Facton Ltd v Mish Mash Clothing Pty Ltd (No 2) [2012] FCA 261

Facton Ltd v Mish Mash Clothing Pty Ltd (No 2) [2012] FCA 261

The label set out in paragraph 10 of the reasons of 27 January 2012 bore sufficient marks of derivation from the applicants' work to compel the conclusion, in the absence of evidence from the respondents, that it was copied directly or indirectly. The central band bearing the word "ORIGINALS" and the oblong shape over which the word "DENIM" appears constituted a substantial part in the qualitative sense. The Court therefore extended its original copyright conclusions to that label.

Jurisdiction
Australia
Judgment Date
09 March 2012
Procedural Posture
Trade Mark Infringement and Copyright Infringement Proceeding / Orders and Supplementary Reasons for Judgment Following Reasons Published on 27 January 2012
Outcome
The Court made declarations of trade mark infringement and copyright infringement, ordered delivery up and injunctive relief against the first respondent, dismissed the proceeding save as ordered, disapplied r 22.03 with respect to paragraph 8 of the applicants' Notice to Admit, and made costs orders.
Legal Topics
['infringement of Australian Registered Trade Mark No. 883618' 'copyright Infringement by Importation for Purposes of Sale' 'substantial Part of Copyright Work' 'delivery Up' 'injunction' 'costs' 'notice to Admit']
['intellectual Property' 'copyright' 'trade Marks' 'federal Court Procedure'] ['infringement of Australian Registered Trade Mark No. 883618' 'copyright Infringement by Importation for Purposes of Sale' 'substantial Part of Copyright Work' 'delivery Up' 'injunction' 'costs' 'notice to Admit']

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Procedural Posture

Trade Mark Infringement and Copyright Infringement Proceeding / Orders and Supplementary Reasons for Judgment Following Reasons Published on 27 January 2012

Legal Issues

  1. 1 ['Whether the copyright infringement conclusions under s 37 of the Copyright Act 1968 (Cth) should extend to the label set out in paragraph 10 of the reasons of 27 January 2012.' 'Whether declarations and orders should be made for trade mark infringement, copyright infringement, delivery up, restraint, dismissal of the balance of the proceeding and costs.']

Ratio Decidendi

The label set out in paragraph 10 of the reasons of 27 January 2012 bore sufficient marks of derivation from the applicants' work to compel the conclusion, in the absence of evidence from the respondents, that it was copied directly or indirectly. The central band bearing the word "ORIGINALS" and the oblong shape over which the word "DENIM" appears constituted a substantial part in the qualitative sense. The Court therefore extended its original copyright conclusions to that label.

Court Disposition

The Court made declarations of trade mark infringement and copyright infringement, ordered delivery up and injunctive relief against the first respondent, dismissed the proceeding save as ordered, disapplied r 22.03 with respect to paragraph 8 of the applicants' Notice to Admit, and made costs orders.

Orders

  • ['The first respondent infringed Australian registered trade mark No. 883618 pursuant to section 120 of the Trade Marks Act 1995 (Cth) by offering for sale and selling jeans bearing the Black Label Mark and the White Label Mark as trade marks.' "The first respondent infringed the second applicant's copyright...