Oakley Inc v Oslu Import and Export Pty Ltd - [2000] FCA 700

FEDERAL COURT OF AUSTRALIA
Oakley Inc v Oslu Import and Export Pty Ltd [2000] FCA 700
DESIGNS - importation and offering for sale of sunglasses - whether such glasses infringed registered designs - whether allegedly infringing glasses were actually supplied by respondents.
TRADE MARKS - importation and offering for sale of sunglasses - whether such glasses infringed registered trademarks - whether allegedly infringing glasses were actually supplied by respondents.
Designs Act 1906 (Cth), s 21(1), s 30(1), s 32B(1)
Trade Marks Act 1995 (Cth), s 10
Trade Practices Act 1974 (Cth), s 52, s 53(c), s 53(d)
Copyright Act 1968 (Cth), s 36(1)
Hecla Foundry Co v Walker Hunter & Co (1889) 14 App Cas 550
Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1986) 6 IPR 377
Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403
Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120
Wanem Pty Ltd v Tekiela (1990) 19 IPR 435
Lift Verkaufsgerate GmbH v Fischer Plastics Pty Ltd (1993) 27 IPR 187
Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339
Barnes v Addy (1874) LR 9 Ch App 244
Microsoft Corp v Auschina Polaris Pty Ltd (1996) 36 IPR 225
Mentmore Manufacturing Co Ltd v National Merchandising Manufacturing Co Inc (1978) 89 DLR (3d) 195
Trevor Ivory Ltd v Anderson [1992] 2 NZLR 517
Williams v Natural Life Health Foods Ltd [1998] 2 All ER 577
Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
OAKLEY INC v OSLU IMPORT AND EXPORT PTY LTD & ANOR
VG 665 of 1998
FINN J
MELBOURNE
30 MAY 2000

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VG 665 OF 1998

BETWEEN:

OAKLEY INC
APPLICANT

AND:

OSLU IMPORT AND EXPORT PTY LTD
FIRST RESPONDENT

GUO QIANG TAO
SECOND RESPONDENT

JUDGE:

FINN J

DATE OF ORDER:

30 MAY 2000

WHERE MADE:

MELBOURNE

THE COURT DECLARES THAT:
1.the first respondent has infringed Australian Registered Designs No 125520 and No 128173;
2.the first respondent has infringed Australian Registered Trade Mark No B387164;

AND ORDERS THAT:
3.an injunction be granted to restrain the first respondent from, whether by itself, its officers, servants, agents or otherwise howsoever, during the term of Australian Registered Designs No 125520 and No 128173 and any extension thereof, infringing either of the said registered designs and in particular from making, importing, hiring or selling, offering or keeping for sale or hire sunglasses or any other eyeglasses or eyeglass frames with lenses to which either or both of the said designs or a fraudulent or obvious imitation of either or both of those designs has been applied;
4.delivery up be done on oath to the applicant, or its nominated agent, for destruction, of any sunglasses or any other eyeglasses or eyeglass frames with lenses to which either or both of the said designs or a fraudulent or obvious imitation of either or both of those designs has been…

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: [2000] FCA 700
Decision Date: 30 MAY 2000

CaseChat Overview and Summary

Oakley Inc, an American company, sued Oslu Import and Export Pty Ltd and its director and sole shareholder Guo Qiang Tao for importing and offering for sale sunglasses that allegedly infringed Oakley's registered designs and trademarks, and for misleading or deceptive conduct under the Trade Practices Act. The Federal Court of Australia was asked to determine whether Oslu's sunglasses infringed Oakley's registered designs and trademarks, and whether Oslu and Tao were liable for damages or injunctive relief. The Court held that Oslu had infringed Oakley's designs and trademarks, and that an injunction and delivery up order should be granted against Oslu. The Court also held that Tao was probably liable as an accessory to the infringements, but deferred deciding the issue until further submissions were made. The Court did not decide the other claims against Oslu and Tao because of its findings on the intellectual property claims.

Orders