Accounting for profits: 2 reminders

Even though (or perhaps because) the trade mark infringer was self-represented at trial, this short case includes two important cautions that it is as well to keep in mind.

Mr King ran some boxing events with some training and the like under the name “White Collar Boxing”. The problem was that Delta Metallics already owned the trade mark for “White Collar Boxing” in respect of those services. Delta Metallics sued and eventually obtained judgment on the liability questions by default. Mr King then provided an affidavit declaring that he made some $12,253 in profits. Delta Metallics elected to pursue an account of profits and the trial judge ultimately awarded it that sum.

Without going into all the procedural aspects of the appeal: the cautionary points:

(1) If you want to argue that you shouldn’t have to account for the profits because you are an innoncent infringer, you need to get that innocence established at the liability stage of the proceeding. (Unless you make special provision for it somehow), you won’t get the chance when quantum is being determined.

(2) If you are an infringer (and don’t make out the innocence defence), you are required to account only for those profits made by reason of the infringing conduct.[1] As a result, you may not be liable to account for all the profits you made if you can satisfy the Court that some of the profits did not derive from the use of the trade mark. Mr King couldn’t rely on this on the appeal because he had not tried to argue it at the trial (see [50]-[54]).

King v Delta Metallics Pty Ltd [2013] FCAFC 93 (North, Cowdroy and McKerracher JJ)

Lid dip: Siobhan Ryan