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Ward Group Pty Ltd v Brodie & Stone Plc

Ward Group Pty Ltd v Brodie & Stone Plc

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Case Copied 22 April 2005 40 min read

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FEDERAL COURT OF AUSTRALIA
Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471
TRADE MARKS – passing off and trade mark infringement claimed in respect of the advertising for sale on the Internet of products manufactured and distributed in the United Kingdom under a mark that has an established reputation in Australia – the advertising was uploaded in the United Kingdom and downloaded in Australia in the course of trap purchases of the products - whether the advertising constituted a representation in Australia or a use of the mark in Australia – whether the trap purchases evidenced a passing off or an infringing use of the mark in Australia – whether the making of the trap purchases constituted a consent by the registered proprietor to the use of the trade mark in Australia – whether the manufacturer or distributor of the products in the United Kingdom was a joint tortfeasor with the website proprietors in respect of the alleged passing off and trade mark infringement
Trade Marks 1995 (Cth) ss 7, 8, 9, 120(1) and 123(1)
Bray v F Hoffman-La Roche Ltd (2002) 118 FCR 1 - cited
Dow Jones & Company Inc v Gutnick (2002) 210 CLR 575 – distinguished
CC Wakefield & Co Ld v Purser (1934) 51 RPC 167 - cited
Erven Warnink Besloten Vennootschap v Townend & Sons (Hull) Ltd [1979] AC 731 - applied
Moorgate Tobacco Co Limited v Philip Morris Limited (No 2) (1984) 156 CLR 414 – cited
ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 - cited
Betta Foods Australia Pty Ltd v Betta Fruit Bars Pty Ltd (1998) ATPR 41-624 - cited
Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 – cited
Revlon Inc v Cripps & Lee Ltd [1980] FSR 85 – cited
Star Micronics Pty Ltd v Five Star Computers Pty Ltd (1990) 18 IPR 225 - cited
Malibu Boats West Inc v Cantonese (2000) 180 ALR 119 - cited
Norbert Steinhardt & Son Limited v Meth (1961) 105 CLR 440 - cited
Zippo Manufacturing Company v Zippo Dot Com Inc 952 F Supp 1119 (WD Pa 1997) - cited
New Zealand Post Ltd v Leng [1999] 3 NZLR 219 – cited
Mecklermedia Corp v DC Congress GmbH [1998] Ch 40 – cited
Australian Competition and Consumer Commission v Chen (2003) 132 FCR 309 – distinguished
Transport Tyre Sales Pty Ltd v Montana Tyres Rims & Tubes Pty Ltd (1999) 162 ALR 175 – cited
Re Wilmer’s Trusts; Wingfield v Moore [1910] 2 Ch 111 - cited
Thompson v Australian Capital Television Pty Limited (1996) 186 CLR 574 – applied
CBS Songs Ltd v Amstrad Consumer Electronics PLC [1988] AC 1013 - applied
Cadbury Limited v Ulmer GmbH [1998] FSR 385 - cited
British Telecommunications PLC v One in a Million Ltd [1999] FSR 1 – applied
Lever v Goodwin (1887) 4 RPC 492 – cited
Nescor Industries Group Pty Ltd v MIBA Pty Ltd

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: [2005] FCA 471
Decision Date: 22 APRIL 2005

CaseChat Overview and Summary

Ward Group Pty Ltd sought to hold several UK-based companies, including Brodie & Stone Plc, liable for trade mark infringement and passing off, arising from the sale of goods online through websites which sold the defendants' UK Restoria products. The defendants were the registered proprietors of the UK Restoria trade marks, while the plaintiff was the proprietor of Australian Restoria trade marks, which were registered in Australia but not in the United Kingdom. The plaintiff argued that the defendants had authorised the sale of the UK Restoria products on the internet, thereby infringing the Australian Restoria trade marks and passing off the UK Restoria products as Australian Restoria products. The defendants argued, among other things, that the plaintiff could not succeed in its claims because it had not suffered loss or damage, and because the plaintiff had consented to the sale of the UK Restoria products. The Federal Court was required to determine whether the plaintiff had established a case of trade mark infringement or passing off, and whether the defendants were liable for the sale of the UK Restoria products online. The Court held that the plaintiff had not established a case of trade mark infringement or passing off because it had not demonstrated that it had suffered loss or damage, or that it had not consented to the sale of the UK Restoria products. The Court also held that, even if the website proprietors had infringed the Australian Restoria trade marks or passed off the UK Restoria products, the defendants were not liable as joint tortfeasors because the particular issues upon which the defendants had succeeded were not expressly raised in the defence but were contested. Accordingly, the Court dismissed the plaintiff's application with costs.

FINAL ORDER:
The Court dismissed the Ward Group's application with costs. The Ward Group was ordered to pay the respondents' costs of and incidental to the application.

Orders

Orders of the court

1. The application be dismissed.

2. The applicant pay the respondents costs of and incidental to the application.

Background

Background to the litigation

Plainly, the Ward Group’s claims, if upheld, can have significant consequences for the sale of goods on the Internet.Background The Ward Group manufactures and distributes the Australian Restoria products in Australia and elsewhere under the brand name “Restoria”. It is registered under the Trade Marks 1995 (Cth) (“the TMA”) as the proprietor of four trade marks bearing the mark “RESTORIA” in the class concerned with hair products and cosmetics (“the Australian Restoria marks”). It is also the registered proprietor of Restoria trade marks in over 70 other countries, but not in the United Kingdom. The Ward Group has manufactured, advertised, marketed, distributed and sold the Australian Restoria products in Australia since its incorporation in 1957. It began exporting the products in 1965 and conducts a wide and extensive trade worldwide, although not in the United Kingdom, in the Australian Restoria products. It is clear that the Ward Group has established a substantial reputation and goodwill in relation to the Australian Restoria products and their brand name, Restoria. Each of the respondents is incorporated in the United Kingdom. The first respondent, Brodie & Stone Plc, previously manufactured and distributed an anti-grey hair cream and lotion under the mark “RESTORIA” and had the right to use the United Kingdom trade mark “RESTORIA” (“the UK Restoria mark”) although it was not the registered proprietor. In April 1999, the first respondent’s business, including the sale of UK Restoria products, was transferred to the second respondent, Brodie & Stone International Plc, which is a related body corporate. The third respondent, Brodie & Stone Holdings Plc, which is the first and second respondents’ holding company, conducts the business of Brodie & Stone and became the registered proprietor of the UK Restoria mark in November 1999. Initially the Ward Group was the sole proprietor of the Restoria mark. However, in 1963 the Ward Group applied to register the Restoria mark in the United Kingdom, and in 1965 the shareholders and directors of the Ward Group incorporated the United Kingdom company, Ward Laboratories (UK) Ltd, in order to manufacture and sell Restoria products in the United Kingdom. In 1970 the Ward Group assigned the UK Restoria mark to Ward Laboratories (UK) Ltd. In November 1970 the shareholding in, and business of, the UK Ward Group company were sold to outside interests, which took an assignment of the UK Restoria mark and continued to sell the UK Restoria products. Brodie & Stone is the current registered proprietor of the UK Restoria mark and owns the business previously carried on by the UK Ward Group company. In the result, ownership of the Restoria mark was split between Australia, where the Ward Group is the registered proprietor of the Australian Restoria marks, and the United Kingdom, where Brodie & Stone is the registered proprietor of the UK Restoria mark. Brodie & Stone sells the UK Restoria products to retailers and wholesalers in the United Kingdom. However, it appears that one or more of the wholesalers have, in turn, sold or agreed to sell the UK Restoria products to the website proprietors who advertised those, and other, products for sale on the Internet.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

MERKEL J

Accordingly, even if the website proprietors had infringed the Australian Restoria marks or passed off the UK Restoria products, Brodie & Stone was not a joint tortfeasor.Conclusion The particular issues upon which Brodie & Stone has succeeded in respect of the trade mark infringement and passing off claims against the website proprietors (ie no loss and damage and consent) were not expressly raised in the defence but those issues were “in the ring” and were contested: see Nescor Industries Group Pty Ltd v MIBA Pty Ltd (1997) 150 ALR 633 at 640, 647 and 650 and the authorities there cited. Accordingly, I regard those issues as being before the Court for determination. For the above reasons the application of the Ward Group is to be dismissed with costs.

Ratio Decidendi

Legal Principle Established

Established by: MERKEL J

Full text does not contain this section.