Fendi Adele SRL v Friedland [2002] FCA 1486

FEDERAL COURT OF AUSTRALIA

Fendi Adele SRL v Friedland [2002] FCA 1486 INTELLECTUAL PROPERTY – trade mark infringement – respondent offered for sale and sold goods bearing certain signs – goods offered for sale and sold were not manufactured with the authority or licence of the applicants – whether signs on goods "substantially identical" to trade marks registered by the applicants in respect of those classes of goods. TRADE PRACTICES – respondent traded under name of applicant – respondent offered for sale and sold goods bearing applicant's name and signs substantially identical to registered trade marks of applicant – whether conduct amounted to misleading and deceptive conduct in contravention of Fair Trading Act 1999 (Vic) – whether conduct amounted to the making of false representations in contravention of Fair Trading Act 1999 (Vic) – whether conduct constituted passing off – whether earlier use of name by respondent was a defence to applicant's claim of misleading and deceptive conduct and passing off – whether earlier use of name by respondent gave rise to doctrines of equitable estoppel or acquiescence.

Trade Marks Act 1995 (Cth): s 120(1) Fair Trading Act 1999 (Vic): s 9, s 12

Shell Co of Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, considered Conagra Inc v McCain Foods (1992) 33 FCR 302, applied Petersville Sleigh Ltd v Sugarman [1998] VR 426, applied Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177, applied R & C Products Pty Ltd v SC Johnson & Sons Pty Ltd (1993) 42 FCR 188, applied Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1981) 149 CLR 191, applied Erven Warnink Besloten v J Townend & Sons (Hull) Ltd [1979] AC 731, applied Moorgate Tobacco Co Limited v Philip Morris Limited (No 2) (1984) 156 CLR 41, applied B M Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363, applied Geoffrey Inc v Luik (1997) 38 IPR 555, applied FENDI ADELE SRL & ANOR v ARIEH FRIEDLAND V 835 of 2001 GOLDBERG J 29 NOVEMBER 2002 MELBOURNE