Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970

FEDERAL COURT OF AUSTRALIA

Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 CONTRACTS – whether post-contractual conduct is admissible on the question of what a contract means – relevance of the subjective intentions of the parties to a contract – whether contract may be formed where there is an agreement to agree as to price or other substantive term – whether silence or failure to object to an unsolicited offer may constitute acceptance COSTS – whether costs should be awarded in favour of applicant where application is dismissed as moot but would otherwise have been successful on the merits EQUITY – estoppel – whether silence between intermittent threats of infringement may give rise to estoppel – whether equity will intervene when there is an adequate remedy at law – whether silence or failure to object to an unsolicited offer may give rise to an estoppel – whether wrongfully registered proprietor of a trade mark holds the mark on constructive trust for true owner – whether injunction should be granted where there is no showing of likelihood of future infringement TRADE MARKS – appeal from decision of Registrar of Trade Marks that registered proprietor's name be removed from the Register due to lack of intent to use the mark in good faith – whether appeal should be dismissed as moot where Court cannot grant relief sought even if applicant is successful – how mark is to be defined – whether mark includes or is associated with an image or particular graphic representation – whether ownership rights with respect to a mark are limited to goods of the same description – infringement action based on deceptive similarity – whether side-by-side comparison is required – whether presence or absence of additional descriptive word or associated image will avoid finding of deceptive similarity where distinctive or essential feature of the mark is borrowed – whether evidence of intent to deceive raises rebuttable presumption of consumer confusion – ownership of unregistered mark – right to register – meaning of "person aggrieved" under s 88 of the Trade Marks Act 1995 (Cth) – power of Court to direct amendment of Register by substitution of registered proprietor's name with the applicant's – power and discretion of the Court under ss 89, 122, 123, and 124 of the Trade Marks Act 1995 (Cth) to refuse relief where a party would otherwise be liable for infringement – quantum – election – whether applicant must elect between damages and account of profits before the close of evidence in non-split trial – whether applicant has the burden of establishing the infringer's gross sales – whether respondent in non-split trial has burden of establishing costs incurred in relation to, including portion of general overhead reasonably attributable to, infringing goods – whether profits may be calculated using a measure of guesswork and estimation Trade Marks Act 1995 (Cth) Trade Practices Act 1974 (Cth) Acme Office Service Pty Ltd v Lundstrom [2002] NSWSC 277 Adidas-Solomon AG v Turner (2003) 58 IPR 66 Allan v Development Allowance Authority (1999) FCR 264 Assa Abloy Australia Pty Ltd v Australian Lock Co Pty Ltd (2005) 147 FCR 126 Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 Bond Brewing Holdings Ltd v National Australia Bank Ltd (1990) 1 ACSR 445 Booker Industries Pty Ltd v Wilson Parking (Qld) Pty Ltd (1982) 149 CLR 600 Brother Industries Ltd v Dynamic Supplies Pty Ltd (2007) 163 FCR 530 Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 Dart Industries Inc v Décor Corporation Pty Ltd (1993) 179 CLR 101 Dr Martens Australia Pty Ltd v Bata Shoe Company of Australia Pty Ltd (1997) 75 FCR 230 E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167 Figgins Holdings Pty Ltd v Registrar of Trade Marks (1995) 59 FCR 147 Frank Music Corp v Metro-Goldwyn-Mayer Inc (9th Cir 1985) 772 F2d 505 GM & AM Pearce & Co Pty Ltd v Australian Tallow Producers [2005] VSCA 113 Hall v Poolman (2007) 215 FLR 243 Jones v Dunkel (1959) 101 CLR 298 Koninklijke Phillips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 Lamb v Cotogno (1987) 164 CLR 1 Microsoft Corporation v TYN Electronics Pty Ltd (in liquidation) (2004) 63 IPR 137 Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293 Pegela Pty Ltd v National Mutual Life Association of Australasia Ltd [2006] VSC 507 Placer (Granny Smith) Pty Ltd v Thiess Contractors Pty Ltd (2003) 196 ALR 257 Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852 Sudojo Consulting Pty Ltd v Africa Pacific Capital Pty Ltd [2008] NSWSC 353 Winterton Constructions Pty Ltd v Hambros Australia Ltd (1992) 39 FCR 97 XL Petroleum (NSW) Pty Ltd v Caltex Oil (Australia) Pty Ltd (1984) 155 CLR 448