Facton Ltd v Erdogan (No 1) [2012] FCA 924

Facton Ltd v Erdogan (No 1) [2012] FCA 924

Because the respondent was in default, the statement of claim disclosed claims for the relief sought and affidavits confirmed that counterfeit G-Star branded items were sold and offered for sale from premises leased by the respondent, the applicants were entitled to default judgment. The respondent's conduct infringed the applicants' trade marks and copyright, involved false representations and passing off, justified declaratory and injunctive relief, and warranted compensatory copyright damages for estimated lost sales and reputational harm plus additional damages due to flagrancy, deterrence, disregard of the proceedings and likely commercial advantage.

Jurisdiction
Australia
Judgment Date
20 August 2012
Procedural Posture
Application for Default Judgment Concerning Trade Mark Infringement, Copyright Infringement, False Representations in Trade or Commerce and Passing Off / Default Judgment
Outcome
Default judgment for the applicants; declarations, injunctions, delivery up, damages and costs ordered.
Legal Topics
['default Judgment' 'counterfeit Goods' 'copyright Infringement Damages' 'additional Damages' 'lost Profits' 'damage to Reputation' 'injunctive Relief' 'declaratory Relief']
['intellectual Property' 'copyright' 'trade Marks' 'australian Consumer Law' 'passing Off' 'practice and Procedure'] ['default Judgment' 'counterfeit Goods' 'copyright Infringement Damages' 'additional Damages' 'lost Profits' 'damage to Reputation' 'injunctive Relief' 'declaratory Relief']

Case Brief

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Procedural Posture

Application for Default Judgment Concerning Trade Mark Infringement, Copyright Infringement, False Representations in Trade or Commerce and Passing Off / Default Judgment

Legal Issues

  1. 1 ['Whether the respondent was in default and the applicants were entitled to default judgment under r 5.23(2)(c) of the Federal Court Rules 2011.' 'Whether declarations should be made for trade mark infringement, copyright infringement, contraventions of ss 18 and 29 of the Australian Consumer Law (NSW), and passing off.' 'Whether injunctive relief should restrain further dealing in Counterfeit G-Star Products and related representations.' 'What general damages under s 115(2) of the Copyright Act 1968 (Cth) should be awarded for lost sales and damage to reputation.' 'Whether additional damages under s 115(4) of the Copyright Act 1968 (Cth) should be awarded.']

Ratio Decidendi

Because the respondent was in default, the statement of claim disclosed claims for the relief sought and affidavits confirmed that counterfeit G-Star branded items were sold and offered for sale from premises leased by the respondent, the applicants were entitled to default judgment. The respondent's conduct infringed the applicants' trade marks and copyright, involved false representations and passing off, justified declaratory and injunctive relief, and warranted compensatory copyright damages for estimated lost sales and reputational harm plus additional damages due to flagrancy, deterrence, disregard of the proceedings and likely commercial advantage.

Court Disposition

Default judgment for the applicants; declarations, injunctions, delivery up, damages and costs ordered.

Orders

  • ['The Court declared that the respondent infringed the Trade Marks in breach of section 120 of the Trade Marks Act 1995 (Cth), infringed or authorised infringement of the Copyright Works in breach of section 36 of the Copyright Act 1968 (Cth), infringed the Copyright Works in breach of sections 37 and/or 38 of the...