Otter Products, LLC v Haydon

In the Federal Circuit and Family Court of Australia, Justice Baird considered an application by Otter Products, LLC for summary judgment against Mr Haydon concerning alleged infringement of five Australian registered trade marks. Otter Products claimed that Mr Haydon had sold mobile phone cases bearing its trade marks without authorisation. Evidence presented included trap purchases from Mr Haydon's stores, affidavits from individuals involved in these purchases, and an affidavit from Otter Products' brand protection manager, who identified indicators of infringement and confirmed that the trade marks on the purchased products were not applied by or with the licence of Otter Products.

The court was required to determine whether Mr Haydon had any reasonable prospect of successfully defending the trade mark infringement claim. This involved assessing whether the evidence established that the products sold by Mr Haydon were not genuine Otter Products and that their sale constituted infringement under section 120(1) of the *Trade Marks Act*. Furthermore, the court needed to consider whether Mr Haydon's conduct warranted an award of additional damages under section 126(2) of the Act, particularly in light of his continued sales after receiving letters of demand and an alleged admission of selling counterfeit products.

Justice Baird applied the principles governing summary judgment, which require the court to be satisfied that the respondent has no reasonable prospect of successfully defending the proceeding. This standard is met if the defence is not hopeless or bound to fail, and the court must make a practical judgment as to whether the respondent has more than a fanciful prospect of success. The court found that the evidence, including the trap purchases and the expert opinion on the authenticity of the trade marks, demonstrated that the products sold by Mr Haydon were not licensed by Otter Products. The court also noted that Mr Haydon had participated in the proceeding intermittently and had continued selling the infringing products after being notified, even allegedly admitting to selling counterfeits. Given these factors and the lack of a filed defence, the court was satisfied that Mr Haydon had no reasonable prospect of successfully defending the claim.

Consequently, the court granted summary judgment in favour of Otter Products. An inquiry was ordered to assess compensatory damages, and the court indicated that an award of additional damages would be made under section 126(2) of the *Trade Marks Act* due to the flagrancy of the infringement and Mr Haydon's conduct after being informed of the infringement.