Prince Manufacturing Inc & anor v ABAC Corporation Australia Pty Ltd & anor [1984] FCA 398

Prince Manufacturing Inc & anor v ABAC Corporation Australia Pty Ltd & anor [1984] FCA 398

The respondents' sale of imitation racquets under the name "Prince Pro" was a clear contravention of s.52 of the Trade Practices Act, 1974 and also established trade mark infringement and passing off. Because the misleading conduct also constituted passing off, damages under s.82 could be assessed by reference to general passing off principles, including general damages for loss of business profits and goodwill. Although precise causal proof of the applicants' overall sales decline was lacking and the respondents were only retailers, their conduct probably caused some lost sales and damage to goodwill; an appropriate compensatory award was $5,000.00.

Jurisdiction
Australia
Judgment Date
22 November 1984
Procedural Posture
Proceeding for Injunctions and Damages for Misleading or Deceptive Conduct, Trade Mark Infringement and Passing Off / Final Determination of Damages After Respondents Gave a Permanent Undertaking Accepted in Lieu of Injunctive Relief
Outcome
Applicants awarded damages of $5,000.00; respondents' undertaking noted; costs reserved.
Legal Topics
['misleading or Deceptive Conduct Under S.52 Trade Practices Act, 1974' 'sale of Imitation Tennis Racquets Under the Name "prince Pro"' 'measure of Damages Under S.82 Trade Practices Act, 1974' 'general Damages for Loss of Profits and Goodwill' 'anton Piller Orders']
['trade Practices' 'consumer Protection' 'trade Marks' 'passing Off' 'damages'] ['misleading or Deceptive Conduct Under S.52 Trade Practices Act, 1974' 'sale of Imitation Tennis Racquets Under the Name "prince Pro"' 'measure of Damages Under S.82 Trade Practices Act, 1974' 'general Damages for Loss of Profits and Goodwill' 'anton Piller Orders']

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

Proceeding for Injunctions and Damages for Misleading or Deceptive Conduct, Trade Mark Infringement and Passing Off / Final Determination of Damages After Respondents Gave a Permanent Undertaking Accepted in Lieu of Injunctive Relief

Legal Issues

  1. 1 ['Whether the respondents\' sale and offering for sale of racquets not manufactured by the first applicant under the name "Prince Pro" contravened s.52 of the Trade Practices Act, 1974.' "Whether the conduct also amounted to infringement of the first applicant's trade mark and passing off." 'What measure of damages should be applied under s.82 of the Trade Practices Act, 1974 where the same conduct also constitutes passing off.' 'What amount of damages should be awarded for loss of profits, lost sales and damage to goodwill where precise proof of loss was not available.']

Ratio Decidendi

The respondents' sale of imitation racquets under the name "Prince Pro" was a clear contravention of s.52 of the Trade Practices Act, 1974 and also established trade mark infringement and passing off. Because the misleading conduct also constituted passing off, damages under s.82 could be assessed by reference to general passing off principles, including general damages for loss of business profits and goodwill. Although precise causal proof of the applicants' overall sales decline was lacking and the respondents were only retailers, their conduct probably caused some lost sales and damage to goodwill; an appropriate compensatory award was $5,000.00.

Court Disposition

Applicants awarded damages of $5,000.00; respondents' undertaking noted; costs reserved.

Orders

  • ['I note the undertaking to the Court given on behalf of the respondents on 15 October 1984.' 'I order that the respondents pay the applicants damages in the sum of $5,000.00 and that there be judgment accordingly.' 'I reserve costs.']