening counterfeiter, the sales using the name “Charlie Brown” must have had some form of authorisation from the second respondent.

4. As to the fifth respondent, Discovery Clothing Company Pty Ltd, it is plainly a licensee of the premises from which the goods were purchased.  The licence agreement prohibits the use of the premises by any other company.  I am satisfied on the balance of probabilities that that company is also responsible for the infringement.  It is highly undesirable that further time and money be expended on evasive tactics of the kind that the respondent group has engaged in. 

5. I will make the following orders:

   1.Pursuant to O 6 rr 2 and 8 of the Federal Court Rules, Clothing Outlet Pty Ltd (ACN 056 273 851) be joined as a Respondent to this proceedings.

2.The Applicant have leave to amend its Application and Amended Statement of Claim consequent upon:

a.The orders made in paragraphs 1 and 2 of the Order of Mr Deputy Registrar Efthim on 11 December 2002 adding the Fifth Respondent and giving leave to amend the Statement of Claim;

b.        The order made in paragraph 1 of this order.

3.There be summary judgment for the Applicant pursuant to 0 20 r 1 in the following terms:

a.The Court declares that the use by the Fifth and Sixth Respondents of the LOUIS VUITTON Trade Marks set out in this paragraph constituted an infringement of the LOUIS VUITTON Trade Marks;

i.Australian Registered Trade Mark No. 852136 for the FLOWER IN DIAMOND WITH CONCAVE SIDES DEVICE in class 25;

ii.Australian Registered Trade Mark No. 852138 for the GROT. FLOWER IN CIRCLE DEVICE in class 25;

iii.Australian Registered Trade Mark No. 852140 for the GROT FLOWER DEVICE in class 25;

iv.Australian Registered Trade Mark No 364941 for LV VL and DEVICE in class 25; and

v.Australian Registered Trade Mark No 366170 for LV VL and DEVICE in class 25; and

vi.Australian Registered Trade mark No. 544420 for LV and DEVICE in class 25,

(hereinafter referred to as the “LOUIS VUITTON Trade Marks”)

b.The Second, Fifth and Sixth Respondents each be permanently restrained whether by themselves, their respective directors, officers, employees or agents or otherwise howsoever from infringing any of the LOUIS VUITTON Trade Marks and, in particular, from using the LOUIS VUITTON Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto in the course of trade on or in relation to hats, headwear, headgear and clothing which are not manufactured or supplied by or under the authority of the Applicant;

c.The Second, Fifth and Sixth Respondents deliver up on oath to the Applicant or its duly authorised agents for destruction under supervision all goods in the possession, power, custody or control of the Second or Fifth Respondents, or their respective directors, officers, employees or agents to which the LOUIS VUITTON Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto has been applied without the licence or authority of the Applicant;

d. The Second, Fifth and Sixth Respondents deliver up on oath to the Applicant or its duly authorised agent for destruction under supervision all catalogues, price lists, brochures and other documents and materials in the possession, power, custody or control of the Second or Fifth Respondents or their respective directors, officers, employees or agents, which bear the LOUIS VUITTON Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto and which were not produced by or under the authority of the Applicant;

e.The Fifth and Sixth Respondents pay the Applicant damages for infringement of the LOUIS VUITTON Trade Marks, to be assessed together with interest thereon, or, at the option of the Applicant on a date to be fixed, the Fifth and Sixth Respondents account for the profits made by them by the said infringements and pay to the Applicant the amount found to be due on the taking of such account, together with interest thereon; and

f.The Fifth and Sixth Respondents pay the Applicant’s costs of incidental to the proceedings, including the hearing of this Notice of Motion, insofar as those costs relate to the Second, Fifth or Sixth Respondents or any of them.

4.The Second, Fifth and Sixth Respondents provide discovery verified by affidavit to the Applicant within 28 days of the making of these orders in respect of an accounting of the sales made by them or any related company by the said infringement of the LOUIS VUITTON Trade Marks, including but not limited to:

a.All documents relating to the manufacturing, purchase, importation and/or acquisition (on consignment or otherwise) by the Second, Fifth or Sixth Respondents or any related company or their respective directors, employees, servants or agents of any goods to which the LOUIS VUITTTON Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto has been applied without the licence or authority of the Applicant (hereinafter referred to as the “Infringing Goods”)

b.All documents relating to the wholesale, retail sale and/or other sale or disposal of the Infringing Goods by the Second, Fifth or Sixth Respondents or any related company or their respective directors, employees, servants or agents (including all banking documents); and

c.All other documents which would assist in the calculation of the profit made by the Second, Fifth or Sixth Respondents or any related company from such sales or disposal.

5.The Second, Fifth and Sixth Respondents provide to the Applicant on Affidavit, within 7 days of the making of these orders, the name(s), address(es), telephone and facsimile number(s) and all other relevant contact details of each supplier that has supplied the Infringing Goods to them, or any related company or any of their respective directors, employees, servants or agents, by way of wholesale, export, consignment or otherwise.

6.The hearing in relation to the assessment of damages, or alternatively, the account of profits arising from the said infringements, be adjourned to a date to be fixed by the Court.

7.        The respondents to pay the applicant’s costs.

I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey.

Associate:

Dated:             

Counsel for the Applicant:	Ms M Baker
Solicitor for the Applicant:	Corrs Chambers Westgarth
Counsel for the Respondent:	Mr C D Golvan SC
Solicitor for the Respondent:	Middletons Lawyers
Date of Hearing:	7 March 2003
Date of Judgment:	7 March 2003