Koninklijke Philips Electronics N V v Remington Products Australia Pty Ltd [1999] FCA 1225

Koninklijke Philips Electronics N V v Remington Products Australia Pty Ltd [1999] FCA 1225

In context, Remington's device was linked with explanatory text describing the shaver's characteristics or functions, such as the absence of gaps when shaving and the alignment of cutting heads, and was not used, even partly, as a badge of origin. Philips therefore did not establish trade mark infringement, and because its other causes of action had also failed, the application was dismissed. Although Remington was generally successful, costs were discounted because of the conscious derivation issue and the undertaking about the DT 45 and DT 50, so Philips was ordered to pay three quarters of Remington's costs of the proceeding except as otherwise ordered for the cross-claim.

Jurisdiction
Australia
Judgment Date
06 September 1999
Procedural Posture
Intellectual Property Proceeding Involving Trade Mark Infringement, Registered Design Infringement, Trade Practices Act Claims, Passing Off, and Cross Claim / Final Judgment and Orders on Remaining Trade Mark Use Issue and Costs
Outcome
The application and the cross-claim were dismissed; Philips failed on trade mark infringement and was ordered to pay three quarters of Remington's costs of the proceeding except for specified cross-claim costs orders.
Legal Topics
['trade Mark Use' 'use as a Trade Mark' 'substantially Identical or Deceptively Similar Device' 'registered Design Infringement' 'fraudulent Imitation' 'conscious Derivation' 'costs Discretion' 'apportionment of Costs' 'cross Claim Under S 46 of the Trade Practices Act 1974 (cth)']
['intellectual Property' 'trade Marks' 'designs' 'trade Practices' 'passing Off' 'costs'] ['trade Mark Use' 'use as a Trade Mark' 'substantially Identical or Deceptively Similar Device' 'registered Design Infringement' 'fraudulent Imitation' 'conscious Derivation' 'costs Discretion' 'apportionment of Costs' 'cross Claim Under S 46 of the Trade Practices Act 1974 (cth)']

Case Brief

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Procedural Posture

Intellectual Property Proceeding Involving Trade Mark Infringement, Registered Design Infringement, Trade Practices Act Claims, Passing Off, and Cross Claim / Final Judgment and Orders on Remaining Trade Mark Use Issue and Costs

Legal Issues

  1. 1 ['Whether Remington used the device on packaging, a trade brochure, and press advertisements as a trade mark.' 'Whether Philips made out trade mark infringement based on use of a device substantially identical with, or deceptively similar to, its registered marks.' "What costs orders should be made where Remington succeeded on Philips' application, the cross-claim was dismissed, Remington had discontinued the s 46 cross-claim on an agreed costs basis, undertakings had been given in relation to DT 45 and DT 50 shavers, and findings adverse to Remington were made on conscious derivation."]

Ratio Decidendi

In context, Remington's device was linked with explanatory text describing the shaver's characteristics or functions, such as the absence of gaps when shaving and the alignment of cutting heads, and was not used, even partly, as a badge of origin. Philips therefore did not establish trade mark infringement, and because its other causes of action had also failed, the application was dismissed. Although Remington was generally successful, costs were discounted because of the conscious derivation issue and the undertaking about the DT 45 and DT 50, so Philips was ordered to pay three quarters of Remington's costs of the proceeding except as otherwise ordered for the cross-claim.

Court Disposition

The application and the cross-claim were dismissed; Philips failed on trade mark infringement and was ordered to pay three quarters of Remington's costs of the proceeding except for specified cross-claim costs orders.

Orders

  • ['The application be dismissed.' 'The cross-claim be dismissed.' 'There be no order as to the costs of the cross-claim to the extent that those costs are attributable to the claim based on alleged infringement of s 46 of the Trade Practices Act 1974 (Cth).' "Otherwise, the cross-claimant pay the cross-respondents'...