Diesel Spa v Hwang [2005] FCA 1820

FEDERAL COURT OF AUSTRALIA

Diesel Spa v Hwang [2005] FCA 1820 TRADE MARKS – infringement of subsecs 120(1) and (2) of the Trade Marks Act 1995 (Cth) – applicants manufacture and distribute clothing and fashion accessories by reference to the name "Diesel" – allegation that eleventh respondent purchased counterfeit Diesel goods with the intention to sell or distribute them – whether any "use" of the Diesel trade marks by the eleventh respondent – hearing limited to question of liability and the granting of declaratory and injunctive relief TRADE PRACTICES – whether eleventh respondent engaged in misleading or deceptive conduct – whether eleventh respondent made false representations TORTS – passing off

Corporations Act 2001 (Cth) ss 9, 1305 Fair Trading Act 1987 (NSW) ss 42, 44 Trade Marks Act 1995 (Cth) s 120 Nokia Corporation v Truong [2005] FCA 114 applied Norwich Pharmacal Co v Commissioners of Customs and Excise [1972] RPC 743 referred to DIESEL SPA AND ANGUS IMPORTS PTY LTD v IN BAE HWANG, DARREN GINSBERG, DIONNE SHINE AND ALBERT EZEKIEL VID 946 OF 2004 TAMBERLIN J SYDNEY 22 DECEMBER 2005

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY VID 946 OF 2004

BETWEEN: DIESEL SPA

FIRST APPLICANT

ANGUS IMPORTS PTY LTD (ACN 066 175 219)

SECOND APPLICANT

AND: IN BAE HWANG

SIXTH RESPONDENT

DARREN GINSBERG

NINTH RESPONDENT

DIONNE SHINE

TENTH RESPONDENT

ALBERT EZEKIEL

ELEVENTH RESPONDENT

JUDGE: TAMBERLIN J

DATE OF ORDER: 22 DECEMBER 2005

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The Eleventh Respondent, whether by himself, his servants, employees or agents, or howsoever otherwise, be restrained from importing, manufacturing, promoting, advertising, distributing, offering for sale, selling or exhibiting in public any clothing, footwear or accessories in Australia by reference to any of the following trade marks: (a) the word "DIESEL"; and/or (b) the "D" logo as depicted in registered Australian trade mark number 740924, a copy of which is annexed to this Amended Application; and/or (c) the "ONLY THE BRAVE" logo as depicted in registered Australian trade mark numbers 630189, 739658 and 901971, a copy of which is annexed to this Amended Application: ("the Trade Marks") unless the affixing of the Trade Marks to those products is or has been done by or with the licence or approval of the Applicants or any person or persons with authority from the Applicants to licence or approve the affixing of the Trade Marks to those products ("Counterfeit Products"). 2. The Eleventh Respondent deliver up on oath to the Applicants all Counterfeit Products and other products, packaging, catalogues, promotional material, advertisements, signage and other materials in any form which bear, include or refer to the Trade Marks or any other word, mark or sign that is substantially identical or deceptively similar to the Trade Marks. 3. The Eleventh Respondent deliver up on oath to the Applicants a list of the names, addresses, and contact numbers of all suppliers and customers of all Counterfeit Products in his possession or the possession of his servants and agents. 4. The Eleventh Respondent is to pay the costs of the Applicants to date. 5. The matter is stood over to 17 February 2006 at 9:30 am for further directions.