Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd [2009] FCAFC 7

Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd [2009] FCAFC 7

The Full Court upheld the trial judge's finding that most sales were infringing and saw no error in the treatment of evidence concerning non-infringing sales. However, the trial judge wrongly allowed the deduction of wages/director's fees from the profit figure, which is not permitted in an account of profits for trade mark infringement. The proper measure of profits was determined by removing the wages component and adjusting the account of profits accordingly. 'Good faith' under s 92(4) requires only a genuine intent to use the mark commercially. Claims for passing off on non-infringing goods were not established, and orders for removal of corporate names were unnecessary beyond the...

Jurisdiction
Australia
Judgment Date
13 February 2009
Procedural Posture
Appeal and Cross Appeal (from a Single Judge of the Federal Court of Australia) / Full Court Decision on Appeal and Cross Appeal
Outcome
Appeal dismissed with costs; cross-appeal allowed in part with orders for increased account of profits and costs to cross-appellant.
Legal Topics
['trade Mark Infringement' 'account of Profits' 'good Faith (trade Marks Act S 92(4))' 'misleading and Deceptive Conduct' 'passing Off' 'removal/rectification of Trade Marks' 'calculation of Damages' 'corporate Name Orders']
['intellectual Property' 'trade Marks' 'trade Practices'] ['trade Mark Infringement' 'account of Profits' 'good Faith (trade Marks Act S 92(4))' 'misleading and Deceptive Conduct' 'passing Off' 'removal/rectification of Trade Marks' 'calculation of Damages' 'corporate Name Orders']

Case Brief

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Procedural Posture

Appeal and Cross Appeal (from a Single Judge of the Federal Court of Australia) / Full Court Decision on Appeal and Cross Appeal

Legal Issues

  1. 1 ['Whether the trial judge erred in calculating profits by including non-infringing sales' "Proper meaning of 'good faith' for s 92(4) Trade Marks Act 1995 (Cth)" "Whether an infringer may deduct director's fees/wages in an account of profits" 'Whether passing off or misleading conduct claims were established for sales of non-infringing goods' "Whether an order for removal of the corporate name 'Liquideng' should be made"]

Ratio Decidendi

The Full Court upheld the trial judge's finding that most sales were infringing and saw no error in the treatment of evidence concerning non-infringing sales. However, the trial judge wrongly allowed the deduction of wages/director's fees from the profit figure, which is not permitted in an account of profits for trade mark infringement. The proper measure of profits was determined by removing the wages component and adjusting the account of profits accordingly. 'Good faith' under s 92(4) requires only a genuine intent to use the mark commercially. Claims for passing off on non-infringing goods were not established, and orders for removal of corporate names were unnecessary beyond the...

Court Disposition

Appeal dismissed with costs; cross-appeal allowed in part with orders for increased account of profits and costs to cross-appellant.

Orders

  • ['The appeal be dismissed with costs.' 'The cross-appeal be allowed in part.' 'Orders 4 and 5 made by Gordon J be set aside and in lieu thereof: (a) The first and second cross-respondents pay the cross-appellant $240,000 within 28 days, joint and several liability; (b) The third cross-respondent pay the...