Facton Ltd v Toast Sales Group Pty Ltd [2012] FCA 612

FEDERAL COURT OF AUSTRALIA

Facton Ltd v Toast Sales Group Pty Ltd [2012] FCA 612 Citation: Facton Ltd v Toast Sales Group Pty Ltd [2012] FCA 612

Parties: FACTON LTD, G-STAR RAW CV, G-STAR AUSTRALIA PTY LTD (ACN 084 011 852) and STICHTING LITIGATION G-STAR INTERNATIONAL v TOAST SALES GROUP PTY LTD (ACN 139 709 694)

File number(s): VID 821 of 2011

Judge: MIDDLETON J

Date of judgment: 19 June 2012

Corrigendum: 22 June 2012

Catchwords: INTELLECTUAL PROPERTY – registered trade marks – infringement – whether use in relation to goods – whether use in relation to retail services – defence under s 123 of the Trade Marks Act 1995 (Cth) – trade marks applied to goods with consent of registered owner – whether consent could be withdrawn if condition on which it was granted is breached – whether consent could be conditional in the sense of a condition subsequent – relevant time for consent is at the time the trade mark is applied to goods. INTELLECTUAL PROPERTY – copyright works – remedies – s 115 of the Copyright Act 1968 (Cth) – account of profits being a discretionary remedy – whether infringing party must know of infringement – account of profits in respect of innocent infringement under s 115(3) – only profits that can be attributed to the infringing conduct will be given as an account. TRADE PRACTICES – whether misleading and deceptive conduct – whether false or misleading representations.

Legislation: Competition and Consumer Act 2010 (Cth) Copyright Act 1968 (Cth) Trade Marks Act 1995 (Cth) Trade Practices Act 1974 (Cth)