Xiamen Huadian Switchgear Co Ltd v Powins Pty Ltd [2022] FCA 1159

FEDERAL COURT OF AUSTRALIA Xiamen Huadian Switchgear Co Ltd v Powins Pty Ltd [2022] FCA 1159 File number(s): NSD 717 of 2020

Judgment of: HALLEY J

Date of judgment: 29 September 2022

Catchwords: INTELLECTUAL PROPERTY – application for declarations and injunctions in relation to alleged misleading or deceptive conduct and false or misleading representations pursuant to ss 18 and 29 of the Australian Consumer Law (ACL), trade mark infringements pursuant to s 120 of the Trade Marks Act 1995 (Cth) (TM Act) and passing off – where applicant is manufacturer of switchgear panels and circuit breakers (Applicant's Products) emblazoned with product name (Applicant's Marks) – where first respondent was a non-exclusive distributor of Applicant's Products – where first respondent has since begun promoting and selling switchgear panels and circuit breakers (Respondents' Products) emblazoned with allegedly similar product name to Applicant's Marks (Respondents' Marks) – whether representations about Respondents' Products were made by respondents – whether making those representations was misleading or deceptive conduct or false or misleading – where Applicant's Marks had acquired significant reputation in Australia as a result of sale and promotion of Applicant's Products – where representations were made and were false and misleading – passing off established – where Respondents' Marks are deceptively similar to Applicant's Marks – application granted DAMAGES – where applicant seeks relief by way of prohibitory injunctions, corrective advertising, declarations and exemplary damages – where appropriate to order prohibitory injunctions, corrective advertising and declarations given nature and extent of breaches of ACL, passing off and TM Act – whether respondents' conduct showed conscious and contumelious disregard for applicant's rights – where respondents' conduct deliberate, sustained and occurred after the receipt of demands from applicant that it cease – where respondents' conduct flagrant and brazen – where award of exemplary damages for respondents' passing off necessary to punish respondents' conduct INTELLECTUAL PROPERTY – cross-claim by respondents for breach of ss 18, 22 and 29 of ACL, unconscionable conduct in equity and breach of contract – where applicant made publications in response to respondents' infringing conduct – where certain representations arose from publications – inferences arising from representations not misleading or deceptive – where respondents have not established any entitlement under ACL to recover any loss or damage – whether applicant breached express term of confidentiality in sales contract or implied term of good faith in distribution agreement – no breach of contract established – cross-claim dismissed