Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626

FEDERAL COURT OF AUSTRALIA

Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 TRADE PRACTICES – misleading and deceptive conduct – whether the respondent represented it was associated with Mark Foys, a respected Sydney retailer – whether the respondent's representations were only that they ascribed to similar commercial values as Mark Foys TRADE PRACTICES – misleading and deceptive conduct – whether the respondent represented it was associated, in connection with the supply of goods and services, with Mark Foys, a respected Sydney retailer – where Mark Foys had ceased trading and held no good will – where the public knew Mark Foys was no longer trading – whether such goodwill, was a necessary element of misleading and deceptive conduct – whether, in the absence of present commercial goodwill the public may be misled by representations of an association TRADE PRACTICES – whether conduct contravened subs 53(c) or (d) – whether goods or services were represented to have a sponsorship, approval or affiliation they did not have TRADE MARKS – whether the Court should, as a matter of discretion, make declarations and orders in relation to a trade mark application – where other remedies under the Trade Marks Act 1995 had not been utilised before the recourse to court action Trade Marks Act 1995 s 191 Trade Practices Act 1974 ss 52, 53(c) & 53(d) S & I Publishing Pty Ltd v Australian Surf Life Saving Pty Ltd (1998) 80 FCR 354 cited Campomar Sociedad, Limitada v Nike International Ltd (2000) 169 ALR 677 followed Star Industrial Co Ltd v Yap Kwee Kor [1976] 2 FSR 256 distinguished Pink v J A Sharwood & Co Ltd (1913) 30 RPC 725 distinguished Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 distinguished Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 distinguished ACI Australia Ltd v Glamour Glaze Pty Limited (1988) 11 IPR 269 followed Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553 followed Australian Woollen Mills Ltd v F S Walton & Ltd (1937) 58 CLR 641 cited Bridge Stockbrokers Ltd v Bridges (1984) 57 ALR 401 cited MARK FOYS PTY LTD v TVSN (PACIFIC) LIMITED N 635 OF 2000 BEAUMONT, TAMBERLIN AND EMMETT JJ SYDNEY 15 NOVEMBER 2000