TM25 Holding B.V. & Ors v Redac International Pty Ltd & Ors  FCCA 113 (12 February 2016)
This case involved the importation and sale of counterfeit G-STAR clothing by the respondents who represented themselves.
The evidence filed by the parties is discussed in detail by Burchardt J with his Honour noting that the witnesses called by the applicants were all excellent, but the respondents were very poor. Much of the evidence was directed to the issues of whether the offending products were counterfeit and the scale of importation from Bangladesh and subsequent sales. His Honour was satisfied that Mr Cader and Mr Sarifdeen effectively ran the relevant enterprise and it was immaterial that they used corporations to do so.
Burchardt J accepted the evidence of Mr Heymans as an expert with knowledge of the G-STAR brand and concluded that the offending clothing products were good counterfeits and not overruns or quality control failures of the genuine products. Further, even if the products were genuine, the respondents had not satisfied their onus of showing that the owner of the G-STAR brand had consented to its trade mark being applied to the products imported from Bangladesh and sold in Australia.
The evidence by the respondents as to the volume of products was inconsistent and evasive. His Honour concluded that it is far more probable than otherwise that the respondents did import substantial quantities of G-STAR stock which they well knew was counterfeit at a cost manifestly below the market rate for genuine products. However, his Honour was unable to ascertain the exact volumes involved.
Burchardt J was satisfied the respondents’ conduct constituted trade mark infringement and copyright infringement under s37(1). These findings were only briefly discussed and there was no discussion of the design/copyright overlap impacting upon the copyright claim because the respondents did not plead to the formal ownership of copyright and that was deemed to be admitted. His Honour also found the respondents’ conduct contravened the Australian Consumer Law and constituted passing off.
The respondents were ordered to pay $8,941.42 as damages for lost sales, $20,000 for damage to reputation and $100,000 in additional damages, as well as the applicants’ taxed costs.