Fendi Adele SRL v Friedland [2002] FCA 1486

Fendi Adele SRL v Friedland [2002] FCA 1486

The respondent infringed the applicants' registered trade marks by displaying, offering for sale and selling goods bearing signs identical or substantially identical to Fendi and Louis Vuitton trade marks in relation to goods for which those marks were registered. Fendi also established that, by trading under and by reference to the name "FENDI" and offering inferior counterfeit goods bearing Fendi marks, the respondent misrepresented an association with Fendi, contravened ss 9 and 12(a), (e) and (f) of the Fair Trading Act 1999 (Vic), and passed off his business and products as those of Fendi. The respondent's earlier discontinued use and registration of the business name "FENDI" did not...

Jurisdiction
Australia
Judgment Date
29 November 2002
Procedural Posture
Trade Mark Infringement, Misleading and Deceptive Conduct, False Representations and Passing Off Proceeding / Trial on Liability Only
Outcome
Liability established for trade mark infringement; Fendi also established contraventions of ss 9 and 12 of the Fair Trading Act 1999 (Vic) and passing off. The applicants were entitled to declarations and injunctions, with damages or account of profits to be addressed after election and further evidence if pursued.
Legal Topics
['trade Mark Infringement Under S 120(1) of the Trade Marks Act 1995 (cth)' 'use of Signs Substantially Identical With Registered Trade Marks' 'misleading or Deceptive Conduct Under S 9 of the Fair Trading Act 1999 (vic)' 'false Representations Under S 12 of the Fair Trading Act 1999 (vic)' 'passing Off' 'effect of Business Name Registration' 'equitable Estoppel and Acquiescence']
['intellectual Property' 'trade Marks' 'fair Trading' 'passing Off'] ['trade Mark Infringement Under S 120(1) of the Trade Marks Act 1995 (cth)' 'use of Signs Substantially Identical With Registered Trade Marks' 'misleading or Deceptive Conduct Under S 9 of the Fair Trading Act 1999 (vic)' 'false Representations Under S 12 of the Fair Trading Act 1999 (vic)' 'passing Off' 'effect of Business Name Registration' 'equitable Estoppel and Acquiescence']

Case Brief

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Procedural Posture

Trade Mark Infringement, Misleading and Deceptive Conduct, False Representations and Passing Off Proceeding / Trial on Liability Only

Legal Issues

  1. 1 ['Whether the respondent used signs substantially identical with Fendi and Louis Vuitton registered trade marks in relation to goods for which the marks were registered.' 'Whether the respondent\'s use of the name "FENDI" and display and sale of goods bearing Fendi marks was misleading or deceptive or involved false representations under the Fair Trading Act 1999 (Vic).' 'Whether the respondent passed off his business and products as and for the business and products of Fendi.' 'Whether the respondent\'s earlier use and registration of the name "FENDI" provided a defence, including by equitable estoppel or acquiescence.']

Ratio Decidendi

The respondent infringed the applicants' registered trade marks by displaying, offering for sale and selling goods bearing signs identical or substantially identical to Fendi and Louis Vuitton trade marks in relation to goods for which those marks were registered. Fendi also established that, by trading under and by reference to the name "FENDI" and offering inferior counterfeit goods bearing Fendi marks, the respondent misrepresented an association with Fendi, contravened ss 9 and 12(a), (e) and (f) of the Fair Trading Act 1999 (Vic), and passed off his business and products as those of Fendi. The respondent's earlier discontinued use and registration of the business name "FENDI" did not...

Court Disposition

Liability established for trade mark infringement; Fendi also established contraventions of ss 9 and 12 of the Fair Trading Act 1999 (Vic) and passing off. The applicants were entitled to declarations and injunctions, with damages or account of profits to be addressed after election and further evidence if pursued.

Orders

  • ['Declarations as to infringement of the Fendi and Louis Vuitton trade marks were to be made.' 'A declaration was to be made that the respondent passed off his business and products sold by him as and for the business and products of Fendi.' 'A declaration was to be made that the respondent contravened ss 9 and 12...