Vieright Pty Ltd v Myer Stores Ltd [1995] FCA 173

Vieright Pty Ltd v Myer Stores Ltd [1995] FCA 173

The appellant had a limited but sufficient reputation in its mark 'FIRST' as used on women's wear such that, if the respondent used the same mark on women's wear, this would likely mislead the public and constitute passing off and a contravention of the Trade Practices Act. No liability arises in respect of men's wear, as the requisite association and likelihood of deception were not established for that class of goods.

Jurisdiction
Australia
Judgment Date
31 March 1995
Procedural Posture
Appeal / Decision on Appeal From Federal Court Judge
Outcome
Appeal allowed in part; remitted in part for further determination; otherwise dismissed
Legal Topics
['passing Off' 'trade Marks' 'trade Practices Act 1974 (cth)' 'quia Timet Injunctions' 'misrepresentation' 'likelihood of Deception']
['intellectual Property' 'consumer Law'] ['passing Off' 'trade Marks' 'trade Practices Act 1974 (cth)' 'quia Timet Injunctions' 'misrepresentation' 'likelihood of Deception']

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Procedural Posture

Appeal / Decision on Appeal From Federal Court Judge

Legal Issues

  1. 1 ["Whether the respondent's proposed use of the mark 'FIRST' on women's wear would amount to passing off or contravene the Trade Practices Act 1974" 'Whether the appellant had established requisite reputation and likelihood of deception for the relevant goods' "Whether a quia timet injunction should issue with respect to proposed use on women's wear"]

Ratio Decidendi

The appellant had a limited but sufficient reputation in its mark 'FIRST' as used on women's wear such that, if the respondent used the same mark on women's wear, this would likely mislead the public and constitute passing off and a contravention of the Trade Practices Act. No liability arises in respect of men's wear, as the requisite association and likelihood of deception were not established for that class of goods.

Court Disposition

Appeal allowed in part; remitted in part for further determination; otherwise dismissed

Orders

  • ['The appeal be allowed in part.' "The order at first instance dismissing the application is set aside insofar as it refused the claim for a quia timet injunction in respect of the respondent's proposed use of the mark 'FIRST' on women's wear; such claim remitted to a single Judge for determination." 'The order for...