Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd (No 3) [2024] FCA 226

Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd (No 3) [2024] FCA 226

Declarations and injunctions will be issued in the forms reflecting the findings of misleading/deceptive conduct and passing off; injunctions will extend to substantially identical or similar marks as previously accepted in analogous cases. Although respondent succeeded in defending the trade mark infringement, costs for the entire proceeding (with a discount) will be awarded to the applicant because the issues and evidence were not reasonably separable. Indemnity costs are appropriate after the rejection of an offer of compromise, as the judgment was more favourable than the offer and no exceptional circumstances warrant departing from this rule. Both parties bear their own costs for...

Jurisdiction
Australia
Judgment Date
13 March 2024
Procedural Posture
Civil / Judgment on Costs, Relief, and Orders Following Substantive Judgment
Outcome
Applicant partly succeeds; Respondent to pay Applicant's costs (with 10% discount for trade mark issue), indemnity costs after 11 am 8 October 2021. Injunctions and declarations granted, trade mark infringement and certain ACL allegations dismissed. Both parties bear own costs for affidavits not read.
Legal Topics
['trade Marks' 'passing Off' 'misleading and Deceptive Conduct' 'costs' 'australian Consumer Law']
['intellectual Property' 'practice and Procedure'] ['trade Marks' 'passing Off' 'misleading and Deceptive Conduct' 'costs' 'australian Consumer Law']

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Procedural Posture

Civil / Judgment on Costs, Relief, and Orders Following Substantive Judgment

Legal Issues

  1. 1 ["Whether injunctions restraining use of marks that are 'substantially identical' or 'similar' are available for misleading and deceptive conduct and passing off" 'Appropriate scope of declarations and injunctions' 'Entitlement to costs on issue-by-issue basis' 'Entitlement to indemnity costs following offer of compromise' 'Responsibility for costs of affidavits filed but not read']

Ratio Decidendi

Declarations and injunctions will be issued in the forms reflecting the findings of misleading/deceptive conduct and passing off; injunctions will extend to substantially identical or similar marks as previously accepted in analogous cases. Although respondent succeeded in defending the trade mark infringement, costs for the entire proceeding (with a discount) will be awarded to the applicant because the issues and evidence were not reasonably separable. Indemnity costs are appropriate after the rejection of an offer of compromise, as the judgment was more favourable than the offer and no exceptional circumstances warrant departing from this rule. Both parties bear their own costs for...

Court Disposition

Applicant partly succeeds; Respondent to pay Applicant's costs (with 10% discount for trade mark issue), indemnity costs after 11 am 8 October 2021. Injunctions and declarations granted, trade mark infringement and certain ACL allegations dismissed. Both parties bear own costs for affidavits not read.

Orders

  • ['Declarations made that Respondent engaged in misleading or deceptive conduct, made false representations, and committed passing off.' 'Trade mark infringement and ACL s 29(1)(a) allegations dismissed.' 'Respondent enjoined (with specifics) from supply, sale, advertising, or promotion under the infringing mark,...