Louis Vuitton Malletier SA v Knierum - [2004] FCA 1584

FEDERAL COURT OF AUSTRALIA
Louis Vuitton Malletier SA v Knierum [2004] FCA 1584
TRADE MARKS - infringement – no threat of repetition – injunction not granted
Trade Marks Act 1995 (Cth) ss 126, 133, 146, 149
Federal Court Rules O 35 r 7(1), O 35 r 10,
Attorney-General v Birmingham Tame and Rea District Drainage Board [1910] 1 Ch 48 cited
Australian Securities and Investment Commission v Burton-Clay (2003) 21 ACLC 651 cited
Autodesk Inc v Dyson (No 2) (1993) 176 CLR 300 referred to
Brigg v Thornton [1904] 1 Ch 386 cited
Coflexip SA v Stolt Comex Seaway MS Ltd [1999] 2 All ER 592 approved
Colgate Palmolive Limited v Markwell Finance Limited [1990] RPC 197 disapproved
Leahy, Kelly and Leahy v Glover (1893) 10 RPC 141 approved
Performing Right Society Ltd v Butcher [1975] FSPLR 405 approved
Phonographic Performance Ltd v Maitra [1998] 1 WLR 870 approved
Pride of Derby and Derbyshire Angling Association Ld v British Celanese Ld [1953] Ch 149 approved
Proctor v Bayley (1889) 42 Ch D 390 approved
Raleigh Cycle Coy. Ld v H Miller & Coy. Ld. (1949) 66 RPC 23
Samuelson v Procedures’ Distributing Company Limited (1932) 1 Ch D 201
Shelfer v City of London Electric Lighting Company [1895] 1 Ch 287
Stannard v Vestry of Saint Giles, Camberwell (1882) 20 Ch D 190 cited
State Rail Authority of New South Wales v Codelfa Construction Proprietary Limited (1982) 150 CLR 29 applied
Treasure Cot Coy. Ld v Hamley Bros Ld (1950) 67 RPC 89 approved
Wayne V MyersCoy. Ld v L.E. Fields Auto Services Ld (1954) 71 RPC 435 cited
Wilcox v Steel [1904] 1 Ch 212 cited
LOUIS VUITTON MALLETIER SA v JASON LEIGH KNIERUM, STEVEN ROWLES and LILLIAN JANNIGJE ROWLES
V 651 of 2004
FINKELSTEIN J
3 DECEMBER 2004
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V 651 of 2004

BETWEEN:

LOUIS VUITTON MALLETIER SA
Applicant

AND:

JASON LEIGH KNIERUM
First Respondent

STEVEN ROWLES
Second Respondent

LILLIAN JANNIGJE ROWLES
Third Respondent

JUDGE:

FINKELSTEIN J

DATE:

3 DECEMBER 2004

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

The applicant, Louis Vuitton Malletier SA, reached an out of court settlement with the first respondent, Mr Knierum, in relation to its trade mark infringement action. It now wishes to get out of that settlement and press on with the case. In a rather extraordinary letter written to my associate, but intended to be brought to my attention, the applicant’s solicitors, Corrs Chambers Westgarth, stated that because I had not made orders in the form agreed by the parties (orders which they acknowledge were discretionary and if inappropriate should not be made) “settlement has been legally frustrated, [and] our client does not seek any Orders from the Court at this time, and has no alternative but to proceed with the litigation [against the first respondent]”. The letter concludes with the request that my associate thank me “for [my] indulgences in this matter, which they [the solicitors] greatly appreciated”.
The applicant cannot so…

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.

Keep reading for free

Create a free CaseChat account to read Louis Vuitton Malletier SA v Knierum 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

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2004] FCA 1584
Decision Date: 3 DECEMBER 2004

CaseChat Overview and Summary

The case of Louis Vuitton Malletier SA v Knierum [2004] FCA 1584 involves a trade mark infringement action brought by Louis Vuitton Malletier SA against Jason Leigh Knierum, Steven Rowles, and Lillian Jannigje Rowles. The dispute centers on Mr. Knierum's importation of handbags, wallets, and an umbrella that infringed Louis Vuitton's trademarks. The matter was settled out of court, but Louis Vuitton later sought to withdraw from the settlement and continue with the litigation. The Federal Court of Australia, presided over by Justice Finkelstein, had to determine whether it could grant the injunctions that had been part of the settlement agreement and if it should recall those orders.

The legal issues before the court were whether the court should enforce the terms of the settlement agreement, specifically the granting of permanent injunctions, and whether it had the authority to recall those orders before they were entered. The court had to consider whether the principles of equity requiring a threat of repetition for an injunction applied to intellectual property cases, and whether the parties' agreement should be enforced despite the absence of legal representation for the respondent.

Justice Finkelstein concluded that the court had the authority to recall the orders but refused to do so except for a minor amendment to the language of the injunction. The court found that the grant of a permanent injunction in this case would have been inappropriate due to the risk of the respondent committing two offenses: one under the Trade Marks Act and another for breach of the injunction. Furthermore, the court held that even if there was an agreement for a permanent injunction, it should not be enforced if doing so would be oppressive or unjust, particularly when the respondent was unrepresented and unaware of the legal principles involved. The court emphasized that the risk of repetition of infringement must be established, and in this case, there was little likelihood of the respondent repeating the infringement.

The final orders of the court included a modified version of the injunction, limiting it to a period of five years and clarifying the language to match the statutory provisions. The court refused to recall the orders in their entirety, except for the amendment mentioned above.

Orders