FEDERAL COURT OF AUSTRALIA Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933 Citation: Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933 Parties: LOUIS VUITTON MALLETIER v SONYA VALENTINE PTY LTD File number: VID 611 of 2012 Judge: JESSUP J Date of judgment: 19 September 2013 Catchwords: PRACTICE AND PROCEDURE – application for orders in relation to alleged defaults by respondent – whether failure to attend mediation is a failure to "attend a hearing in the proceeding" or failure to "defend the proceeding with due diligence" under r 5.22 of Federal Court Rules 2011 – whether respondent has failed to comply with orders of the court under r 5.22 of Federal Court Rules 2011 – whether Fast Track Statement is pleading for purposes of r 5.23(2)(c) of Federal Court Rules 2011 INTELLECTUAL PROPERTY – claim that respondent imported and sold sunglasses bearing marks similar to applicant's registered trademarks – whether allegedly infringing marks deceptively similar to applicant's registered trademarks under s 120 of Trade Marks Act 1995 (Cth) – relevance of reputation to test of deceptive similarity CONSUMER LAW – whether allegedly infringing sunglasses likely to mislead consumers in contravention of s 18 of Competition and Consumer Act 2010 (Cth) – whether mark specifying provenance of allegedly infringing sunglasses false or misleading in contravention of s 29 of Competition and Consumer Act 2010 (Cth) Legislation: Competition and Consumer Act 2010 (Cth) ss 18, 29 Federal Court of Australia Act 1976 (Cth), s 37M Federal Court Rules 2011, rr 1.21, 4.04, 5.22, 5.23 Trade Marks Act 1995 (Cth), ss 7, 120, 126 Cases cited: Andrews v Australia and New Zealand Banking Group Ltd (2011) 281 ALR 113 Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd (2006) 236 ALR 665 Australian Competition and Consumer Commission v Marksun Pty Ltd [2011] FCA 695 Australian Competition and Consumer Commission v Yellow Page Marketing BV (No 2) (2011) 195 FCR 1 C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1 Hoop & Javelin Holdings Limited v BT Projects Pty Limited (in liq) (No 2) [2010] FCA 190 Hoop & Javelin Holdings Limited v BT Projects Pty Limited (in liq) (No 6) [2010] FCA 742 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 Tropical Reef Shipyard Pty Ltd v QBE Insurance (Australia) Limited [2011] FCAFC 145 Yarrabee Chicken Company Pty Ltd v Steggles Limited [2010] FCA 394 Date of hearing: 9 August 2013 Date of last submissions: 9 August 2013 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 45 Counsel for the Applicant: Mr I Horak Solicitor for the Applicant: Phillips Ormonde Fitzpatrick Counsel for the Respondent: The respondent did not appear IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 611 of 2012 BETWEEN: LOUIS VUITTON MALLETIER Applicant AND: SONYA VALENTINE PTY LTD Respondent JUDGE: JESSUP J DATE OF ORDER: 19 September 2013 WHERE MADE: MELBOURNE THE COURT DECLARES THAT: 1. By the importation, offering for sale and sale, in or about the period May-October 2012, of sunglasses bearing the sign referred to in para 2 of the applicant's Further Amended Fast Track Statement filed on 15 March 2013 (referred to in these orders as "the flower symbol"), the respondent – (a) used the flower symbol as a trade mark; and (b) infringed Australian registered trade mark No 1047186. THE COURT ORDERS THAT: 2. Subject to and conformably with the orders which follow, judgment be entered for the applicant as against the respondent on the applicant's claims that the respondent – (a) infringed Australian registered trade mark No 1047186; (b) contravened s 18(1) and paragraphs (g) and (k) of s 29(1) of The Australian Consumer Law, Sch 2 to the Competition and Consumer Act 2010 (Cth). 3. The respondent be restrained, whether by itself, its officers, employees or agents, or howsoever otherwise, from, without the consent of the applicant – (a) importing, distributing, offering for sale, selling or supplying in trade sunglasses, in physical or other relation to which the flower symbol is used; and (b) otherwise using the flower symbol as a trade mark. 4. Within 14 days after the service of these orders, the respondent deliver up upon oath or affirmation to the applicant or its nominated representative for destruction or disposal all sunglasses marked with, and all associated packaging and promotional material containing, the flower symbol. 5. The respondent be restrained, whether by itself, its officers, employees or agents, or howsoever otherwise, from offering for sale, promoting, selling or supplying in trade or commerce sunglasses marked or associated with – (a) the expression "LOUIS V" or any combination of words and/or letters misleadingly conveying the impression that the sunglasses were made or distributed by or on behalf of the applicant or had the approval or sponsorship of the applicant or were otherwise associated with the applicant; and/or (b) the flower symbol; and/or (c) the expression "EST. 1941 PARIS" or any combination of words and/or letters misleadingly conveying the impression that the sunglasses, or the brand under which they were, or were to be, promoted or sold, originated in Paris. 6. The respondent – (a) within seven days after the service of these orders, make such requests and do all such things as may reasonably be necessary to obtain from Wenzhou Import and Export United Co Ltd, and any customs agent or broker engaged by the respondent to facilitate the importation of sunglasses marked with the expression "LOUIS V" or the flower symbol or the expression "EST. 1941 PARIS" (referred to in these orders as "the respondent's sunglasses"), all documents relating to the importation, and the supply to the respondent, of the respondent's sunglasses; and (b) within two days after the receipt of each and every such document, serve a copy thereof upon the applicant. 7. Within 14 days after the service of these orders, the respondent cause an affidavit of a director of the respondent to be filed and served, such affidavit to set out – (a) a confirmation of compliance with Order 4 above (and, if this be done, it shall be taken as sufficient compliance with the requirement under that order to make an oath or affirmation); (b) the name and address of any customs agent or broker engaged by the respondent to facilitate the importation of the respondent's sunglasses; (c) the steps taken by the respondent in compliance with Order 6 above, and the response or responses received from Wenzhou Import and Export United Co Ltd, and/or from any such customs agent or broker; (d) the number of the respondent's sunglasses imported by the respondent, stating the number of those sunglasses marked with each of the expressions "LOUIS V", the flower symbol and the expression "EST. 1941 PARIS" respectively; (e) to the extent that the respondent's sunglasses were sold or supplied to another person – i) the name and address of the person; ii) the number of the respondent's sunglasses sold or supplied to the person, and the number of them marked – (1) "LOUIS V"; (2) with the flower symbol; and (3) "EST. 1941 PARIS"; iii) the sale price in each case; and attaching documentation vouching or relating to every such sale or supply. 8. Within 14 days after the respondent has complied with Orders 6(b) and 7 above, the applicant elect, by notice in writing to the respondent, whether to seek damages or an account of profits in relation to the judgment referred to in para 2(a) above. 9. Save for costs – (a) already the subject of an order of the court; or (b) incurred wholly or substantially in prosecuting or resolving the applicant's claims against another respondent; the respondent pay the applicant's costs. 10. The applicant have leave to tax its costs forthwith. 11. The proceeding be listed for directions at 9.30 am on 1 November 2013. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 611 of 2012 BETWEEN: LOUIS VUITTON MALLETIER Applicant AND: SONYA VALENTINE PTY LTD Respondent JUDGE: JESSUP J DATE: 19 september 2013 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 This proceeding was commenced in the Fast Track List of the court on 31 August 2012. In its Further Amended Fast Track Statement filed on 15 March 2013, the applicant applies for declarations, injunctions and damages for what are alleged to be infringements of its trademarks registered under the Trade Marks Act 1995 (Cth) ("the TM Act"), in respect of alleged misleading or deceptive conduct in contravention of the provisions of the Australian Consumer Law ("the ACL") in Sch 2 to the Competition and Consumer Act 2010 (Cth), and in passing off. There were three respondents in the proceeding, but the applicant's claim against the second and third respondents has been settled, the court having made final orders in that regard on 18 July 2013. I shall refer to the remaining respondent, Sonya Valentine Pty Ltd, as "the respondent". 2 The applicant, Louis Vuitton Malletier, is a French company which sells luxury goods internationally, including in Australia. Its range of goods includes sunglasses. It is the owner of two presently relevant Australian trademarks, namely "LOUIS VUITTON" (being Trademark No. 793793) and (being Trademark No. 1047186). 3 The respondent appears (at least relevantly to the present case) to be an importer and distributor in Australia of goods sourced in China. Once in each of May and July 2012, it received a shipment of sunglasses on consignment from Wenzhou Import and Export Co Ltd, of China, which bore the mark "LOUIS V". To some extent at least, the respondent offered for sale, and sold, those goods to retailers in Australia. The goods, or at least some of them, carried a "flower" symbol as indicated in the representation set out in the appendix to these reasons. It is also, and separately, established that the respondent sold twelve pairs of sunglasses bearing that symbol on 11 October 2012. By the admission of the respondent in its Fast Track Response, a small number of the sunglasses which it sold into the trade bore the expression "EYEWEAR EST. 1941 PARIS". 4 The applicant alleges that the expression "LOUIS V" is deceptively similar to registered mark No. 793793, and that the flower symbol referred to is deceptively similar to registered mark No. 1047186. Further, it is claimed that, by trading in sunglasses marked in these ways, the respondent engaged in misleading or deceptive conduct in contravention of s 18 of the ACL and made false or misleading representations in contravention of paras (a), (g) and (k) of s 29(1) of the ACL. 5 Originally, the respondent was represented by solicitors in this proceeding, and filed a detailed response to the Further Amended Fast Track Statement on 9 April 2013. However, on 24 June 2013, the respondent's solicitor filed a Notice of Ceasing to Act pursuant to r 4.04(3) of the Federal Court Rules 2011 ("the Rules"). Since then, the respondent has had no representation in the proceeding, and did not participate in the hearing of the applicant's interlocutory application, the determination of which is the occasion for the publication of these reasons. 6 That application is for an order in respect of the respondent's default under r 5.23(2) of the Rules. A number of defaults, to which I refer below, were relied on. 7 On 15 March 2013, the court made orders in this proceeding which included the following: 7. The proceeding be referred to mediation to be conducted by a Registrar of the court on a date to be advised not before 31 May 2013, the mediator to report to the court on the outcome of the mediation within 7 days of the completion of the mediation. The parties were subsequently advised that the mediation would be held on 24 June 2013. The respondent was not represented at the mediation. It is submitted on behalf of the applicant that this amounted to a failure to "attend a hearing in the proceeding", or a failure to "defend the proceeding with due diligence", within the meaning of paras (c) and (d), respectively, of r 5.22. In the case of para (c), a mediation cannot, in my view, be regarded as a "hearing in the proceeding". However, given the terms of s 37M(3) of the Federal Court of Australia Act 1976 (Cth), and of Part 28 of the Rules, I am persuaded that the unexplained failure of a party to attend a mediation which has been regularly convened does fall within the notion of a failure to defend the proceeding with due diligence as invoked in r 5.22(d). In this respect, I am persuaded that the applicant has made good its first ground for a default order under Div 5.2 of the Rules. 8 On 13 June 2013, the court made orders which included the following: 1. At or before 4:00 pm on 14 June 2013 the First Respondent inform the Applicant of the name and address of any customs agent or broker engaged by the First Respondent to facilitate the importation of the Louis V Sunglasses, the Louis Vuitton Flower Sunglasses and the Louis Vuitton Flower Pattern Spectacles as defined in the Amended Fast Track Statement filed by the Applicant ("allegedly infringing goods"). …. 3. At or before 12 noon on 21 June 2013 the first respondent file and serve an affidavit stating every step taken and every thing done by it in compliance with Orders 1 and 2 above and the nature and terms of every response received from Wenzhou Import and Export United Co Ltd and/or from every such customs agent or broker upon the first respondent's compliance with Order 2. 4. At or before 4:00 pm on 18 June 2013 the First Respondent file and serve a further affidavit, supported by documentation in its possession, power, custody or control which specifically sets out the following matters referred to in Order 2 made on 3 May 2013, in relation to its dealings in the allegedly infringing goods: (a) the number of allegedly infringing goods imported in July 2012; (b) confirmation that the only importation of the allegedly infringing goods occurred in May and July 2012 or details of any other importation; (c) the number of allegedly infringing goods sold or supplied to another person and the date of each sale or supply with supporting documentation; and (d) the sale price and name and address of each person sold or supplied with the allegedly infringing goods referred to in (c) above. 5. At or before 4:00 pm on 18 June 2013 the First Respondent make discovery as ordered in Order 4 made on 3 May 2013 by providing a sworn list of documents pursuant to rule 20.17 of the Federal Court Rules 2011 (Cth). On the present application, the applicant claims that the respondent, referred to above as the first respondent, failed to comply with each of these orders. 9 With respect to Order 1 made on 13 June 2013, the evidence is that the respondent did not inform the applicant of the name and address of any customs agent or broker. However, there is no evidence that the respondent had engaged a customs agent or broker, and the use of the word "any" in the order made the operation thereof contingent upon such an engagement being in place. In the circumstances, I cannot find that the respondent was in breach of this order. 10 With respect to Order 3 made on 13 June 2013, the applicant's case is made good by an examination of the court file itself. The respondent did not file an affidavit in compliance with this order. 11 With respect to Order 4 made on 13 June 2013, it is apparent from the court file that the respondent filed no such affidavit as was therein required, and the evidence establishes that no such affidavit was served on the applicant. The respondent was, in the circumstances, in breach of this order. 12 With respect to Order 5 made on 13 June 2013, the situation is the same as was described above in relation to Order 4. 13 In summary with respect to the orders made on 13 June 2013, therefore, I find that the respondent failed to comply with Orders 3, 4 and 5, and that the applicant has, therefore, made good its case under r 5.22(b) of the Rules. 14 To what remedies do these defaults entitle the applicant? Those that are relevant on the present interlocutory application are identified in r 5.23(2) as follows: (2) If a respondent is in default, an applicant may apply to the Court for: …. (c) if the proceeding was started by an originating application supported by a statement of claim, or if the Court has ordered that the proceeding continue on pleadings — an order giving judgment against the respondent for the relief claimed in the statement of claim to which the Court is satisfied that the applicant is entitled; or (d) an order giving judgment against the respondent for damages to be assessed, or any other order…. 15 It was submitted on behalf of the applicant that r 5.23(2)(c) applied to the present case on the basis that a Fast Track Statement was, or should be treated as, a "statement of claim" within the meaning of that paragraph. Uninstructed by authority, I would not accept that submission. Paragraph 4.1 of the court's Fast Track Practice Note (CM 8) ("the practice note") provides as follows: There will be no pleadings in a proceeding to be conducted in accordance with the Fast Track Directions. Instead, the parties will use Fast Track Statements, Fast Track Responses, Fast Track Cross-Claims and Fast Track Replies. In the Rules, a "pleading" is defined as follows: (a) a statement of claim; or (b) a statement of cross claim; or (c) a defence; or (d) a reply; or (e) any pleading after a reply … Applying this definition to the practice note, what the latter means (amongst other things) is that there will be no statement of claim in a proceeding conducted in accordance with the Fast Track Directions. Indeed, a signal feature of the fast track system in the court has been dispensation with pleadings, thereby avoiding the rigidities and formalities with which pleadings are, occasionally, associated. 16 But the question is not devoid of authority. I was referred to a judgment of Gordon J, given under the former O 35A, in Australian Competition and Consumer Commission v Yellow Page Marketing BV (No 2) (2011) 195 FCR 1 ("Yellow Page Marketing"). Her Honour said (195 FCR at 9 [16]-[18]): 16 In relation to the first question, I consider that applications under O 35A r 3 can be and should be made in relation to proceedings issued in the Fast Track. Filing a proceeding in Fast Track means that there are no formal pleadings. Instead, there is a fast track statement and a response: …. A key purpose of these documents required by the Court's fast track practice note is to ensure parties know the case they are required to meet: see Practice Note CM 8 – Fast Track, paragraphs 4.1 – 4.3 and its Annexure. 17 As the Court has now stated on a number of occasions, parties are entitled to expect that a proceeding will be resolved on the basis of the pleadings or, in the case of a fast track application, the documents that perform the same function as the pleadings: Yarrabee Chicken Company Pty Ltd v Steggles Limited [2010] FCA 394 at [75]; see also Hoop & Javelin Holdings Limited v BT Projects Pty Limited (in liq) (No 6) [2010] FCA 742 at [6]; Hoop & Javelin Holdings Limited v BT Projects Pty Limited (in liq) (No 2) [2010] FCA 190. In this matter, there was an Amended Application identifying the relief sought by the ACCC and a fast track statement identifying the ACCC's claims against the respondents. 18 Accordingly, as the fast track statement can and, in the present case does, perform the same function as the statement of claim by identifying the applicant's claim, the requirements for an order for judgment in default under O 35A … can and should be adopted to these proceedings filed in fast track. Further, if there is doubt about the applicability of O 35A (and I do not consider there is), this is a case in which I should direct (and out of an abundance of caution I do direct, pursuant to O 1, r 9(1)) of the Federal Court Rules that O 35A is to apply to the proceeding, thus engaging the provisions of O 35A for the purposes of considering the applicants' motion: O 1, r 9(1). In Australian Competition and Consumer Commission v Marksun Pty Ltd [2011] FCA 695, Gilmour J made a like direction (ie under O 1 r 9(1)) in a proceeding commenced in the Fast Track List. 17 In the present case, counsel for the applicant sought the making of an order under r 1.21, which corresponds to the previous O 1 r 9(1). That rule provides: A person who wants to start a proceeding, or take a step in a proceeding, may apply to the Court for an order about the procedure to be followed if: (a) the procedure is not prescribed by the Act, these Rules or by or under any other Act; or (b) the person is in doubt about the procedure. It is, with respect, not immediately apparent how recourse to this rule might have overcome what was a problem for the applicant, namely, that a Fast Track Statement may not be a "statement of claim" within the meaning of r 5.23(2)(c), but I do not propose to rule on the question. Rather, my view is that no order should be under r 1.21 because the respondent, who was served but did not appear on the present application, was given no notice that the applicant intended to apply under that rule. 18 That leaves the question whether I am obliged to follow Gordon J in the view which she expressed in Yellow Page Marketing that a Fast Track Statement is a statement of claim within the meaning of the provision which has now become r 5.23(c). In this respect, I commence by considering the judgments to which her Honour referred. 19 In Yarrabee Chicken, Jagot J assimilated a Fast Track Statement to a statement of claim for the purposes of holding a party to a position which it had previously articulated, and consistently adopted, in the proceeding. Her Honour did not allow that party to change its case. She said ([2010] FCA 394 at [75]): Further, although not raised in the parties' submissions, it is appropriate to note that the allocation of the proceeding to the fast track with the consequence that there are no formal pleadings does not affect my conclusion in this regard. A key purpose of the documents required by the Court's fast track directions is to ensure parties know the case they are required to meet. Parties are entitled to expect that a proceeding will be resolved on the basis of the pleadings or, in the case of a fast track application, the documents that perform the same function as the pleadings. The point was, essentially, a procedural fairness one. Her Honour was not concerned with an application for default judgment. 20 The two Hoop & Javelin matters were default judgments in the same proceeding. In the first ([2010] FCA 190), Logan J's order was made under the then equivalent of the present r 5.23(2)(b). No question of whether a Fast Track Statement was a statement of claim arose. In the second ([2010] FCA 742), his Honour said (at [8]-[10]): 8 It may be that O 35A requires amendment, or at least that consideration is necessary to the amendment of O 35A, to take account of developments in the court's practice in relation to the Fast Track list. I make that observation because O 35A r 3(2)(c) of the Federal Court Rules makes reference to a proceeding commenced by an application supported by a statement of claim, or to a proceeding where the court has ordered that the proceeding continue on pleadings. It does not make express reference to Fast Track practice. 9 Realising that potential deficiency, depending upon how one reads the terms, statement of claim and pleadings in O 35A r 3(2)(c) of the Federal Court Rules, Hoop & Javelin also rely upon para (d), which is "give judgment or make any other order against the respondent. There is also reliance upon O 35A r 3(2)(b) of the Federal Court Rules which relates to a claim against a respondent for a debt or liquated [sic] damages. 10 The claim as against Mr Tzvetkoff is not for a debt. In my opinion, the claim is though one for liquidated damages. If that be wrong, I am satisfied, having regard to the terms of the Fast Track statement in its present form, that Hoop & Javelin is entitled on the basis of the allegations made against Mr Tzvetkoff in that document to the relief that is claimed in the amended application and further sought today by the notice of motion. Although it is not absolutely clear that his Honour did not, at least as an alternative basis for the relief which he granted, rely upon the then equivalent of r 5.23(2)(c), this passage from his Honour's reasons cannot be understood as proposing that a Fast Track Statement was a statement of claim within the meaning of the former provision. Indeed, in para 8 of his reasons his Honour adverted to the need to amend O 35A to take account of the fact that proceedings are commenced in the Fast Track List. I note that, when the new rules commenced in August 2011, no such amendment was included. 21 Finally in this respect, I should mention another judgment of Gordon J, to which I was not referred, which bears upon the present question: Andrews v Australia and New Zealand Banking Group Ltd (2011) 281 ALR 113. In that proceeding, her Honour was determining an application under O 11 r 16 of the previous rules of court for a passage in a party's Fast Track Response to be struck out, as though it were a pleading. Her Honour held that the document was a pleading, relying upon the purpose served by Fast Track documentation and the inclusive definition of "pleading" in the rules: 281 ALR at 125-126. Under the Rules, the definition is no longer an inclusive one: see Sch 1. In the circumstances, I do not think that this authority advances the matter favourably for the position for which the applicant contends. In passing, I would mention that, in Tropical Reef Shipyard Pty Ltd v QBE Insurance (Australia) Limited [2011] FCAFC 145, the Full Court presumed (although the point did not directly arise) that a Fast Track Statement, or part of one, could not be struck out as a pleading under the former O 11 r 16: see [30]. 22 Because of the direction which Gordon J made under the former O 1 r 9(1) in Yellow Page Marketing, I do not consider that that judgment stands as direct authority for the proposition that a Fast Track Statement is a statement of claim for the purposes of r 5.23(2)(c) of the present Rules. Albeit that her Honour made the direction out of an abundance of caution, once made it provided the legal basis for the treatment of the Fast Track Statement as a statement of claim in that case. At the level of construction of the Rules, I cannot, with respect, join in the view which her Honour took about the scope of the previous O 35A. Neither Yellow Page Marketing nor, for the reasons explained above, any of the other authorities which might be considered relevant in this area has persuaded me of the fallacy of the position which I would have been disposed to take were the matter to be decided on a clean slate. In the view I take, a Fast Track Statement is not a statement of claim for the purposes of r 5.23(2)(c) and, if the applicant is to succeed on its present application for default judgment, it will need to be under another provision of that subrule. 23 The applicant relied on para (d) of the subrule. The difference between that provision and para (c) is that an order may be made under para (c) on the allegations in the statement of claim, without more – Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd (2006) 236 ALR 665, 677-678 [45] – whereas, under para (d), the court should not (at least in my view) make an order giving final judgment for the relief sought by the applicant unless it is satisfied, on the evidence, that there is a proper basis for such an order. 24 As mentioned above, the respondent has imported and sold into the relevant trade sunglasses bearing marks which are alleged to be deceptively similar to the applicant's registered marks. On any view, the respondent thereby used the marks on its sunglasses within the meaning of s 120 of the TM Act – see s 7(4) thereof. The more difficult question is whether the respondent's marks are deceptively similar to the registered marks. 25 I have no doubt but that the flower symbol is deceptively similar to registered mark No. 1047186. That is the view which I have readily reached by visually comparing the two, and needs no further elaboration. 26 I do not feel so confident about the deceptive similarity of "LOUIS V" to registered mark No. 793793. Taking each of the marks as a whole, the comparison required – … is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from [the allegedly infringing mark] …. The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 415. If such a person had had sufficient exposure to the applicant's registered mark and then saw, in the context of sunglasses on sale by retail, the "LOUIS V" mark, I am not persuaded that he or she would be deceived into making an association between the two. We are, of course, concerned with words rather than symbols or drawings. Ignoring for the moment the applicant's reputation (a subject to which I turn next), even a person who was aware of the registered mark would not necessarily, unless prompted, think that the "V" was a shorthand reference to "Vuitton". 27 Particularly in a case such as the present in which the applicant's name, repeated on the heading of every court document, includes the mark which it seeks to protect, it is tempting for a judge – and for counsel for that matter – to regard the mark as the centre of the universe, and thus readily to perceive a deceptive similarity in some other mark which has something in common with it. That temptation must be resisted. Although the putative consumer of ordinary intelligence is assumed to have had some acquaintance with the registered mark, there is no assumption that he or she has not had other relevant exposures, or that he or she is so imbued with the imagery of the registered mark as to fall instantly into the state of deception to which s 120 of the TM Act refers. In this respect, I canvassed with counsel for the applicant the prospect that a viewer of the words used by the respondent might initially think them a reference to Louis V of France (notwithstanding that that monarch appears to have been a young man of no particular distinction). Counsel was dismissive of that idea, but I wonder whether the same response would have been provoked if the respondent's mark had been, say, Elizabeth I. 28 The applicant, however, submitted that, in the exercise of comparison which is required by s 120 of the TM Act, the reputation of a trader was indeed to be taken into account. In this respect, counsel referred me to Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, to C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 and to Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, each a judgment of the Full Court. 29 In Woolworths, the question was whether the expression "Woolworths metro" should be refused registration under the TM Act because it was deceptively similar to an existing mark, the word "metro". Justices French and Tamberlin held that it was not deceptively similar. Justice French said (93 FCR at 385-386 [61]): In respect of the fourteenth cited mark which is an accepted application pending opposition, his Honour found that there is likely to be some similarity between the services in respect of which registration of this mark is sought and the services offered by Woolworths. However in that respect he said: "As the name would not be displayed on goods, the aural impression may here be more important than the manner of visual presentation. But it is only possible to say the oral use of the term 'Woolworths metro' is deceptively similar to 'metro' if one ignores or discounts the word 'Woolworths'. In comparing the marks, it is not legitimate to ignore a major element in one of them; and, for the reasons I have given, I do not think that word should be discounted. On the contrary, having regard to its aural prominence and familiarity to Australians, it is the element of the mark most likely to be noticed and remembered." His Honour's reference to the familiarity of the name "Woolworths" in Australia was appropriate. Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name "Woolworths" cannot be assessed without a recognition of its notorious familiarity to consumers. In a context in which the issue is whether the expression "Woolworths metro" was deceptively similar to the word "metro", French J held it to be appropriate for the primary Judge to have taken account of the notoriety of that part of the proposed mark which was, on any view, quite different from the existing mark (ie the word "Woolworths"). The issue did not relate to the notoriety of an existing mark, and the potential for that to make it more likely that a viewer would regard an unregistered mark or symbol as deceptively similar. Justice Tamberlin agreed with French J. 30 In Henschke, it was submitted that the "high reputation" of the registered mark (in that case, the wine label "Hill of Grace") "was very relevant to the question of trademark infringement" (52 IPR at 57 [31]). Unlike Woolworths, therefore, this was a case in which the reputation of the brand denoted by the registered mark was said to be appropriate to include in the mix of factors by reference to which the question of deceptive similarity under s 120 of the TM Act was to be answered. In addressing that issue, the Full Court returned to first principles, and considered the well-known authorities as to the approach which should be taken under s 120. Having done so, their Honours said (52 IPR at 62 [43]): But there is another important aspect of infringement by use of a deceptively similar mark. It is that the test of deceptive similarity must be applied whether the mark of which infringement is alleged is newly registered and almost unknown or has been prominently displayed on wellknown merchandise for many years. It must also be applied where the mark appears on goods (or in advertisements of goods) commonly seen, for example, on supermarket shelves in Sydney but rarely seen in Victoria or South Australia. The consumer posited by the test is hypothetical, although having characteristics of an actual group of people. Their Honours continued (at [44]) that what was required was "a comparison between the mark of the registered owner and that of the alleged infringer". They held to be inappropriate "a wider inquiry of the kind that might be undertaken in a passing off action, or in a proceeding in which contravention of [provisions the equivalent of those now relied upon by the applicant under the ACL] is alleged". 31 In Henschke, the Full Court continued (52 IPR at 62-63 [45]): Consistently with the nature of the test of deceptive similarity and the authorities to which we have referred, it is not easy to see what relevance the reputation an applicant may have in a particular mark (even the "icon status" of that mark) has in an action for infringement brought in reliance on s 120(1) of the TM Act. (Clearly, and by contrast, it is relevant under s 120(3) and may be relevant under s 120(2).) Nor, with certain exceptions to which we shall come, were we directed to a course of authority in which, where there has been a question of infringement by use of a deceptively similar mark, the reputation of the plaintiff in the mark allegedly infringed has been taken into account. Indeed, the course of authority has been quite to the contrary. The search has concentrated on such matters as ascertaining the essential element of a mark, the impression taken away by one who looks at it, and how it sounds when pronounced: Australian Woollen Mills, Shell, Saville Perfumery and Aristoc Ltd v Rysta Ltd [1945] AC 68; (1944) 1B IPR 467 are all well known examples. Coming to Woolworths, their Honours said (52 IPR at 66-67 [52]): Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for [sic] which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further. For present purposes, this is, in my view, an important passage, and I shall return to it. 32 Counsel for the applicant proposed that the Full Court in Crazy Ron's "reconciled" Woolworths and Henschke. I do not so read the judgment in Crazy Ron's. Indeed, the principle which was the subject of detailed treatment in Henschke, although the subject of mention in Crazy Ron's, made little or no contribution to the resolution of the latter case. So far as authorities binding on me are concerned, I am bound to treat Henschke as having spoken the final word. 33 Relevantly to the point presently under discussion, the evidence in the present case consists of the following two paragraphs in the applicant's solicitor's affidavit sworn on 30 July 2013: I am instructed that the Applicant was established in 1854 and is one of the world's leading luxury goods companies. The Applicant sells its goods throughout the world including in Australia where is [sic] operates ten stores. The Applicant has widely and extensively used and promoted its goods including sunglasses throughout the world and in Australia under and by reference to the LOUIS VUITTON Trade Marks and the LOUIS VUITTON Flower Trade Mark. I am instructed that the Applicant has acquired substantial goodwill and obtained a valuable reputation in Australia for itself and its goods. The public in Australia have come to associate the LOUIS VUITTON Trade Marks and the LOUIS VUITTON Flower Trade Mark with the Applicant and its goods and the marks have become well known to the public throughout Australia as denoting the business of the Applicant and the goods sold by it. As a consequence, persons who intend to acquire goods bearing any of the LOUIS VUITTON Trade Marks and the LOUIS VUITTON Flower Trade Mark including sunglasses intend and/or expect to acquire such goods from the Applicant. 34 To the extent that I am permitted, in assessing the nature of a consumer's imperfect recollection of the "LOUIS VUITTON" mark in the present case, to note the reputation of the applicant by reference to that mark, I do not consider the above evidence establishes that the mark "is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and its use in relation to particular goods". The goods, of course, are sunglasses, and, although I accept that the applicant has an established reputation in that regard, I do not accept that that reputation crosses the high bar set by the Full Court in Henschke. 35 For the above reasons, I am unpersuaded that the "LOUIS V" mark, used in relation to sunglasses, is deceptively similar to the applicant's registered mark No. 793793. 36 Turning to the applicant's case under the ACL, I am persuaded that the respondent's conduct was misleading within the terms of s 18(1) thereof. In this area, I am entitled to take account of the established reputation of the applicant, as referred to in its solicitor's affidavit, mentioned above. This reputation related to fashion goods generally, and I accept that they included sunglasses. Thus the putative consumer must be taken to have in mind the Louis Vuitton brand and its significance to goods of the kind which he or she was considering purchasing. Being aware of that reputation, a consumer would, in my view, be misled into thinking that sunglasses marked "LOUIS V" were either those of the applicant or associated in some relevant way with the applicant. 37 For the same reason, I consider that the expression "LOUIS V" was a misleading representation that the sunglasses to which it was applied had the sponsorship or approval of the applicant, in contravention of s 29(1)(g) of the ACL. 38 In the light of the evidence of the applicant's solicitor to which I have referred, I would find that the applicant's reputation extended to, and was associated with, registered mark No. 1047186. The reasons which I have given above in relation to ss 18(1) and 29(1)(g) of the ACL apply equally to the respondent's use of the flower symbol. That use too, in my opinion, was misleading within the meaning of those provisions. 39 The endorsement "EYEWEAR EST. 1941 PARIS" amounted to a representation concerning the place of origin of the sunglasses in question within the meaning of s 29(1)(k) of the Act. For some reason, the allegation in the applicant's Further Amended Fast Track Statement that this representation was false or misleading was not responded to in the respondent's Fast Track Response. It is not, therefore, the subject of an admission. However, in his affidavit Mr Schlicht said that he was not aware of any basis upon which the manufacturer of the sunglasses concerned could claim that they were connected to Paris. As noted above, they were imported from China. In the circumstances, I am satisfied that this representation was false. 40 Although, as I have said, the applicant's case included claims in passing off, counsel accepted that the relief to which his client, if otherwise successful, became entitled under the ACL would be no less efficacious for it than the relief which might be obtained under this common law tort. I was not addressed in any detail on the matter of passing off, and I do not propose to make any findings in relation to it. 41 I turn next to the relief which the applicant seeks. It seeks a declaration as to trade mark infringement and, particularly, having regard to the respondent's non-participation in the hearing which led to the making of these orders, I consider that such a declaration would be appropriate. 42 The applicant seeks a permanent injunction restraining the respondent from engaging in conduct that would constitute an infringement of trade mark, and I accept that it has established an entitlement to such an injunction. 43 The applicant seeks an order for the delivery up for destruction or disposal of a very wide range of artefacts, including the sunglasses that are the subject of the injunction which it seeks. Dealing first with the applicant's cause of action under the TM Act, I am prepared to make a delivery up order in relation to sunglasses displaying the flower symbol which I have held to be deceptively similar to registered mark No. 1047186. Under the TM Act, it would not be appropriate to go further than that. 44 With respect to the ACL, I accept the applicant's case that it is entitled to injunctions that would restrain the respondent from engaging in conduct that I have found to be in contravention of ss 18(1) and 29(1)(g). 45 On the subject of monetary remedies, the applicant seeks procedural orders that would put it in a position to make an election as between damages and an account of profits. Such a course is appropriate under s 126 of the TM Act, and I shall follow it insofar as the applicant has succeeded under that Act. An account of profits is not, however, a remedy for which the ACL provides, in which circumstance a slightly different approach is required. The sales made by, and the conduct generally of, the respondent might still be relevant to the assessment of the applicant's damages, and I shall make the orders sought to the extent that they would be in aid of such an assessment. I certify that the preceding forty-five (45) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jessup. Associate: Dated: 19 September 2013 APPENDIX The respondent's 'Flower' Symbol