Facton Ltd v Mish Mash Clothing Pty Ltd (No 2) [2012] FCA 261

FEDERAL COURT OF AUSTRALIA

Facton Ltd v Mish Mash Clothing Pty Ltd (No 2) [2012] FCA 261 Citation: Facton Ltd v Mish Mash Clothing Pty Ltd (No 2) [2012] FCA 261

Parties: FACTON LTD, G-STAR RAW C.V. and G-STAR AUSTRALIA PTY LTD (ACN 084 011 852) v MISH MASH CLOTHING PTY LTD (ACN 120 628 140) and ILHAMI YILDIRIM

File number: VID 833 of 2010

Judge: JESSUP J

Date of judgment: 9 March 2012

Legislation: Copyright Act 1968 (Cth) s 37 Trade Marks Act 1995 (Cth) s 120 Federal Court Rules 2011 r 22.03

Date of hearing: 9 March 2012

Place: Melbourne

Division: GENERAL DIVISION

Category: No Catchwords

Number of paragraphs: 4

Counsel for the Applicants: Mr T Cordiner

Solicitor for the Applicants: Middletons

Counsel for the Respondents: Mr L Merrick

Solicitor for the Respondents: Banki Haddock Fiora

IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 833 of 2010

BETWEEN: FACTON LTD

First Applicant

G-STAR RAW C.V.

Second Applicant

G-STAR AUSTRALIA PTY LTD (ACN 084 011 852)

Third Applicant

AND: MISH MASH CLOTHING PTY LTD (ACN 120 628 140)

First Respondent

ILHAMI YILDIRIM

Second Respondent

JUDGE: JESSUP J DATE OF ORDER: 9 MARCH 2012 WHERE MADE: MELBOURNE

THE COURT DECLARES THAT: 1. By offering for sale and selling jeans bearing the following labels as trade marks: (a) (Black Label Mark); and (b) (White Label Mark); the first respondent has infringed Australian registered trade mark No. 883618 pursuant to section 120 of the Trade Marks Act 1995 (Cth). 2. By importing for the purposes of sale: (a) jeans bearing the Black Label Mark and the White Label Mark; and (b) shirts bearing the following label: (the MISH MASH Label); the first respondent has infringed pursuant to section 37 of the Copyright Act 1968 (Cth) the second applicant's copyright in the following work: THE COURT ORDERS THAT: 3. By 4:00 pm on 20 March 2012, the first respondent deliver up to the first and second applicants (or their nominated agent): (a) any garments in its possession, power, custody or control or the possession, custody or control of its officers or employees, which bear either the Black Label Mark, the White Label Mark or the MISH MASH Label; and (b) any brochures, pamphlets, advertising materials, labels, swing tags, promotional or marketing materials in its possession, power, custody or control or the possession, power, custody or control of its officers or employees, which bear the Black Label Mark, the White Label Mark or the MISH MASH Label. 4. The first respondent, whether by itself, its director, employees, servants, agents or otherwise howsoever, be restrained from: (a) manufacturing, importing, marketing, promoting, advertising, exhibiting in public, offering for sale, selling or supplying clothing bearing the White Label Mark; (b) disposing of or dealing with the items identified in order 3 above in any other way than in accordance with order 3 above; and (c) authorising, causing, procuring or inducing any other person to do any of the acts referred to in paragraph (a) of this order. 5. Save as aforesaid, the proceeding be dismissed. 6. Rule 22.03 of the Federal Court Rules 2011 (Cth) not apply with respect to paragraph 8 of the applicants' Notice to Admit dated 24 August 2011. 7. The first respondent pay 75% of the first and second applicants' costs, not including costs incurred only – (a) in prosecuting their case against the second respondent; or (b) on behalf of the third applicant. 8. The applicants pay the costs of the second respondent, not including costs incurred jointly with the first respondent. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.