PKT Technologies Pty Ltd (formerly known as Fairlight.Au Pty Ltd) v Peter Vogel Instruments Pty Ltd [2019] FCAFC 216

FEDERAL COURT OF AUSTRALIA

PKT Technologies Pty Ltd (formerly known as Fairlight.Au Pty Ltd) v Peter Vogel Instruments Pty Ltd [2019] FCAFC 216 Appeal from: PKT Technologies Pty Ltd (formerly known as Fairlight.Au Pty Ltd) v Peter Vogel Instruments Pty Ltd [2018] FCA 1587

File number: NSD 2091 of 2018

Judges: BESANKO, BANKS-SMITH AND STEWART JJ

Date of judgment: 5 December 2019

Catchwords: DAMAGES – damages for wrongful repudiation of agreement – expectation damages – whether claim for expectation damages expressly abandoned in previous hearing – party is bound by forensic election – likelihood of attainment of a profit – whether evidence of projections of future earnings sufficient to prove a likelihood of attainment – where projections undermined by actual performance – projections rejected as reliable indicator of actual performance – whether losses arising naturally from the breach of the contract – claim for expectation damages rejected DAMAGES – reliance damages – whether reliance damages only available as an alternative to expectation damages – not bound to elect between types of damages – recoupment of reliance losses – whether trial judge included future operating expenses in calculation – onus fell on appellant to prove that the net value of the performed contract would not have covered the expenditure incurred prior to rescission – onus not met – where trial judge relied on a general percentage figure to calculate lost opportunity to recoup reliance losses – no error in approach – 30% of expenditure award maintained DAMAGES – additional mitigation damages awarded – whether sufficient basis to allow damages – whether mitigation losses can predate repudiation of the contract – losses do not logically relate to mitigation – award reduced TRADE MARKS – account of profits – where registered trade mark infringed by respondent by offering to supply and supplying applications for use on electronic devices – where trade mark used in relation to sales made both in Australia and other countries – whether profits recoverable by registered owner in respect of sales made in other countries – whether appellant clearly argued or sufficiently developed submissions with regard to applicability of s 228 of the Trade Marks Act 1995 (Cth) – matter not sufficiently raised – whether sales made in other countries shown to be based on offers to sell in Australia – ground dismissed – whether sales rightly attributed to the use of the trade mark – cross-appeal ground dismissed Copyright – infringement – whether cross-respondents jointly liable for copyright infringement – no evidence that infringement authorised by parent company – cross-appeal ground dismissed