Colorado Group Limited v Strandbags Group Pty Limited (No 2)[2006] FCA 880

Colorado Group Limited v Strandbags Group Pty Limited (No 2)[2006] FCA 880

Strandbags Group was the first user of the 'Colorado' mark on handbags, wallets, and purses. The goods handbags, wallets, and purses are not 'of the same description' as backpacks, thus the respondent's use on those goods did not infringe the applicant's registered mark except in respect of backpacks. The applicants are entitled to relief for trade mark infringement in relation to backpacks only; registration of the mark is to be restricted accordingly.

Parties
Applicant/cross Respondent: Colorado Group Limited; Applicant/cross Respondent: Williams the Shoemen Pty Limited; Respondent/cross Claimant: Strandbags Group Pty Limited
Jurisdiction
Australia
Judgment Date
07 July 2006
Procedural Posture
Civil / Final Judgment After Trial, With Cross Claims
Outcome
Trade mark infringement found in relation to backpacks only; claims relating to other goods dismissed; applicants entitled to election of damages or account of profits; registration of the mark to be corrected; other claims dismissed; costs apportioned as specified.
Legal Topics
Trade Marks, First Use, Combination Mark, Infringement, Goods of the Same Description, Closely Related Goods or Services
Intellectual Property Trade Marks First Use Combination Mark Infringement Goods of the Same Description Closely Related Goods or Services

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Parties

Colorado Group Limited

Applicant/cross Respondent

Williams the Shoemen Pty Limited

Applicant/cross Respondent

Strandbags Group Pty Limited

Respondent/cross Claimant

Procedural Posture

Civil / Final Judgment After Trial, With Cross Claims

Legal Issues

  1. 1 Who is the proprietor of the 'Colorado' mark in respect of wallets and purses based on later use?
  2. 2 Does the respondent's use of the mark on handbags, wallets, and purses infringe under s 120(2) Trade Marks Act 1995 (Cth)?
  3. 3 Are handbags, wallets, and purses 'of the same description' as backpacks for trade mark purposes?

Ratio Decidendi

Strandbags Group was the first user of the 'Colorado' mark on handbags, wallets, and purses. The goods handbags, wallets, and purses are not 'of the same description' as backpacks, thus the respondent's use on those goods did not infringe the applicant's registered mark except in respect of backpacks. The applicants are entitled to relief for trade mark infringement in relation to backpacks only; registration of the mark is to be restricted accordingly.

Court Disposition

Trade mark infringement found in relation to backpacks only; claims relating to other goods dismissed; applicants entitled to election of damages or account of profits; registration of the mark to be corrected; other claims dismissed; costs apportioned as specified.

Orders

  • Respondent restrained from selling or promoting backpacks under the mark 'Colorado'.
  • Respondent to file affidavit within 21 days with number of backpacks sold, sums received, estimate of costs, and particulars.