Fendi Adele SRL v Friedland [2002] FCA 352

Fendi Adele SRL v Friedland [2002] FCA 352

Summary judgment was refused for the ten originally pleaded Louis Vuitton trade marks because contested facts about the alleged sale could not be resolved without cross-examination and the respondent's affidavit could not be disregarded. Leave to amend was granted because the respondent had notice and the new material supported adding the CHECK SQUARE trade mark claim. Summary judgment was granted for the second applicant on Australian registered trade mark number 729025 because the respondent had displayed for sale at least one bag incorporating the infringing check pattern, establishing infringement under s 120(1) of the Trade Marks Act 1995 (Cth).

Jurisdiction
Australia
Judgment Date
20 March 2002
Procedural Posture
Trade Mark Infringement Proceeding / Notice of Motion for Summary Judgment and Leave to Amend
Outcome
Leave to amend granted; summary judgment granted for the second applicant only in relation to Australian registered trade mark number 729025; remaining liability issues to proceed to trial; costs ordered partly against the respondent and partly costs in the cause.
Legal Topics
['trade Mark Infringement' 'counterfeit Goods' 'summary Judgment' 'leave to Amend' 'injunction' 'mediation' 'costs']
['intellectual Property' 'trade Marks' 'civil Procedure'] ['trade Mark Infringement' 'counterfeit Goods' 'summary Judgment' 'leave to Amend' 'injunction' 'mediation' 'costs']

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 Proceeding / Notice of Motion for Summary Judgment and Leave to Amend

Legal Issues

  1. 1 ['Whether the second applicant should be granted summary judgment under O 20 r 1 of the Federal Court Rules in relation to ten registered Louis Vuitton trade marks originally pleaded.' 'Whether the second applicant should have leave to amend the notice of motion, application and statement of claim to add a claim concerning Australian registered trade mark number 729025 for "CHECK SQUARE" in Class 18.' 'Whether the respondent infringed Australian registered trade mark number 729025 by displaying for sale a bag incorporating the check pattern.' 'What costs order should be made on the amended notice of motion.']

Ratio Decidendi

Summary judgment was refused for the ten originally pleaded Louis Vuitton trade marks because contested facts about the alleged sale could not be resolved without cross-examination and the respondent's affidavit could not be disregarded. Leave to amend was granted because the respondent had notice and the new material supported adding the CHECK SQUARE trade mark claim. Summary judgment was granted for the second applicant on Australian registered trade mark number 729025 because the respondent had displayed for sale at least one bag incorporating the infringing check pattern, establishing infringement under s 120(1) of the Trade Marks Act 1995 (Cth).

Court Disposition

Leave to amend granted; summary judgment granted for the second applicant only in relation to Australian registered trade mark number 729025; remaining liability issues to proceed to trial; costs ordered partly against the respondent and partly costs in the cause.

Orders

  • ['The second applicant be granted leave to amend the notice of motion, application and statement of claim to add the CHECK SQUARE trade mark claim.' 'There be summary judgment for the second applicant pursuant to O 20 r 1 of the Federal Court Rules permanently restraining the respondent from infringing Australian...