Dr Marten's Australia Pty Ltd v Figgins Holdings Pty Ltd [1999] FCA 461

FEDERAL COURT OF AUSTRALIA

Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd [1999] FCA 461

EXPLANATORY SUMMARY Interests associated with the manufacture of Dr Martens footwear commenced proceedings against Figgins Holdings Pty Ltd, Bata Shoe Company of Australia Pty Ltd, Rivers (Australia) Pty Ltd and Windsor Smith Pty Ltd and other companies and persons associated with them claiming, in substance, that those companies had manufactured and sold footwear which copied the features of the trade dress and get‑up of Dr Martens Z welt footwear which were said to be distinctive of the Z welt footwear. It was said that in so doing these companies had represented that their footwear was Z welt footwear and came from the same trade source as the Dr Martens Z welt footwear. These companies had marked their footwear with their own brands and their footwear was sold at retail prices cheaper than the prices of the Dr Martens Z welt footwear. The Court has found that the claims against Figgins Holdings Pty Ltd, Bata Shoe Company of Australia Pty Ltd, Rivers (Australia) Pty Ltd and the companies and persons associated with them have not been made out and the Court has dismissed those claims. The Court has found that Windsor Smith Pty Ltd and companies associated with it have represented that their three items of footwear are Z welt footwear, come from the same trade source as the Z welt footwear and have the sponsorship or approval of the Dr Martens trade source. The Court has found that these companies have passed off their footwear as and for footwear emanating from the Dr Martens trade source and have contravened s 52 and s 53(c) of the Trade Practices Act 1974 (Cth). The Court has also found that a director of these companies was involved in those contraventions. The Court has concluded that the application against the Windsor Smith respondents has succeeded because in addition to the features of trade dress and get‑up found in the Windsor Smith footwear there was moulded on the sole of such footwear the words "The ORIGINAL" in a stylised script identical to the words "The ORIGINAL" moulded on the soles of Dr Martens footwear since 1987. It will now be necessary for there to be a further hearing to determine the amount of loss and damage suffered by the Dr Martens interests as a result of the conduct of Windsor Smith Pty Ltd and its associated companies.