Windsor Smith Pty Ltd v Dr Martens Australia Pty Ltd [2000] FCA 756

FEDERAL COURT OF AUSTRALIA

Windsor Smith Pty Ltd v Dr Martens Australia Pty Ltd [2000] FCA 756 TRADE PRACTICES – misleading and deceptive conduct – where trade dress and get up of respondents' footwear ("Z welt footwear") comprise distinctive features – where appellants' footwear ("Windor Smith footwear") copied distinctive features of Z welt footwear – where soles of Z welt and Windsor Smith footwear marked with the expression "The Original" ("the marking") – whether trial judge erred in finding that use of the marking in conjunction with other distinctive features of the Z welt footwear amounts to a misrepresentation that the Windsor Smith footwear is Z welt footwear – where Windsor Smith footwear labelled with own brand – where pricing differential between Z Welt and Windsor Smith footwear – whether branding, labelling and pricing serves to distinguish Windsor Smith footwear – where purpose in affixing the marking is to suggest or imply a connection with the Z welt footwear – whether purpose decisive – overall impression upon examination of the footwear TORTS – passing off Trade Practices Act 1974(Cth) S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998)43 IPR 581 applied Australian Woollen Mills v F S Walton & Co Ltd (1937) 58 CLR 641 applied Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd [1999] FCA 1655 applied WINDSOR SMITH PTY LTD & ORS v DR MARTENS AUSTRALIA PTY LTD & ORS V 306 OF 1999 SUNDBERG, EMMETT & HELY JJ 7 JUNE 2000 MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY V 306 OF 1999

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN: WINDSOR SMITH PTY LTD

FIRST APPELLANT

CHICAGO BOOT COMPANY PTY LTD

SECOND APPELLANT

CRAIG MANCE