Arrowcrest Group Pty Ltd v DTM Racing Wheels Pty Ltd [2003] FCA 1443

FEDERAL COURT OF AUSTRALIA

Arrowcrest Group Pty Ltd v DTM Racing Wheels Pty Ltd [2003] FCA 1443

INTELLECTUAL PROPERTY – DESIGNS – application for injunctive relief claiming infringement of applicant's monopoly in registered design – application for account of profits in respect of infringement – permanent injunction granted and account of profits ordered.

Designs Act 1906 (Cth) ss 26(3), 30, 32B

Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 cited ARROWCREST GROUP PTY LTD v DTM RACING WHEELS PTY LTD, THOMAS LEE, STARCORP HOLDINGS PTY LTD AND EVOLUTION RACING WHEELS PTY LTD No S 238 of 2002 LANDER J ADELAIDE 23 SEPTEMBER 2003

IN THE FEDERAL COURT OF AUSTRALIA

SOUTH AUSTRALIA DISTRICT REGISTRY S 238 OF 2002

BETWEEN: ARROWCREST GROUP PTY LTD

APPLICANT

AND: DTM RACING WHEELS PTY LTD

FIRST RESPONDENT

THOMAS LEE

SECOND RESPONDENT

STARCORP HOLDINGS PTY LTD

THIRD RESPONDENT

EVOLUTION RACING WHEELS PTY LTD

FOURTH RESPONDENT

JUDGE: LANDER J

DATE OF ORDER: 25 SEPTEMBER 2003

WHERE MADE: ADELAIDE

THE COURT ORDERS THAT: 1. A declaration that Registered Design Number 146825 ('the Design') is valid and the applicant is the registered owner of the Design. 2. A declaration that the first and fourth respondents have infringed the monopoly of the applicant in the Design. 3. The first and fourth respondents, whether by themselves, their servants or agents or otherwise, be permanently restrained from importing, selling, offering or keeping for sale: 3.1 wheels bearing all of the markings 'JWL VIA 695 KG', '18 x 8JJ' and with the marking 'JAPAN' erased; 3.2 wheels of any diameter and bearing all of the markings 'JWL VIA 695 KG', and with the marking 'JAPAN' erased; and 3.3 wheels of any diameter designated or described from time to time as AKT-1137, as shown in the annexures to this order. 4. The first and fourth respondents, whether by themselves, their servants or agents or otherwise, be permanently restrained from importing, selling, offering or keeping for sale, or otherwise supplying, copying, applying to any article an obvious imitation of the Design. 5. The first and fourth respondents deliver to the applicant a schedule setting out the person or persons to whom any of the wheels described in orders 3.1 to 3.3 above have been sold or supplied and the date of the sale or supply within five business days of the service of the order of the Court. 6. The first and fourth respondents deliver up to the applicant at 28 Sheffield Street, Woodville North, SA, 5012 at the respondents' cost, 364 wheels described in orders 3.1 to 3.3 above or such number as remain in the possession, custody or power of the first and/or fourth respondent within five business days of the service of the order of the Court. 7. A declaration that the first respondent has made a profit by infringing the monopoly of the applicant in the Design assessed in the sum of $1218.19. 8. A declaration that the fourth respondent has made a profit by infringing the monopoly of the applicant in the Design assessed in the sum of $4714.20. 9. The first respondent pay to the applicant the amount of $1218.19. 10. The fourth respondent pay to the applicant the amount of $4714.20. 11. The cross claim of the first, second and fourth respondents (collectively 'the respondents' be dismissed. 12. The respondents pay the applicant's costs of the claim and cross claim on a solicitor own client basis but excluding costs which are unreasonably incurred or are of an unreasonable amount to be agreed or taxed from 6 September 2003 but otherwise on a party and party basis. 13. Liberty to the applicant to apply in the event that the respondents have sold more than 36 wheels of the type described in orders 3.1 to 3.3 above to vary the account of profit assessed herein. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.