Faction Ltd (G-Star) recently brought a Federal Court action against Mish Mash Clothing Pty Ltd (Mish Mash) alleging trade mark and copyright infringement on a range of jean labels bearing a mark similar to G-Star’s. Despite succeeding in most of their claims, G-Star were not awarded any damages because of a lack of evidence presented at trial.
Trade Marks
Mish Mash sold a range of jeans imported from Turkey with the following labels attached:
These labels had been adapted from existing labels on the imported jeans. which contained R-OBIN instead of M-MASH:
G-Star has been operating in Australia since 1989, selling clothing garments including jeans and shirts. G-Star has registered the following trade mark in Australia:
Class 25: clothing footwear, headgear
G-Star alleged Mish Mash had infringed on their trade mark rights by using labels which G-Star claimed were substantially identical or deceptively similar to their registered trade mark, under section 120 of the Trade Marks Act. The court found that, while “G-Star” was not present on Mish Mash’s label, the appearance and orientation of the label including the rectangular shape, simple lines, bold writing and the hyphen were all found to be elements of the G-Star mark that justified a finding of deceptive similarity.
Copyright
G-Star also claimed their logo was a artistic work which Mish Mash had substantially copied. The court determined that the logo was an artistic work because it was a drawing that was more than just “a series of words and numerals laid out in a particular spatial arrangement”, citing the landmark judgment of Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd.
Under the Copyright Act, a person importing a product into Australia infringes copyright where, if that product was made in Australia instead of elsewhere, it would constitute an infringement of copyright.
The court found that both Mish Mash logos were substantial copies of the G-Star logo because of their striking similarities. Interestingly, the judge arrived at this conclusion solely on visual similarities, without either party putting evidence forward in relation whether the Mish Mash logos were actually copied from G-Star’s.
Damages
Before Mish Mash had received a letter of demand from G-Star notifying them of the alleged breach of their copyright and trade mark rights, 266 pairs of jeans bearing the infringing M-MASH logo had been sold. Two days after receiving the letter, Mish Mash ceased selling the remaining allegedly infringing products.
G-Star sought damages from losses suffered as a result of these sales. G-Star controversially claimed that each sale of Mish Mash jeans would have been a sale of G-Star jeans had made had they not used a deceptively similar logo. However, G-Star provided no evidence to back this claim. The judge considered that a consumer could purchase jeans for a number of other reasons besides the logo, such as fabric, quality, style or comfort. There was no evidence as to how close in proximity these products may have been sold where consumers may have been confused. The gap in evidence was far too wide for the judge to come to G-Star’s conclusion.
G-Star also claimed damages for a loss of reputation. Once again, this failed because of lack of evidence. The judge found that G-Star’s logo were not associated with a reputation for exclusivity of creativity and, in any case, the Mish Mash labels were not a “conspicuous or significant feature” of the overall appearance of their garments. There was no argument made by G-Star that Mish Mash’s garments were of inferior quality that may have damaged their reputation.
G-Star also sought additional damages for breach of copyright. In determining whether damages should be awarded, the judge took into account that Mish Mash had not engaged in conduct that was a flagrant infringement of G-Star’s copyright and had taken all of their remaining stock bearing the infringing label off sale quickly after receiving G-Star’s letter of demand. G-Star failed to provide any evidence that Mish Mash had known the logo was a copy of G-Star’s prior to receiving the letter of demand. Ultimately, the judge denied any claim for damages under the Copyright Act.
Implications
This decision serves as a timely reminder of the nature and extent of evidence required to substantiate a claim for trade mark and copyright infringement damages. In this situation where the loss suffered to G-Star was minimal and the infringing product had been taken off sale, an out-of-court settlement may have been the more cost and time-effective option. Back to the top
Trade Marks
Mish Mash sold a range of jeans imported from Turkey with the following labels attached:
These labels had been adapted from existing labels on the imported jeans. which contained R-OBIN instead of M-MASH:
G-Star has been operating in Australia since 1989, selling clothing garments including jeans and shirts. G-Star has registered the following trade mark in Australia:
Class 25: clothing footwear, headgearG-Star alleged Mish Mash had infringed on their trade mark rights by using labels which G-Star claimed were substantially identical or deceptively similar to their registered trade mark, under section 120 of the Trade Marks Act. The court found that, while “G-Star” was not present on Mish Mash’s label, the appearance and orientation of the label including the rectangular shape, simple lines, bold writing and the hyphen were all found to be elements of the G-Star mark that justified a finding of deceptive similarity.
Copyright
G-Star also claimed their logo was a artistic work which Mish Mash had substantially copied. The court determined that the logo was an artistic work because it was a drawing that was more than just “a series of words and numerals laid out in a particular spatial arrangement”, citing the landmark judgment of Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd.
Under the Copyright Act, a person importing a product into Australia infringes copyright where, if that product was made in Australia instead of elsewhere, it would constitute an infringement of copyright.
The court found that both Mish Mash logos were substantial copies of the G-Star logo because of their striking similarities. Interestingly, the judge arrived at this conclusion solely on visual similarities, without either party putting evidence forward in relation whether the Mish Mash logos were actually copied from G-Star’s.
Damages
Before Mish Mash had received a letter of demand from G-Star notifying them of the alleged breach of their copyright and trade mark rights, 266 pairs of jeans bearing the infringing M-MASH logo had been sold. Two days after receiving the letter, Mish Mash ceased selling the remaining allegedly infringing products.
G-Star sought damages from losses suffered as a result of these sales. G-Star controversially claimed that each sale of Mish Mash jeans would have been a sale of G-Star jeans had made had they not used a deceptively similar logo. However, G-Star provided no evidence to back this claim. The judge considered that a consumer could purchase jeans for a number of other reasons besides the logo, such as fabric, quality, style or comfort. There was no evidence as to how close in proximity these products may have been sold where consumers may have been confused. The gap in evidence was far too wide for the judge to come to G-Star’s conclusion.
G-Star also claimed damages for a loss of reputation. Once again, this failed because of lack of evidence. The judge found that G-Star’s logo were not associated with a reputation for exclusivity of creativity and, in any case, the Mish Mash labels were not a “conspicuous or significant feature” of the overall appearance of their garments. There was no argument made by G-Star that Mish Mash’s garments were of inferior quality that may have damaged their reputation.
G-Star also sought additional damages for breach of copyright. In determining whether damages should be awarded, the judge took into account that Mish Mash had not engaged in conduct that was a flagrant infringement of G-Star’s copyright and had taken all of their remaining stock bearing the infringing label off sale quickly after receiving G-Star’s letter of demand. G-Star failed to provide any evidence that Mish Mash had known the logo was a copy of G-Star’s prior to receiving the letter of demand. Ultimately, the judge denied any claim for damages under the Copyright Act.
Implications
This decision serves as a timely reminder of the nature and extent of evidence required to substantiate a claim for trade mark and copyright infringement damages. In this situation where the loss suffered to G-Star was minimal and the infringing product had been taken off sale, an out-of-court settlement may have been the more cost and time-effective option. Back to the top