Australian Trade Marks Law Blog : Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

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In the recent Federal Court case of Nokia Corporation v Liu [2009] FCA 20 (21 January 2009) the applicant (Nokia) sought damages in a situation where infringing goods had been seized by Customs and never reached the marketplace. They got ten bucks.

Nokia also sought to avoid the operation of Order 62 Rule 36A of the Federal Court Rules which under certain circumstances including when a party is awarded judgement for less than $100,000 in damages requires an award of costs to be reduced by one third. They failed. Corrs Chambers Westgarth acted for Nokia. The respondent failed to appear.

Background

In February 2008, pursuant to Section 133(2) of the Trade Marks Act 1995, a delegate of the Chief Executive Officer of Customs seized goods bearing marks that infringed various trade marks owned by Nokia (the Nokia trade marks). On 4 June 2008 the Court made orders by consent which amongst other things included an order that the respondent pay the applicant damages for infringement of the Nokia trade marks. Proceedings for the assessment of such damages were fixed for 11 December 2008.

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In Sebel Furniture Limited v Acoustic & Felts Pty Limited [2009] FCA 6 (12 January 2009), the applicant (Sebel) is the Registered Owner of Trade Mark No 1054076 in respect of a shape kind of sign or shape device (Sebel’s trade mark). Sebel’s trade mark is registered in Class 20 in respect of plastic, moulded chairs without arms, also known as 'sidechairs'. The trade mark was registered with effect from 6 May 2005 and is subject to an endorsement that sub-section 41(5) of the Trade Marks Act 1995 (Cth) was applied meaning that when it was applied for, it was not sufficiently inherently distinctive to achieve registration on that basis alone, but that registration was granted because it was or would become distinctive through use. Sebel’s trade mark chair, known as the 'Postura', is widely used in educational institutions.

The respondent (Reed Furniture) recently commenced to import into Australia and to supply to the same educational market which, for many years, has been supplied with Sebel’s Postura, a moulded plastic chair known as the 'Titan'.

Sebel sought various injunctions based on allegations that the Titan chair infringed Sebel’s trade mark by using the shape in respect of which Sebel’s trade mark is registered and that Reed Furniture had engaged in passing off and in misleading and deceptive conduct within the meaning of s 52 of the Trade Practices Act 1974 (Cth) (TPA) by promoting, offering to supply and supplying the Titan chair. Sebel also sought an order to restrain Reed Furniture from making each of the following representations in trade or commerce in Australia in relation to chairs:

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Australia has become the 10^th State to ratify the Singapore Treaty on the Law of Trade Marks (the Singapore Treaty), allowing the Treaty to come into force on 16 March 2009.  The treaty establishes common standards for procedural aspects of trade mark registration and licensing between the contracting States.

According to the Federal Minister for Innovation, Industry, Science and Research, Senator The Hon. Kim Carr, signing on “offers a positive example for Australia’s trading partners, thereby increasing the capacity of regionally based trade”.  

The Treaty is also intended to encourage national trade mark offices to take advantage of modern communication technologies.  Most significantly, for the first time in any international instrument dealing with trade mark law, non-traditional marks are explicitely recognised.