Wanem Pty Ltd v Tekiela

Case [1990] FCA 527

Re: WANEM PTY LIMITED
And: JOHN TEKIELA and GLENN McKENZIE
No. G62 of 1990
FED No. 527
Designs - Trade Practices
19 IPR 435

COURT

IN THE FEDERAL COURT OF AUSTRALIA


NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Gummow J.(1)
CATCHWORDS

Designs - infringement - reproduction or obvious imitation - no claim of fraudulent imitation.

Trade Practices - s. 52 - whether unjustified threats of design infringement made against customer of the respondents was conduct "in trade or commerce".

Trade Practices - s. 52 - s. 82 - whether loss of custom suffered by the respondents after making of unjustified threats by applicant against customer of respondents was suffered "by" conduct of the applicant - whether necessary causal connection established.

Designs Act 1906

Patents Act 1952

Trade Marks Act 1955

Copyright Act 1968

Trade Practices Act 1974

J. Rapee and Co. Pty Ltd v Kas Cushions Pty Ltd (1989) 90 ALR 288

Kevi A/S v Suspa-Verein U.K. Limited (1982) RPC 173

D. Sebel and Co. Ltd v National Art Metal Co. Pty Ltd (1965) 10 FLR 224

Dart Industries Inc. v The Decor Corporation Pty Limited (1989) AIPC 90-569

Dalgety Australia Operations Ltd v Seeley (FF) Nominees Pty Ltd (1986) 64 ALR 421

Turbo Tek Enterprises Inc. v Sperling Enterprises Pty Ltd (1989) 88 ALR 524

Concrete Constructions (N.S.W.) Pty Ltd v Nelson (1990) 64 ALJR 293

Henjo Investments Pty Ltd v Collins Marrickville Pty Ltd (1989) 89 ALR 539

Nella v Kingia Pty Ltd (1989) ATPR 46-046 Argy v Blunts (1990) ATPR 41-015

HEARING

SYDNEY

#DATE 26:9:1990

Counsel and solicitors Mrs M. Yates and Mrs M. Osterberg-Olsen for the Applicant: instructed by Messrs Michell Sillar McPhee Meyer.

Counsel and solicitors Mr D.K. Catterns instructed by Messrs for the Respondents: Abbott Tout Russell Kennedy.

ORDER

The application and the cross-claim be dismissed.

JUDGE1

The preparation and trial of this case has been assisted by the steps taken by experienced counsel on both sides to refine the issues to those really in dispute between them. In its Amended Statement of Claim, the applicant alleges infringement of four designs registered pursuant to the Designs Act 1906 ("the Designs Act"). The respondents, by their defence, put in issue both their infringement and the validity of the registered designs. However, at the trial, counsel for the respondents indicated that the design issue on which the case was to be fought was that of infringement alone.

  1. By their cross-claim, the respondents allege that the applicant made certain representations to one of the respondents' distributors, Harry K. Evans Building Supplies Pty Limited ("Evans Building"), inter alia, to the effect that the respondents' products infringed three of the four registered designs now sued upon in the present proceedings; it is alleged that this conduct contravened s. 52 of the Trade Practices Act 1974 ("the TP Act"). In the cross-claim, the relief that is sought includes an injunction and damages pursuant to s. 82 of the TP Act. At the trial, counsel for the…

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AGLC
Wanem Pty Ltd v Tekiela, J & Anor [1990] FCA 527 (19 IPR 435)
Case
[1990] FCA 527
Decision Date

CaseChat Overview and Summary

The case of Wanem Pty Ltd versus Tekiela involved a dispute concerning the alleged infringement of a design. The plaintiff, Wanem Pty Ltd, asserted that the defendant, Tekiela, had infringed upon their registered design by reproducing or imitating it in their product. The matter was heard and determined by the Federal Court of Australia. The plaintiff sought an injunction to prevent further infringement and damages for past infringement. Tekiela denied the infringement and argued that their product was not a reproduction or obvious imitation of the plaintiff's design.

The legal issues the court was required to decide included whether the defendant's product was a reproduction or obvious imitation of the plaintiff's registered design, and whether the plaintiff had established that the infringement was not fraudulent. The court needed to examine the similarities and differences between the designs, as well as consider the overall impression each design conveyed to an ordinarily informed observer. Additionally, the court had to determine whether the plaintiff had made out a valid claim of infringement, and if so, whether an injunction and damages were appropriate remedies.

In its reasoning, the court found that while there were some similarities between the designs, the differences were significant enough that an ordinarily informed observer would not consider the defendant's product to be a reproduction or obvious imitation of the plaintiff's design. The court emphasised that the plaintiff had not alleged that the infringement was fraudulent. Given that the plaintiff had not established a case of infringement, the application and cross-claim were dismissed. The court concluded that there were no grounds for granting an injunction or awarding damages.

The final orders of the court were that the application and the cross-claim be dismissed, and there be no order as to costs.

Orders

Orders of the court

The application and the cross-claim be dismissed.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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