Woodtree Pty Lty v Zheng - [2007] FMCA 457

FEDERAL MAGISTRATES COURT OF AUSTRALIA

Woodtree Pty Ltd v Zheng & Anor

[2007] FMCA 457

MISLEADING AND DECEPTIVE CONDUCT – PASSING OFF – Whether “memento” is a descriptive word – whether applicant had a reputation in the name “memento” and in the layout of its packaging – whether layout of respondents’ packaging deceptively similar to applicant’s packaging – whether applicant’s loss caused by respondents’ layout being likely to mislead or deceive.

Copyright Act 1968, ss.10, 32(1),
Fair Trading Act 1999 (Vic), ss.9, 12(e), 12(f)
Trade Practices Act 1974, ss.52, 53(c), 53(d)

Applied Business Technology v Grand Master Computers Pty Ltd (1999) 161 ALR 31
Australian Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641 at 657
Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 55 ALJR 333
CampomarSociedad, Limitada v Nike International Ltd (2000) 202 CLR 45
Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302
Electronic Techniques (Anglia) Ltd v Critchley Components Ltd [1997] FSR 401
Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82
Lott v JBW & Friends Pty Ltd (2000) 76 SASR 105
Millar & Lang Limitedv Polak [1908] 1 Ch 433gag
Motorcharge Pty Ltd v Motorcard Pty Ltd (1982) 64 FLR 153
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191
R & A Bailey & Co Ltd v Boccaccio Pty Ltd & Anor (1986) 177 ALR 177
Reckett & Colman Products Ltd v Borden Inc (1990) 17 IPR 1
Roland Corporation & Anor v Lorenza & Sons Pty Ltd (1991) 33 FCR 111
Taco Co of Australia v Taco Bell Pty Ltd (1982) 42 ALR 177
Visa International Service Association v Beiser Corporation Pty Ltd (1983) 77 FLR 234

Australian Concise Oxford Dictionary (third edition)
Macquarie Dictionary (revised third edition)
Oxford English Dictionary (second edition, Clarendon Press)

Ricketson, The Law of Intellectual Property: Copyright, Designs and Confidential Information (Looseleaf, Thompson Lawbook Company)
Davidson, Johnston & Kennedy (eds), Shanahan’s Australian Law of Trade Marks and Passing Off, (Thomson Law Book, 3^rd Edition, 2003)

Applicant:

WOODTREE PTY LTD aCn 007 221 963

First Respondent:

HARRY ZHENG

Second Respondent:

BLUE BOSS PTY LTD ACN 096 217 748

File number:

MLG457 of 2006

Judgment of:

Riley FM

Hearing dates:

12 & 13 December 2006

Date of last submission:

21 February 2007

Delivered at:

Melbourne

Delivered on:

17 May 2007

REPRESENTATION

Counsel for the Applicant:

Ian Horak

Solicitors for the Applicant:

Middletons

Counsel for the Respondents:

SJ Minahan

Solicitors for the Respondents:

Francis Abourizk Lightowlers

ORDERS

The application filed on 31 March 2006, as amended, be dismissed.
Any written submissions by the parties in relation to costs be filed and served by 31 May 2007.

Notation: The respondents undertake to the court not to make use of the packaging artwork the subject of this proceeding or apply to…

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: [2007] FMCA 457
Decision Date: 17 May 2007

CaseChat Overview and Summary

Woodtree Pty Ltd brought an action against Zheng, seeking relief for the alleged infringement of copyright and passing off. The Federal Court heard the matter and was tasked with determining the validity of the claims made by Woodtree against Zheng. The court examined whether Zheng's use of certain packaging artwork constituted copyright infringement and whether it amounted to passing off under Australian law. The court also considered the extent of any potential damages and the appropriate remedy for Woodtree's claims.

In assessing the claims, the court applied established legal principles relating to copyright and passing off. It examined the originality and ownership of the packaging artwork, the degree of similarity between Woodtree's artwork and Zheng's, and whether Zheng's use of the artwork was likely to cause confusion or deception in the marketplace. The court noted that Woodtree had invested significant resources in creating its distinctive packaging design, which was protected by copyright. However, the court also acknowledged that Zheng's use of similar artwork might not necessarily amount to infringement if it did not involve substantial copying or if the designs were not substantially similar.

After considering the evidence and arguments presented by both parties, the court concluded that while there were similarities between the packaging artwork, Zheng's use did not constitute copyright infringement or passing off to the extent claimed by Woodtree. The court found that the packaging designs, although similar, were not identical and that consumers would not be misled by Zheng's use. As a result, the court dismissed Woodtree's application. In addition, the court ordered that written submissions regarding costs be filed by a specified date. The respondents also made an undertaking not to use the packaging artwork in question or apply any of Woodtree's trademarks to their goods.

Orders

Orders of the court

The application filed on 31 March 2006, as amended, be dismissed.

Any written submissions by the parties in relation to costs be filed and served by 31 May 2007.

Notation: The respondents undertake to the court not to make use of the packaging artwork the subject of this proceeding or apply to any of its goods as a trade mark any trade mark of the applicant.

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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