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IN THE FEDERAL COURT OF AUSTRALIA |
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First Applicant LOUIS VUITTON MALLETIER SA Second Applicant |
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AND: |
Respondent |
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JUDGE: |
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DATE: |
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PLACE: |
REASONS FOR JUDGMENT
Introduction
1 The first applicant ("Fendi") and the second applicant ("Louis Vuitton") are the registered proprietors of a number of trade marks pursuant to the provisions of the Trade Marks Act 1995 (Cth) ("Trade Marks Act"). They have carried on business under and by reference to their names for many years. They claim that the respondent has infringed their trade marks by offering for sale products which, without their licence or authority, bear their trade marks and by selling a wallet which bears a Fendi trade mark and a bag which bears Louis Vuitton trade marks. Fendi also claims that the respondent has engaged in misleading and deceptive conduct in contravention of s 9 of the Fair Trading Act 1999 (Vic) ("Fair Trading Act"), has made false representations in contravention of s 12 of the Fair Trading Act and has passed off his business as and for the business of Fendi by the use of the name "Fendi" and by displaying and offering for sale goods bearing trade marks of which Fendi is the registered proprietor.
Background
Fendi
2
Fendi is incorporated under the laws of Italy. It is a related entity of the LVMH Moët
Hennessy Louis Vuitton Group. Fendi has
for many years, by itself or its predecessors, carried on the business in a
number of countries of manufacturing, distributing, promoting, marketing and
selling a range of products, including leather goods, clothing and accessories,
both high fashion and ready-to-wear, by reference to one or more of its
registered trade marks. Fendi has built
up a reputation for selling high quality products under and by reference to the
name "Fendi". It has advertised Fendi
products and the Fendi name extensively in the print media throughout a number
of countries and in particular, since the beginning of 2001, in Australia. Since 1977 Fendi has used what it describes
as the FENDI
trade
mark and logo on its products and in its advertising and marketing.
3 The relevant trade marks registered in Australia relied upon by Fendi are:
(a) No 303035 for "FENDI" in class 25 in respect of various items of clothing including, relevantly, scarves;
(b) No 303036 for "FENDI" in class 18 in respect of, relevantly, handbags, shoulder bags, wallets (pocket) and purses (not of precious metal);
(c) No 453492
for "
" in
class 18 in respect of, relevantly, leather and imitations of leather and
articles made from these materials and not included in any other class;
(d) No 453493 for "
" in
class 25 in respect of clothing;
(e) No 303037
for "
" in
class 18 in respect of, relevantly, handbags, shoulder bags, wallets
(pocket) and purses (not of precious metal);
(f) No 303042
for "
" in
class 25 in respect of clothing.
4 Ms Naomi Parry, the Director of Marketing of Louis Vuitton Australia Pty Ltd, the Australian subsidiary of Louis Vuitton, has been involved in the marketing of luxury goods in Australia on behalf of Louis Vuitton for eight years. Ms Parry said that Fendi products had been advertised in newspapers, retail brochures, trade catalogues, point of sale material and magazines for many years, although it was not clear as to the extent to which such advertising had occurred in Australia. Louis Vuitton Australia Pty Ltd assumed responsibility for the marketing of Fendi and its products in Australia in 2000. Ms Parry produced evidence of advertisements in magazines circulating in Australia between January and December 2001, but not all of that advertising occurred prior to 2 July 2001.
5 Fendi opened a boutique at 60 Castlereagh Street, Sydney on 21 November 2000. The boutique sells a range of Fendi products including clothing, footwear, leather goods, cosmetics and accessories. Although Ms Parry gave evidence of a number of other outlets in Victoria, New South Wales, Western Australia and Queensland through which Fendi products are presently sold, it does not appear that any of those outlets, apart from the one in Victoria, were selling Fendi products on 2 July 2001.
Louis Vuitton
6 Louis Vuitton is incorporated in France and is a member of the LVMH Moët Hennessy Louis Vuitton Group. Louis Vuitton and its predecessors have, since at least the beginning of the twentieth century, continuously carried on the business in a number of countries of manufacturing, distributing, promoting, marketing and selling a large range of products, including leather goods, by reference to its name and trade marks registered by it. Over the years, the Louis Vuitton name and trade marks have become well‑known to the trade and public throughout Australia.
7 The relevant trade marks registered in Australia relied upon by Louis Vuitton are:
(a) No 313155 for "LOUIS VUITTON" in class 18 in respect of, relevantly, leather and imitation leather bags;
(b) No 365299 for a mark in class 18 in respect of, relevantly, leather accessories, wallets and purses in the following form:
This mark has been described by Louis Vuitton as the "Monogram Canvas" pattern.
(c) No 543574 for a mark in class 18 in respect of, relevantly, handbags, shoulder bags and wallets in the following form:
(d) No 523902 for a mark on a background in class 18 in respect of, relevantly, shoulder bags and wallets in the following form:
(e) No 523903 for a mark on a background in class 18 in respect of, relevantly, shoulder bags, handbags and wallets in the following form:
(f) No 490062 for a mark in class 18 in respect of, relevantly, leather and imitations of leather articles and bags in the following form:
(g) No 542670 for a mark in class 18 in respect of, relevantly, shoulder bags, handbags and wallets in the following form:
The respondent
8 From 1976 until around July 1988 the respondent operated a retail clothing business under and by reference to the name "Fendi". He produced a number of items which verified this fact. He produced income tax returns and financial accounts for the year ended 30 June 1985 showing the name of the business he was carrying on at 184 Finch Street, Glen Iris as "Fendi". He produced letterhead displaying the name "Fendi" and various envelopes bearing the name "Fendi" at the address of 20 Macquarie Street, Prahran. The respondent said that he ceased carrying on business in the retail clothing trade around 1988 or 1989 and worked in the car industry as a salesman until April 2000. In or about early 2000 he decided to recommence working in retail clothing.
9 The respondent's more recent use of the name "Fendi" commenced in May 2000. On 3 May 2000 the respondent registered two business names, "FENDI" and "CANTIK", pursuant to the provisions of the Business Names Act 1962 (Vic) with the Office of Business Affairs (Victoria) in respect of premises at 313 Hampton Street, Hampton. The premises in respect of which the names were registered was changed on 28 October 2000 to 482 Hampton Street, Hampton. The business in respect of which each of the names was registered was identified as the retail of clothing, leather goods/accessories and gifts and it was stated to commence on 3 May 2000.
10 On 2 July 2001, when Ms Dani Williams, a trade mark researcher retained by the applicants, purchased a wallet and a handbag from the respondent, the respondent's shop was displaying the name "FENDI" on a sign on the front of, and underneath, the veranda outside the shop. Ms Williams was given a receipt for the two items she purchased which bore the name "FENDI" on it.
11 It does not appear that the respondent operated the business under or by reference to the name "CANTIK" until on or after 20 July 2001. It is not clear as to the precise date in 2000 when the respondent commenced carrying on business under and by reference to the name "Fendi". In his defence the respondent admitted registering the name "FENDI" as a business name on 3 May 2000, that he operated a business situated at 482 Hampton Street, Hampton from November 2000, that he ordered the supply of 250 business cards with the word "FENDI" printed on them on or about 10 November 2000, that he ordered the supply of shopping bags with the word "FENDI" imprinted on them on or about 22 September 2000 and that signage with the word "FENDI" was removed from the premises at 482 Hampton Street on or about 20 July 2001. In cross‑examination the respondent said that he commenced business at 313 Hampton Street, Hampton on or about 10 May 2000.
12 The respondent maintained that he had always been trading under the name "CANTIK" from 3 May 2000. He said there was never any bank account with the "Fendi" name and that his cheque book was written on a "CANTIK" account. However, he also acknowledged that he put the signage outside the shop displaying the word "FENDI" and that he had produced what he called "a limited amount" of business cards bearing the name "FENDI". He also agreed in cross‑examination that he traded under the name "Fendi" in 2000.
13 Although the respondent said that he had always been trading under the name "CANTIK" from 3 May 2000, I am satisfied that he did not display the name "CANTIK" at his shop at 482 Hampton Street, Hampton or otherwise use that name on any of his business documentation or bags until after he became aware, early in July 2001, that the applicants were complaining about his use of the name "Fendi".
14 After the respondent received notification from Fendi's solicitors that Fendi was asserting rights to its name and trade marks in early July 2001 he removed the "FENDI" signage from his store, and destroyed the bags and business cards he had bearing the name "FENDI".
The events in July 2001
15 On 2 July 2001, Ms Williams visited the respondent's shop at 482 Hampton Street, Hampton. She made a number of observations and purchased a leather wallet and a handbag. Two days later, on 4 July 2001, Mr Bradley Martin, an investigator retained by the applicants, visited the respondent's shop. He also made a number of observations and spoke to the respondent. The respondent challenged the evidence of these two witnesses and cross‑examined them. In particular, he challenged their observations and denied that the wallet and handbag had been purchased from his shop. He claimed that a bag similar to a bag which he produced had been purchased by Ms Williams. It is therefore necessary to set out the evidence of these witnesses in some detail.
16
Ms Williams said that when she entered the shop
she saw no less than thirty bags, the majority of which bore the
and
monogram canvas trade mark of Louis Vuitton referred to in par [7(b)]. At the
time she entered the shop Ms Williams noticed two prominent signs on the
veranda of the shop consisting of the word "FENDI". Whilst she was in the shop Ms Williams obtained a business
card relating to the business which showed the word "FENDI" and the address of
the shop.
17
Ms Williams said that she purchased two items from
the shop. One was a handbag which bore
the "Louis Vuitton" trade mark and the
and
monogram canvas trade mark referred to in par [7(b)] above.
That bag was produced in evidence.
Ms Williams purchased the bag for $170. Ms Williams also purchased a wallet which bore the name
"FENDI" and the
trade
mark for $120. The wallet was produced
in evidence. She paid cash for the two
items and received a receipt in the name of "FENDI".
18
Whilst Ms Williams was in the shop she observed a
number of clothing racks along the wall of the shop above which were shelves on
which there were a number of items displayed.
These items included handbags, scarves and a wallet bearing the
trade
mark and the name "FENDI".
19 Ms Williams left the shop and returned about ten minutes later when she realised that she had been short changed $100 by the person who had attended to her. She was given the full amount of the change that she should have received initially.
20
Ms Parry said that the wallet which bore the FENDI and
marks
was not manufactured by or under the authority of Fendi.
21
Ms Tracy‑Anne Ford, the Store Manager of the
Louis Vuitton boutique in Melbourne with experience of the Louis Vuitton
products and their method and style of manufacture, said that the handbag
purchased by Ms Williams bore the "Louis Vuitton" trade mark and what she
called the "monogrammed canvas" pattern of Louis Vuitton which bears a number
of Louis Vuitton trade marks including the trade mark
and
the monogram canvas trade mark.
22 Ms Ford said that the handbag was not manufactured by or under the authority of Louis Vuitton. She expressed this opinion by reference to the method and style of manufacture of the handbag in a number of respects.
23 Ms Williams denied that she purchased a larger leather handbag of the same type as the handbag which the respondent produced in evidence and claimed that he had sold her. She maintained that she had purchased the smaller handbag with the identified Louis Vuitton trade marks on it. She also denied that about one and a half hours after her purchase she returned to the shop and asked for a written receipt which the respondent gave her.
24 Mr Martin visited the respondent's shop on 4 July 2001 and gave the respondent a letter from the applicants' solicitors relating to the sale by him of products bearing the trade marks of each of the applicants. While the respondent was reading the letter Mr Martin observed that there were a number of handbags and wallets in the shop which bore trade marks of the applicants. Particular trade marks he observed on the handbags and wallets were the Louis Vuitton trade marks referred to in par [7(b)] and [7(c)] and the Fendi trade marks referred to in par [3(b)] and [3(e)] above. The respondent told Mr Martin that it was his intention to return the products which bore the trade marks to his supplier and ask for a refund, that he had purchased the products in good faith, that the suppliers told him that they were agents for Louis Vuitton and that he had been trading under or by reference to the business name "FENDI" for approximately twenty years. The respondent agreed that he had made this latter statement but denied the rest of the conversation.
25 Mr Martin produced photographs of the respondent's shop which he had taken on his visit on 4 July 2001. These photographs showed that the name "FENDI" was displayed prominently on the front and hanging from the underside of the veranda in front of the shop. Mr Martin returned to the respondent's shop on 6 August 2001 and noticed that the "FENDI" signs had been removed and replaced with similar signs displaying the name "CANTIK".
26 The respondent did not challenge the evidence that the two articles which Ms Williams said she had purchased from his shop were not manufactured by or under the authority of Fendi or Louis Vuitton. He maintained that he had not sold the wallet bearing the Fendi trade marks or the handbag bearing the Louis Vuitton trade marks to Ms Williams and said that he had sold her a different wallet and handbag.
27 In his affidavit evidence the respondent said that he recalled personally attending to the sale to Ms Williams and recalled writing the receipt which she had produced. He did not see her browsing around the shop or spending any time examining any products. He said that she purchased a bag and a wallet and he produced an example of the type of bag she had purchased. It was a leather bag approximately twice the size of the bag produced by Ms Williams and it did not bear any Louis Vuitton trade marks. The respondent said that approximately one and a half hours after Ms Williams left the shop she returned and asked for a written receipt which he gave her.
28 This evidence is to be contrasted with the respondent's evidence in cross‑examination when he denied that Ms Williams came to his shop and said that he did not remember her coming to the shop. He did remember a lady coming back for a receipt.
29 The respondent did not agree with Ms Williams' observation that that there were in his shop no less than thirty bags each of which bore one or more of the Louis Vuitton trade marks. He said he did not sell or offer for sale any products bearing Louis Vuitton trade marks. He said he did sell bags and wallets which incorporated a check pattern and graffiti pattern and he produced two bags of the "Red Berry" brand. However, these bags were quite different from the bag Ms Williams said she purchased.
30 The respondent denied that at the time Ms Williams came into the shop there were handbags, scarves and a wallet on display bearing any of the Fendi trade marks. The respondent also denied that Ms Williams returned to his shop to demand the return of $100 that she had overpaid. He maintained that when Ms Williams returned to the shop she did so to ask for a receipt and that she was not given any money.
31 The respondent also denied the contents of the conversation which Mr Martin said he had with the respondent on 4 July 2001. He said that Mr Martin repeatedly harassed him to sign some papers on the spot and that he threatened to call the police.
32 Each of Ms Williams and Mr Martin presented as credible and honest witnesses and I accept their evidence wherever it conflicts with the evidence of the respondent. The respondent was not represented at the hearing and appeared for himself. As well as filing a number of affidavits he gave oral evidence, tendered a number of exhibits and was cross‑examined. After making allowances for the fact that he was not legally represented, his evidence, where it conflicted with the evidence of Ms Williams and Mr Martin, was not credible. The consequence of accepting the respondent's evidence would compel a finding that Ms Williams and Mr Martin had fabricated their evidence. It is highly improbable that persons in the position of Ms Williams and Mr Martin would fabricate their evidence in the circumstances of this case. I reject a submission to that effect. When one looks at the conflicts between the two versions of what occurred on 2 and 4 July 2001 against the background that the respondent was presenting his business under the name "FENDI" by reference to the signage outside the shop, I consider that the version of events given by Ms Williams and Mr Martin is more probable than that of the respondent. In any event I am not satisfied that I can rely on the evidence of the respondent as to what goods were in the shop and what occurred when Ms Williams visited the shop on 2 July 2001. The evidence of the respondent as to what he recollected of that visit was inconsistent and irreconcilable. He recalled personally attending to Ms Williams in the shop yet he denied Ms Williams came to the shop and could not remember her coming to the shop. In such circumstances I accept Ms Williams' evidence as to what occurred on her visit to the shop.
33 There is further corroboration of Ms Williams' and Mr Martin's version of events in a conversation which the applicants' solicitor had with the then solicitor for the respondent on 16 August 2001. Part of that conversation was without prejudice and evidence was not given as to that part of the conversation. The applicants' solicitor said that the respondent's solicitor had told him that the respondent had between one and three items which the applicants' alleged infringed their rights.
34
The consequence of my acceptance of the evidence of
Ms Williams and Mr Martin is that the case for trade mark
infringement is made out. The wallet
bears the
and FENDI trade marks and the bag bears the Louis
Vuitton,
and
the monogram canvas trade marks. The
observations of Ms Williams and Mr Martin also satisfy me that on 2
and 4 July 2001 the respondent was displaying for sale and offering for
sale products bearing Fendi and Louis Vuitton trade marks. Not only were observations made of bags and
wallets bearing the marks but observations were also made by Ms Williams
that scarves bore the Fendi trade marks.
35 I am also satisfied that on 2 and 4 July 2001 and prior thereto, commencing no later than the beginning of November 2000, the respondent was promoting and carrying on his business at 482 Hampton Street, Hampton by reference to the name "FENDI". Although the respondent put it that he was carrying on business since 3 May 2000 under and by reference to the name "CANTIK", it did not appear from the evidence that that name was displayed in his shop until sometime after Mr Martin's visit and probably on or about 20 July 2001 when the "FENDI" signage was removed and replaced by the "CANTIK" signage. I am also satisfied that between November 2000 and 4 July 2001 the respondent was using business cards and shopping bags for customers' purchases which bore the name "FENDI".
Has the respondent infringed the Fendi and Louis Vuitton trade marks?
36 Section 120(1) of the Trade Marks Act provides:
"A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered."
Section 7(4) of the Trade Marks Act provides that the expression "use of a trade mark in relation to goods" means:
"use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods)."
37 It was not contested by the respondent that the handbag and wallet Ms Williams said she purchased bore infringing trade marks. In any event there is no doubt that when the marks on the handbag and the wallet are compared with the relevant registered trade marks they are not only "substantially identical" to the registered trade marks, they are "identical" to the registered trade marks. Their essential features make this clear.
38 In considering whether the marks on the goods offered for sale and sold by the respondent are substantially identical to the applicants' trade marks I adopt the test set out by Windeyer J in Shell Company of Australia Co Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414 (reversed on appeal but not on this principle):
"In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison."
39
I am satisfied that the respondent has used on goods
displayed and offered for sale in his shop a sign that is substantially
identical with a number of the trade marks of which Fendi and Louis Vuitton are
the registered proprietors.
Ms Williams observed a number of handbags, scarves and a wallet
bearing the mark FENDI and the
mark. She also observed a number of handbags
bearing the
mark
and the monogram canvas mark.
Mr Martin observed a number of handbags and wallets bearing the FENDI mark and the
mark. The wallet which Ms Williams purchased
bore the FENDI mark and the
mark. The bag which Ms Williams purchased
bore the
mark,
the monogram canvas mark and also the words "Louis Vuitton". By displaying and offering these items for
sale in his shop and by selling the wallet and the handbag to Ms Williams,
the respondent infringed s 120(1) of the Trade Marks Act as he used on
each of the items displayed, offered for sale and sold a sign which was
substantially identical to the trade marks in relation to goods in respect of
which the trade marks were registered.
There was no real contest that the two items purchased by
Ms Williams were "counterfeit", that is to say not manufactured by or with
the authority or licence of Fendi or Louis Vuitton.
40 I am therefore satisfied that the respondent has infringed the following trade marks of Fendi and Louis Vuitton and that they are entitled to declarations accordingly:
(a) in relation to Fendi -
· No 303035
· No 303036
· No 453492
· No 453493
· No 303037
· No 303042
(b) in relation to Louis Vuitton -
· No 313155
· No 365299
· No 543574
· No 523902
· No 523903
· No 490062
· No 542670
Has the respondent engaged in misleading and deceptive conduct, made false representations or engaged in passing off?
41 Section 9(1) of the Fair Trading Act provides that:
"A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive."
Section 12 of the Fair Trading Act relevantly provides that:
"A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion or advertising by any means of the supply or use of goods or services -
(a) falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use; or
...
(e) represent that goods or services have a sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have; or
(f) represent that any person has a sponsorship, approval or affiliation that the person does not have;..."
42 The two causes of action, passing off and contraventions of ss 9 and 12 of the Fair Trading Act, protect different interests. Passing off is concerned with the reputation and goodwill associated with a business and its products: Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302. A cause of action based on contraventions of ss 9 and 12 of the Fair Trading Act is concerned with the protection of the public interest. Nevertheless, the authorities on passing off provide "guidance by analogy as to the type of conduct which would be likely to mislead or deceive the public": R & C Products Pty Ltd v SC Johnson & Sons Pty Ltd (1993) 42 FCR 188 at 192; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1981) 149 CLR 191 at 219.
43 The principal ingredient for a cause of action based upon the tort of passing off or a contravention of ss 9 and 12 of the Fair Trading Act is that there be a misrepresentation: Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 202; Conagra Inc v McCain Foods (Aust) Pty Ltd (supra) at 308.
44 Any consideration of loss and damage is not relevant to establishing a contravention of s 9 and s 12 of the Fair Trading Act: Taco Company of Australia Inc v Taco Bell Pty Ltd (supra) at 199 per Deane & Fitzgerald JJ.
45 The conduct of which Fendi complained was the use by the respondent of the name "FENDI" on the signs which were displayed outside his shop, on his business cards, shopping bags, on the receipt given to Ms Williams and on the goods offered for sale bearing the Fendi trade marks. Whether contraventions of ss 9 and 12 of the Fair Trading Act have occurred depends upon establishing the relevant reputation of Fendi and the respondent on or about 2 July 2001. Although the respondent was at that time registered as the proprietor of the business name "FENDI" pursuant to the provisions of the Business Names Act 1962 (Vic), such registration did not create any right in him to use that name as against others and it did not provide a defence to any action for misleading and deceptive conduct or passing off by reason of its use by him: B M Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363 at 369; Geoffrey Inc v Luik (1997) 38 IPR 555 at 564.
46 Although the respondent had carried on a clothing manufacturing business between September 1976 and July 1988 under and by reference to the name "Fendi", that business had ceased in July 1988. The use of the name "Fendi" by the respondent had been discontinued in 1988 and there was no evidence that when the respondent opened his "FENDI" shop in Hampton Street in 2000 there was thereby re‑established any residual reputation he had in the use of the name "Fendi".
47 I consider that the gap of some twelve years before the respondent commenced to use the name "Fendi" again is such as to sever any connection or association between the business conducted by the respondent during that earlier period and his commencement of business at 482 Hampton Street, Hampton in November 2000. I am not satisfied on the material before me that at the time the respondent commenced his business in 2000, whenever that may have been, there was any residual reputation or goodwill in the name "Fendi" which the respondent could claim. In this context it is relevant to remember that when he first registered the business name "FENDI" on 3 May 2000 he registered the name "CANTIK" on the same day in respect of the same type of business.
48 In his final submissions the respondent submitted that the doctrines of equitable estoppel and acquiescence disentitled Fendi to any relief claimed in respect of the use of the "Fendi" name by the respondent. The defence did not raise these issues. There is no factual basis in the evidence on which either of these doctrines could be established. There was no evidence that Fendi was aware at any time of the respondent's use of the name "Fendi" in his business between 1976 and 1988, nor was there any evidence that Fendi had any knowledge of the respondent's business in any respect. There was no suggestion in the evidence that the respondent was carrying on business under or by reference to the name "Fendi" in such a manner as to warrant the conclusion that Fendi must have known of the respondent's business or that it assented to, or acquiesced in, that use in any way, or that Fendi induced an assumption in the respondent that it permitted his use of that name as identifying, or in the course of, his business.
49 The evidence as to the reputation and goodwill that Fendi had in the name "Fendi" in Australia at the beginning of July 2001 needs to be considered with care. There was no detailed evidence placed before the Court as to the extent of the advertising, promotional and marketing activities undertaken by Fendi by or in relation to the name "Fendi" on the products bearing its name and trade marks prior to July 2001. Although an advertising schedule for the calendar year 2001 was tendered in evidence, Ms Parry said that the only part of that advertising which occurred prior to July 2001 was an April double-page spread costing $10,000. The relevant advertising or promotional material was not identified. According to Ms Parry, Louis Vuitton Australia Pty Ltd assumed responsibility for marketing Fendi and its products in 2000. The first time Louis Vuitton Australia Pty Ltd undertook anything in the public domain for Fendi was in November 2000 with the opening of its first boutique which offered the entire Fendi range in Sydney. Prior to that point of time there had been what Ms Parry called two sole Fendi points of sale, one being within the DFS Gallery (the Duty Free Shoppers Retail chain) in Sydney which opened in 1999 and another in Elkhorn Avenue on the Gold Coast which Ms Parry believed had been operating for about four or five years prior to November 2000.
50 Although Ms Parry had not been involved in the marketing of Fendi or Fendi products prior to 2000, she was aware that Fendi had undertaken marketing and advertising activities through its agents, wholesalers and retailers who were marketing Fendi branded products. She had seen editorial in magazines featuring Fendi products and had seen advertising for Fendi in magazines such as Vogue and Elle. Although Ms Parry was unable to be specific, she was aware that Fendi had advertised in these magazines and that prior to November 2000 she had seen from time to time magazine advertisements or promotions featuring the Fendi name.
51
Ms Parry also gave general evidence that the name
Fendi, the
mark
and logo and products bearing them, have become very well-known to the trade
and the public in Australia in relation to leather goods, high fashion and
ready‑to‑wear clothing.
Ms Parry expressed this opinion on the basis of her experience in
retail outlets and her discussions with retailers and their employees.
52 I am therefore satisfied that by the beginning of July 2001 Fendi had established in Australia a reputation in its name and in the products sold by it which bore its name and its trade marks. Although the evidence is sparse as to the extent of its advertising and marketing in Australia prior to the beginning of July 2001, there was evidence from which I am able infer that the Fendi name was well‑known amongst persons in the trade and customers who were interested in high fashion and ready-to-wear products.
53
I am satisfied that the name "Fendi" and the
trade
mark and logo and Fendi products bearing this trade mark and logo have become
well‑known to the trade and public in Australia in relation to leather
goods, high fashion and ready-to-wear clothing.
54 I am also satisfied that the manner in which the respondent carried on his business on and prior to 2 July 2001 was such as to be likely to mislead persons seeing his shop and doing business with him that his business had some connection or association with Fendi and that the products he was offering for sale and selling were of the standard or quality of Fendi products and that his business had the sponsorship or approval of Fendi. I reach this conclusion having regard to the signage outside the shop displaying the "FENDI" name, the business cards he used, the bags he used for customers to carry away purchased items and the products which he had displayed on his shelves.
55 I am therefore satisfied that the respondent has contravened s 9 and s 12(a), (e) and (f) of the Fair Trading Act.
56 I am also satisfied that as at 2 July 2001 and prior thereto, the respondent was passing off his business and the products he was offering for sale bearing the Fendi trade marks as and for the business and products of Fendi. I have already found that Fendi had a reputation in its name and its products at the relevant time. It follows from my findings of fact that there has been a misrepresentation by the respondent as to the nature of his business, that is that it had an association or identification with, or sponsorship of, Fendi. That finding is based upon a consideration of the objective facts. It is not necessary to show an intention to deceive on the part of the respondent before the tort of passing off can be established: Conagra Inc v McCain Foods (supra) at 308.
57 The five essential characteristics of a passing off action were identified by Lord Diplock in Erven Warnink Besloten v J Townend & Sons (Hull) Ltd [1979] AC 731 at 742:
"... (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so."
This statement has been accepted in Australia: Moorgate Tobacco Co Limited v Philip Morris Limited (No 2) (1984) 156 CLR 414 at 443-444 per Deane J; Conagra Inc v McCain Foods (Aust) Pty Ltd (supra) at 308-310. I am satisfied that these five elements have been established.
58 Although the respondent had registered the business name "FENDI", that registration does not provide him with a defence to any passing off action; B M Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (supra); Geoffrey Inc v Luik (supra).
59 Although no specific or particular damage was relied upon by Fendi, there was evidence that the wallet was of inferior quality to products manufactured by Fendi. In any event, it is open to me to infer that damage has been caused to the goodwill and reputation of the business of Fendi as the result of the passing off of the respondent's business.
60
The nature of the misrepresentation made by the
respondent as to the identification of his shop and the products he was selling
in relation to and by reference to the "Fendi" name and the
mark
is such that, having regard to the nature of Fendi's business and its products,
it is open to me to infer that damage has been caused to the goodwill and
reputation of the business of Fendi: Petersville
Sleigh Ltd v Sugarman [1988] VR 426 at 428.
Conclusions
61 I am therefore satisfied that the applicants are entitled to declarations as to trade mark infringement and that Fendi is entitled to a declaration that the respondent has passed off his business and products sold by him as and for the business and products of Fendi and that the respondent has contravened ss 9 and 12 of the Fair Trading Act. The applicants are also entitled to injunctions restraining the respondent from continuing the conduct complained of.
62 The trial was held on the issue of liability only and it is now up to the applicants to make an election as to whether they wish to seek damages or an account of profits in respect of the infringement of their trade marks and whether Fendi wishes to make a similar election in respect of the passing off of its business and products. It will also be necessary for Fendi to lead evidence as to the extent of any damages suffered as a result of contraventions of ss 9 and 12 of the Fair Trading Act and the commission by the respondent of the tort of passing off if it wishes to recover any damages in respect of those causes of action.
63 I will give the parties the opportunity to speak to the form of any orders which should be made at this stage of the proceeding.
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I certify that the preceding sixty-three (63) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Goldberg. |
Associate:
Dated: 29 November 2002
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Counsel for the Applicants: |
E A Strong |
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Solicitor for the Applicants: |
Corrs Chambers Westgarth |
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Counsel for the Respondent: |
The Respondent appeared in person |
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Date of Hearing: |
23 and 24 October 2002 |
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Date of Judgment: |
29 November 2002 |