Diesel Spa v Hwang [2005] FCA 1820

Diesel Spa v Hwang [2005] FCA 1820

The documentary records seized from Rainbow Apparel, including invoices and accounts separately referring to "Albert" and "Morris", were preferred over Albert Ezekiel's unsupported explanation. They established on the balance of probabilities that Albert Ezekiel purchased substantial quantities of counterfeit Diesel-branded goods with an intention to resell or distribute them. Although mere purchase is not itself trade mark use, the scale and pattern of purchases supported an inference that he had disposition of the goods or was involved in their distribution, and at least established a threat of infringing use sufficient to justify a quia timet injunction and related orders.

Jurisdiction
Australia
Judgment Date
22 December 2005
Procedural Posture
Trade Mark Infringement, Misleading or Deceptive Conduct, False Representations and Passing Off Proceeding / Hearing Limited to Liability and the Grant of Injunctive and Declaratory Relief; Damages and Other Relief to Be Decided Separately
Outcome
Injunctive and related relief granted against the Eleventh Respondent; costs ordered against the Eleventh Respondent; matter stood over for further directions as to other forms of relief.
Legal Topics
['infringement of S 120 of the Trade Marks Act 1995 (cth)' 'misleading or Deceptive Conduct' 'false Representations' 'passing Off' 'quia Timet Injunction' 'counterfeit Goods']
['trade Marks' 'trade Practices' 'torts'] ['infringement of S 120 of the Trade Marks Act 1995 (cth)' 'misleading or Deceptive Conduct' 'false Representations' 'passing Off' 'quia Timet Injunction' 'counterfeit Goods']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Trade Mark Infringement, Misleading or Deceptive Conduct, False Representations and Passing Off Proceeding / Hearing Limited to Liability and the Grant of Injunctive and Declaratory Relief; Damages and Other Relief to Be Decided Separately

Legal Issues

  1. 1 ['Whether Albert Ezekiel purchased counterfeit Diesel-branded goods from Rainbow Apparel or Rainbow Wear.' 'Whether the evidence established use of the Diesel trade marks by Albert Ezekiel in the course of trade, or a threatened use sufficient to justify injunctive relief.' 'Whether Albert Ezekiel engaged in misleading or deceptive conduct, made false representations, or committed passing off.']

Ratio Decidendi

The documentary records seized from Rainbow Apparel, including invoices and accounts separately referring to "Albert" and "Morris", were preferred over Albert Ezekiel's unsupported explanation. They established on the balance of probabilities that Albert Ezekiel purchased substantial quantities of counterfeit Diesel-branded goods with an intention to resell or distribute them. Although mere purchase is not itself trade mark use, the scale and pattern of purchases supported an inference that he had disposition of the goods or was involved in their distribution, and at least established a threat of infringing use sufficient to justify a quia timet injunction and related orders.

Court Disposition

Injunctive and related relief granted against the Eleventh Respondent; costs ordered against the Eleventh Respondent; matter stood over for further directions as to other forms of relief.

Orders

  • ['The Eleventh Respondent, whether by himself, his servants, employees or agents, or howsoever otherwise, be restrained from importing, manufacturing, promoting, advertising, distributing, offering for sale, selling or exhibiting in public any clothing, footwear or accessories in Australia by reference to the Trade...