Facton Ltd v Mish Mash Clothing Pty Ltd [2012] FCA 22

Facton Ltd v Mish Mash Clothing Pty Ltd [2012] FCA 22

The first respondent infringed the applicants' trade mark (No. 883618) and copyright by importing and selling jeans with certain labels that were found to be deceptively similar and to reproduce a substantial part of the applicants' artistic work, respectively. Other labels and other registered marks were not found infringed. The copyright in the work subsisted as an artistic work. The second respondent was not liable as joint tortfeasor or for authorisation under the Copyright Act. The applicants failed to prove damages for loss of sales or reputation, or entitlement to additional damages. Further orders on relief and costs were deferred for submissions.

Parties
First Applicant: Facton Ltd; Second Applicant: G-STAR RAW C.V; Third Applicant: G-STAR AUSTRALIA PTY LTD (ACN 084 011 852); First Respondent: MISH MASH CLOTHING PTY LTD (ACN 120 628 140); Second Respondent: Ilhami Yildirim
Jurisdiction
Australia
Judgment Date
27 January 2012
Procedural Posture
Intellectual Property Infringement (trade Mark and Copyright) / Judgment After Hearing; Orders for Further Submissions on Relief and Costs
Outcome
Applicants' case under the Trade Marks Act with respect to certain registered marks dismissed; copyright infringement by first respondent established under s 37; second respondent not liable; damages rejected; further orders and costs reserved for submissions.
Legal Topics
Trade Mark Infringement, Copyright Infringement, Remedies, Deceptive Similarity, Substantial Part of Work, Import and Sale of Apparel
Intellectual Property Trade Mark Infringement Copyright Infringement Remedies Deceptive Similarity Substantial Part of Work Import and Sale of Apparel

Case Brief

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Parties

Facton Ltd

First Applicant

G-STAR RAW C.V

Second Applicant

G-STAR AUSTRALIA PTY LTD (ACN 084 011 852)

Third Applicant

MISH MASH CLOTHING PTY LTD (ACN 120 628 140)

First Respondent

Ilhami Yildirim

Second Respondent

Procedural Posture

Intellectual Property Infringement (trade Mark and Copyright) / Judgment After Hearing; Orders for Further Submissions on Relief and Costs

Legal Issues

  1. 1 Whether respondents infringed applicants' registered trade marks by use of deceptively similar labels on apparel
  2. 2 Whether respondents infringed copyright in an artistic work corresponding to applicants' trade mark by importing, distributing and selling labelled apparel
  3. 3 Whether the second respondent was jointly liable as joint tortfeasor or authoriser

Ratio Decidendi

The first respondent infringed the applicants' trade mark (No. 883618) and copyright by importing and selling jeans with certain labels that were found to be deceptively similar and to reproduce a substantial part of the applicants' artistic work, respectively. Other labels and other registered marks were not found infringed. The copyright in the work subsisted as an artistic work. The second respondent was not liable as joint tortfeasor or for authorisation under the Copyright Act. The applicants failed to prove damages for loss of sales or reputation, or entitlement to additional damages. Further orders on relief and costs were deferred for submissions.

Court Disposition

Applicants' case under the Trade Marks Act with respect to certain registered marks dismissed; copyright infringement by first respondent established under s 37; second respondent not liable; damages rejected; further orders and costs reserved for submissions.

Orders

  • Applicants' case under the Trade Marks Act 1995 (Cth) with respect to registered marks Nos 980112, 999350 and 102853 dismissed.
  • Proceeding listed for further submissions as to other orders reflecting reasons for judgment and as to costs at a later hearing date.