Skip to content

IPwars.com

Mainly intellectual property (IP) issues Down Under

  • Copyright
  • Designs
  • Patents
  • Trade marks
  • Enforcement
  • IP generally
  • Internet
  • Trade
  • Technology
  • Because I felt like it

Tag: account

How much did Bugatchi get Bugatti-ed?

war / 9 April 20149 April 2014 / Trade marks

Last October, Tracey J found that Shine Forever had infringed Bugatti’s registered trade mark (for BUGATTI) by selling clothing and accessories under the trade mark BUGATCHI and BUGATCHI UOMO. Now Tracey J has ordered that Shine Forever pay Bugatti $551,159.39 plus costs on an indemnity basis.

Apart from the magnitude of the amount, the decision illustrates the onus the court places on an infringer, once found to infringe, and the latitude afforded a trade mark owner confronted by a recalcitrant infringer.

In addition to an injunction to stop the infringing conduct, like most intellectual property statutes, the relief one can get for infringement of a registered trade mark includes damages or, at the trade mark owner’s option, an account of profits.[1]

To assist Bugatti in choosing between these two options, Shine Forever was ordered to provide an affidavit deposing to how many goods it had sold bearing the infringing trade mark, the price(s) they were sold for, the costs incurred in acquiring and selling the goods and the estimated profit it made.

Shine Forever was dilatory in complying with this order and there were serious doubts about the genuineness of its compliance. For example, it was claimed in Shine Forever’s “election” affidavit that the total sales were $198,407.39 worth of goods “through the BUGATCHI UOMO branded store” while total outgoings were $157,680 so that, after adjustments, there had in effect been no profit. However, in the course of the liability proceedings, Shine Forever had filed a profit and loss statement for the first 8 months of the infringing period showing total sales of $370,440.10. This profit and loss statement had been audited and certified by Shine Forever’s external accountants.

Shine Forever did not seek to explain the disparity between these two sets of figures. In fact, it failed to turn up to the hearing for the account at all.

Bugatti pointed out that the audited figures for only 8 months of the 24 month period of infringement far exceeded the amount admitted for the whole period in the “election” affidavit. The audited figures showed sales of $46,000 per month. If it were assumed that Shine Forever continued to make sales of $46,000 per month for the whole infringing period, total sales would have been $1,129,440.10. Bugatti then applied a series of assumptions and discounts, including using the costs estimated in the “election” affidavit (not the certified profit and loss statement) to arrive at the figure $551,159.39.

Tracey J recognised that Bugatti’s approach was far from ideal, but was prepared to adopt it as the best available course given the limited and imperfect information available – information which only Shine Forever could supply and which it had manifestly failed to do:

20 This process of calculation is far from ideal. It is beset by many difficulties. These include the need to make assumptions because business records which should have been produced by Shine Forever, pursuant to Court order, were not provided. Of particular concern is that …. This concern is alleviated, to some extent, by the applicant’s willingness to make a number of allowances in Shine Forever’s favour in other aspects of the calculations. ….

21 The evidence before the Court does not enable me to determine, with precision, the actual profit which Shine Forever derived from its infringement of the applicant’s marks. It is to be borne in mind that the difficulties to which I have adverted have, in large measure, been created by the failure of Shine Forever to comply with the Court’s orders and its failure to appear and make submissions on the amount to be awarded as an account of profits. The applicant should not be prejudiced by these failures.

22 The applicant has proposed a plausible method of calculating sales revenue during the relevant period by assuming that the average monthly sales figure in the first eight months of the period continued for the next 16 and a half months. In the absence of audited figures for the latter period this approach is not unreasonable and may be regarded as the best available option. Once the sales revenue figure was established, Shine Forever bore the burden of persuading the Court, by evidence, what costs should properly be deducted in order to determine the profit which it made from selling clothing and accessories bearing the infringing marks. This, Shine Forever has manifestly failed to do. ….

His Honour then awarded Bugatti its costs on an indemnity basis because of Shine Forever’s dismal failure to comply with its obligations to the Court.

Bugatti GmbH v Shine Forever Men Pty Ltd (No 2) [2014] FCA 171


  1. The two are alternatives: damages compensate the trade mark owner for the loss it has suffered as a result of the infringement; an account of profits strips the infringer of the profits it has made by reason of the infringement.  ?

Share this:

  • Click to share on Twitter (Opens in new window)
  • Click to share on LinkedIn (Opens in new window)
  • Click to share on Facebook (Opens in new window)
  • Click to print (Opens in new window)
  • Click to share on Reddit (Opens in new window)
  • Click to share on Pocket (Opens in new window)
  • Click to email this to a friend (Opens in new window)
  • Click to share on Pinterest (Opens in new window)
  • Click to share on Tumblr (Opens in new window)
  • Click to share on WhatsApp (Opens in new window)

Like this:

Like Loading...
Leave a Comment on How much did Bugatchi get Bugatti-ed?/ account,Australia,bugatti,costs,election,indemnity costs,profits,remedies,Trade marks

Accounting for profits: 2 reminders

war / 2 September 201328 August 2013 / Trade marks

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


  1. Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25  ?

Share this:

  • Click to share on Twitter (Opens in new window)
  • Click to share on LinkedIn (Opens in new window)
  • Click to share on Facebook (Opens in new window)
  • Click to print (Opens in new window)
  • Click to share on Reddit (Opens in new window)
  • Click to share on Pocket (Opens in new window)
  • Click to email this to a friend (Opens in new window)
  • Click to share on Pinterest (Opens in new window)
  • Click to share on Tumblr (Opens in new window)
  • Click to share on WhatsApp (Opens in new window)

Like this:

Like Loading...
Leave a Comment on Accounting for profits: 2 reminders/ account,boxing,innocent infringer,profits,remedies,self-represented,split trial,Trade marks

Infringing a registered design

war / 8 December 2009 / Designs

Back in October, Jessup J found Chiropedic’s design for a mattress and base (registered under the 1906 Act) valid and infringed, by only 2 of a number of Radburg’s competing mattresses.

The first point of interest is the impact of a statement of novelty. A second point of interest is the impact of trade variants or “features commonly used in the trade”. Thirdly, his Honour ruled on the costs to be taken into account in the course of an account of profits.

This was the representation in the design (ADR 127723)

2009_116300.jpg

There was the usual statement of monopoly, limiting the design to the features of shape or configuration.

Unusually, there was also a statement of novelty:

Novelty is claimed in the shape and configuration of the upper layer of the mattress portion of the mattress and base as indicated by the beading as shown in the representations.

Chiropedic (the design owner) contended that novelty or originality of its design was not limited by this statement and, even if it were, validity and infringement still fell to be assessed by consideration of the design as a whole citing, in support, the judgment of Davies and Whitlam JJ in Richsell v Khoury at [7].

Jessup J reviewed the cases referred to in Richsell, but discovered that they did not actually deal with it. His Honour found considerably greater assistance in the Franki Report which had led to the introduction of the concept:

On the other hand we were of the opinion that the Registrar should be given power to require a ‘statement of novelty’ to be lodged. By ‘statement of novelty’ we mean a statement dealing with the features of a design that may be said to provide the basis for the design being new or original. For example, if in a design for a chair the significant feature is in the shape of the two front legs and attention is drawn to this fact in a statement of novelty, while there would be no infringement of the design unless the infringing article satisfied the tests for infringement of the chair as a whole, nevertheless it is reasonable to assume that, in testing the novelty and originality of the design, attention would be directed to the two front legs and that this feature of the design would be given particular weight in testing infringement, although an infringement could not be proved unless the relevant tests were satisfied in respect of the whole chair. (my emphasis)

and Slade LJ’s consideration in Sommer Allibert of the similar concept in the UK legislation (the latter of which had not been referred to in Richsell or Polyaire). Accordingly, Jessup J held:

[22] …. The argument which Davies and Whitlam JJ rejected in that case was that, in making the comparison required by s 17(1), one should look only at the features for which novelty had been claimed. It is one thing to say that the registered owner should not be permitted to use his or her own statement of novelty for the purpose of shutting the court’s eyes to the appearance of a complete design, and to do so to his or her own advantage. It is another thing altogether to say that the registered owner should not be held to such a statement of novelty when the court comes to consider what aspects of the registered design are new or original. The court’s eyes would then be open to the complete design, of course, but it should, in my view, assess that design against the prior art with a particular emphasis upon those features that the registered owner himself or herself, at the point of registration, considered to be novel.

Paying particular attention to the features identified in the Statement of Novelty, his Honour went on to find the design valid over the prior art. For example, it had a relatively square look where the horizontal surface met the upper line of beading, while the prior art was relatively curved. Similarly, the proportion of the upper layer to the lower lower of the mattress was significant over the prior art.

These findings had particular significance when it came to considering infringement. One of Radburg’s designs was found to be identical to the registered design. A second was an obvious imitation. A number of others, however, escaped liability as they either had similar convex curvature to the prior art rather than the square look of the registered design or the upper layer of the mattress was a significantly smaller proportion of the mattress; many of them also had quite different ribbing.

One striking visual difference was discounted in the comparisons: the mattresses in some of the prior art had three layers, not two; so that the mattress could be flipped over and used. The evidence established, however, that the omission or inclusion of the bottom or third layer was a variant commonly resorted to in the trade. Another feature, an “inward set” was apparently visible to those in the trade on fastidious inspection, but his Honour found it did not strike the eye and was an immaterial variation.

Finally, on the principles to be applied in the account, Jessup J ruled that the respondent’s bills of materials should be used (where available) on the principle that they reflected as closely as possible the actual costs incurred and so, where the evidence showed that margins earned on different product lines were not uniform, the respondent would not generate a windfall profit.

Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2009] FCA 1163

So far as I can see, no application for leave to appeal has been filed.

Share this:

  • Click to share on Twitter (Opens in new window)
  • Click to share on LinkedIn (Opens in new window)
  • Click to share on Facebook (Opens in new window)
  • Click to print (Opens in new window)
  • Click to share on Reddit (Opens in new window)
  • Click to share on Pocket (Opens in new window)
  • Click to email this to a friend (Opens in new window)
  • Click to share on Pinterest (Opens in new window)
  • Click to share on Tumblr (Opens in new window)
  • Click to share on WhatsApp (Opens in new window)

Like this:

Like Loading...
Leave a Comment on Infringing a registered design/ 1906 Act,account,Australia,Chiropedic,Design,fraudulent imitation,infringement,monopoly,novelty,obvious imitation,Radburg,trade variant,validity

Pages

  • About
  • Comments policy
  • Contact me
  • Posts before 15 August 2008
  • Subscribing to email notifications

Follow me on Twitter

My Tweets
February 2021
M T W T F S S
1234567
891011121314
15161718192021
22232425262728
« Dec    

Categories

  • Antitrust
  • Because I felt like it
  • Confidential Information
  • Copyright
  • Designs
  • Domain names
  • Enforcement
  • Franchising
  • Internet
  • IP generally
  • IT
  • Patents
  • PBR
  • Semiconductor chips
  • Technology
  • Trade
  • Trade marks
  • Trade Practices

Tags

ACIP antitrust appeal Apple Assignment Australia authorisation business method consultation Copyright damages Design Designs EU Google iiNet infringement injunction Internet inventive step IP IP Australia isp keywords licence manner of manufacture non-use opposition ownership parallel imports passing off Patent patentable subject matter Patents Productivity Commission raising the bar review subject matter Telstra Trade mark Trade marks UK USA use as a trade mark WIPO

Recent Posts

  • News media “use” right
  • More on the Designs ACIP bill
  • Designs Amendment (Advisory Council On Intellectual Property Response) Bill 2020
  • A case about works of artistic craftsmanship
  • Patents get exhausted in Australia

Recent Comments

  • ESCO’s patent did not make a composite promise and so is not invalid afterall | Australian Law Blogs on ESCO’s patent did not make a composite promise and so is not invalid afterall
  • Amsterdam in July? | Australian Law Blogs on Amsterdam in July?
  • The Hague Agreement: a cost benefit analysis | Australian Law Blogs on The Hague Agreement: a cost benefit analysis
  • Bohemia Crystal shattered | Australian Law Blogs on Bohemia Crystal shattered
  • Enforcing foreign judgments – consultations | Australian Law Blogs on Enforcing foreign judgments – consultations

Archives

  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • March 2020
  • February 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • June 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • October 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • December 2016
  • November 2016
  • October 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • October 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • November 2010
  • October 2010
  • September 2010
  • August 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010
  • March 2010
  • February 2010
  • January 2010
  • December 2009
  • November 2009
  • October 2009
  • September 2009
  • August 2009
  • July 2009
  • June 2009
  • May 2009
  • April 2009
  • March 2009
  • February 2009
  • January 2009
  • December 2008
  • November 2008
  • October 2008
  • September 2008
  • August 2008
  • July 2008

Meta

  • Register
  • Log in
  • Entries feed
  • Comments feed
  • WordPress.org
  • RSS - Posts
  • RSS - Comments
Proudly powered by WordPress | Theme: Bhari
loading Cancel
Post was not sent - check your email addresses!
Email check failed, please try again
Sorry, your blog cannot share posts by email.
%d bloggers like this: