While I thought that Bugatti was a car brand, it turns out it is (also) since 1989 a registered trade mark in Australia for,amongst other things, men’s clothing. Originating in Canada, there is also a line of men’s clothing under the label BUGATCHI UOMO. Products bearing this brand have been coming into Australia since 1991. Shine Forever, however, has been importing the line since 2010. Tracey J has ruled that Shine Forever has been infringing the BUGATTI trade mark.
Unsurprisingly, Tracey J rejected Shine Forever’s argument that it was not using BUGATCHI UOMO as a trade mark. According to Shine Forever, the Estex case meant that the Canadian supplier, as the manufacturer of the products, was using the BUGATCHI UOMO trade mark in Australia and not Shine Forever. Nice try, but no cigar.
Shine Forever also tried to rely on the s 122(1)(f) and (fa) defences. There is no infringement if:
(f) the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it; or
(i) the person uses a trade mark that is substantially identical with, or deceptively similar to, the first-mentioned trade mark; and
(ii) the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it; or
For most of the preparatory steps and the trial, Shine Forever maintained it was the person entitled to rely on the defence. However, in the course of submissions the director (self-)representing Shine Forever sought to argue that the Canadian supplier was the person entitled to the defence. Tracey J would not let Shine Forever change its case at that stage. The interesting thing here is that Tracey J said:
54 Like s 123, s 122 operates as a qualification or exception to s 120(1). It provides a defence to “a person” who may otherwise contravene s 120(1) by infringing a registered trade mark. The “person” which is alleged, in the present proceeding, to have contravened s 120(1) is Shine Forever. It is, therefore, the “person” referred to in the prefatory words of s 122(1). The various references, in paragraphs (f) and (fa), to “the person” plainly refer to the person against whom infringement of s 120(1) is alleged and who seeks to invoke one or more of the defences available under s 122(1). In this case that person is Shine Forever, not BUA.
55 As Shine Forever did not seek to contend that it had defences under paragraphs (f) and (fa), these provisions do not assist it.
This probably means that, because Shine Forever was arguing the Canadian supplier was using the trade mark, it couldn’t then argue it was the person referred to in s 122.
Wonder why it couldn’t do that in the alternative?
Now, usually where a local importer or retailer is selling goods bearing a foreign manufacturer’s trade mark, the foreign manufacturer is the owner of the trade mark. Does Tracey J’s approach therefore also mean that, on the strict terms of the provision, the importer or retailer who gets sued for infringement could never rely on the defence when the person who would be entitled to get registered is the foreign supplier?
Bugatti GmbH v Shine Forever  FCA 1116