Brother Industries, Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1694

FEDERAL COURT OF AUSTRALIA

Brother Industries, Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1694 INJUNCTIONS – restraining orders to be formulated with precision. Federal Court of Australia Act 1976 (Cth) Federal Court Rules 1979 (Cth)

Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd [2007] FCAFC 146 considered Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563 considered ICI Australia Operations Pty Ltd v Trade Practices Commission (1992) 38 FCR 248 cited MacLean v Shell Chemical (Australia) Pty Ltd (1984) 2 FCR 593 cited BROTHER INDUSTRIES, LTD AND BROTHER INTERNATIONAL (AUST) PTY LTD (ACN 001 393 835) v DYNAMIC SUPPLIES PTY LTD (ACN 064 793 862) NSD 50 OF 2005

TAMBERLIN J

9 NOVEMBER 2007

SYDNEY IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 50 OF 2005

BETWEEN: BROTHER INDUSTRIES, LTD

First Applicant/First Cross-Respondent

BROTHER INTERNATIONAL (AUST) PTY LTD

(ACN 001 393 835)

Second Applicant/Second Cross Respondent

AND: DYNAMIC SUPPLIES PTY LTD

(ACN 064 793 862)

Respondent/Cross-Claimant

JUDGE: TAMBERLIN J DATE OF ORDER: 9 NOVEMBER 2007

WHERE MADE: SYDNEY

THE COURT:

Declaratory relief 1. DECLARES that the respondent has infringed each of the following Australian registered trade marks: (a) Australian registered trade mark No. 440897; (b) Australian registered trade mark No. 479964; (c) Australian registered trade mark No. 479966, (together the Brother Trade Marks) by the importation, distribution, offer for sale and sale of non‑branded OEM printer drum units manufactured by the first applicant, in boxes to which the Brother Trade Marks and the model number DR200 were applied without the first applicant's licence, authority or consent (the Infringing Units). 1A. DECLARES that the respondent has infringed the Brother Trade Marks by the sale of the Infringing Units together with invoices to which the Brother Trade Marks had been applied without the licence, authority or consent of the first applicant. 2. DECLARES that the importation, distribution, offer for sale and sale by the respondent of the Infringing Units constituted: A misleading and deceptive conduct in contravention of section 52 of the Trade Practices Act 1974 (Cth) (the Act); and B the making of false representations in contravention of section 53(a), (c), (ea) and (g) of the Act that: (i) the Brother Trade Marks were used with the first applicant's licence or authority; (ii) the units in the boxes were of the composition, style and model of genuine Brother DR-200 units; and (iii) the units attracted the same warranty as genuine Brother DR-200 units; and C passing off by the respondent of the Infringing Units: (i) as and for printer drum units in respect of which the Brother Trade Marks were used with the licence or authority of the applicants; (ii) as and for printer drum units of the composition, style or model as the printer drum units in respect of which the Brother Trade Marks were used with the licence or authority of the applicants; (iii) as and for printer drum units which are subject to the same warranty as printer drum units in respect of which the Brother Trade Marks were used with the licence or authority of the applicants. Injunctive relief 3. ORDERS that the respondent, whether by itself, its officers, employees or agents or otherwise however, permanently be restrained from infringing any of the Brother Trade Marks by importing, distributing, offering for sale, selling or otherwise dealing in the course of trade with: (a) any goods in respect of which any of the Brother Trade Marks are registered; and (b) goods of the same description as any of the goods in respect of which any of the Brother Trade Marks are registered, in packaging to which any one or more of the Brother Trade Marks or any name, word, mark, sign or device which is substantially identical with or deceptively similar to any one or more of the Brother Trade Marks have been applied without the licence or authority of the first applicant. 3A. ORDERS that the respondent, whether by itself, its officers, employees or agents or otherwise however, permanently be restrained from selling any such goods as described in paragraph 3 above together with invoices to which the Brother Trade Marks have been applied without the licence or authority of the first applicant. 4. ORDERS that the respondent, whether by itself, its officers, employees or agents or otherwise however, permanently be restrained from: (a) representing that OEM printer drum units imported, offered for sale or sold by it bear the Brother Trade Marks by or with the licence or authority of the applicants or either of them; (b) representing that OEM printer drum units imported, offered for sale or sold by it are of the composition, style or model of printer drum units which bear the Brother Trade Marks by or with the licence or authority of the applicants or either of them; (c) representing that OEM printer drum units imported, offered for sale or sold by it are subject to the same warranty as printer drum units which bear the Brother Trade Marks by or with the licence or authority of the applicants or either of them. 5. ORDERS that the respondent, whether by itself, its officers, employees or agents or otherwise however, permanently be restrained from: (a) passing off OEM printer drum units imported, offered for sale or sold by it as and for printer drum units which bear the Brother Trade Marks by or with the licence or authority of the applicants or either of them; (b) passing off OEM printer drum units imported, offered for sale or sold by it as and for printer drum units of the composition, style or model of printer drum units which bear the Brother Trade Marks by or with the licence or authority of the applicants or either of them; (c) passing off OEM printer drum units imported, offered for sale or sold by it as and for printer drum units which are subject to the same warranty as printer drum units which bear the Brother Trade Marks by or with the licence or authority of the applicants or either of them. Quantum 6. ORDERS that the respondent pay to the first applicant damages in an amount to be assessed, or, at the first applicant's election, an account of profits, for the respondent's infringement of the Brother Trade Marks. 7. ORDERS that the respondent pay to the applicants damages in an amount to be assessed, or, at the applicants' election, an account of profits, for passing off. 8. ORDERS that the respondent pay to the applicants damages under s 82 of the Act in an amount to be assessed. 9. ORDERS that the respondent pay the applicants compensation under section 87 of the Act in an amount to be assessed. Delivery Up 10. ORDERS that the respondent deliver up on oath to the applicants' solicitors for destruction under supervision: (a) all packaging in the possession, power, custody or control of the respondent: (i) in which non‑branded OEM printer drum units were imported, distributed, offered for sale or sold by the respondent; and (ii) on which any one or more of the Brother Trade Marks has been applied; (b) all documents and materials, including materials which are or which are capable of being stored, generated or transmitted via any electronic media, in the possession, power, custody or control of the respondent bearing any of the Brother Trade Marks relating to any of the importation, distribution, offer for sale or sale by the respondent of non‑branded OEM printer drum units in packaging on which any one or more of the Brother Trade Marks was applied.