This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.
Session 6
Federal Court of Australia [2021]: Goodman Fielder Pte. Ltd. v Conga Foods Pty. Ltd., [2021] FCA 307
Date of judgment: March 31, 2021
Issuing authority: Federal Court of Australia
Level of the issuing authority: First instance
Type of procedure: Judicial (Civil)
Subject matter: Trademarks; Enforcement of IP and Related Laws
Applicants: Goodman Fielder Pte. Ltd. and La Famiglia Fine Foods Pty. Ltd.
Respondents: Conga Foods Pty. Ltd. and Pastificio Rana SPA
Cross-Claimant: Conga Foods Pty. Ltd.
Cross-Respondent: Goodman Fielder Pte. Ltd.
Keywords: Trademarks, Trademark infringement, Goods with same description, Scope of declaratory and injunctive relief, Permanent injunction
Basic facts: Conga Foods Pty. Ltd. and Pastificio Rana SPA (the respondents) had been previously found to have infringed the use of registered marks LA FAMIGILIA RANA and @lafamigliarana in relation to fresh filled pasta.
The parties disagreed on the final orders to be made, with the outstanding issues including:
· The scope of declaratory and injunctive relief:
o what products were in issue at trial; and
o whether an injunction should be granted in respect of the La Famiglia Rana Marks on the Rana website, Facebook page and Instagram page.
· Whether the respondents should be permitted a sell-through period in respect of infringing products, or whether all infringing products should be delivered up;
· Whether the Court should order that the respondent withdraw their application to register the Rana mark;
· Whether the orders should be made for the amendment and cancellation of the Goodman marks;
· What orders should be made in respect of costs; and
· Whether orders should be made concerning leave to appeal and confidentiality.
The scope of the declaratory and injunctive relief
The applicants sought declarations that the respondents had infringed the relevant trade marks since November 2017.
The applicants also sought orders restraining the respondents from using the marks in relation to pasta products, excluding pesto and pasta sauces.
The applicants requested that, within 30 days, the respondents must:
a) amend account names and URLs for social media accounts, to the extent they are accessible to persons in Australia, to not include “LA FAMIGLIA”;
b) take all steps necessary to remove social media accounts featuring “LA FAMIGLIA”; and
c) take all steps necessary to remove all references to “LA FAMIGLIA” on their website.
The respondents believed that a declaration was appropriate, but that it should be limited to fresh filled pasta products. They also opposed the social media injunction, noting that their social media accounts primarily target consumers in the United Kingdom, not Australia (paras. [4]-[8]).
The respondents had continued to use the marks on lasagna sheets, gnocchi, and fettuccine, as the judgment only found infringement regarding fresh filled pasta products. Despite the way the case was plead, these products were deemed to be included in the proceedings (para. [11]).
Held: The respondents were found to have infringed the relevant marks in relation to fresh filled pasta, fresh gnocchi, and fresh lasagna sheets.
The court ordered that the respondents be restrained from further infringing the marks, in relation to fresh filled pasta, fresh lasagna sheets or fresh gnocchi.
Additionally:
· the respondent remained the owners of the goods and any further dealing with the goods had to be done with consent (para. [65]);
· it was not deemed appropriate to remove the registration of the Rana mark concerning goods in Class 30 (para. [71]);
· the respondents were ordered to pay the applicants' costs for the infringement claim, while the applicants were ordered to pay 50% of the respondents' costs for the cross-claim;
· the determination of quantum was stayed pending determination of any application for leave to appeal (para. [85]);
· leave to appeal was to be filed and served within 14 days of the orders; and
· several exhibits were deemed confidential and were not to be disclosed.
Relevant holdings in relation to permanent injunctions: The Court (citing Calidad Pty. Ltd. v Seiko Epson Corporation (No 2) [2019] FCAFC 168) noted that:
· The infringer must bear the risk of its own future conduct. Consequently, limiting the scope of infringing products to not include those that could potentially be sold in Australia in the future was deemed inappropriate (para. [27]).
· In the context of providing relief for either patent infringement or trade mark infringement, an injunction expressed in terms of a statutory monopoly may be appropriate, and indeed is conventional. That is because the registration of intellectual property rights provides certainty as to the scope of the monopoly conferred on the owner.
· Where there is a contest between parties as to infringement, the scope of the monopoly right at the conclusion of the proceedings cannot be in doubt and can provide the definition that is required for a prohibitory injunction in a general form (para. [30]).
Since the applicants did not plead that the use of foreign social media accounts would constitute infringement, and the issue was not argued, no specific order was made regarding the social media injunction (paras. [34]-[37]).
The findings related only to fresh pasta products, specifically those kept in refrigerated sections of shops. The declaratory relief, therefore, concerned only fresh pasta products and not pasta sauces, which were not the subject of the suit. The Court noted that it was important for this distinction to be clear in the declaratory relief, as the respondents had been selling pasta sauces for some time prior to the hearing and continued to do so during the hearing (para. [26]).
Relevant legislation:
· Federal Court of Australia Act 1976 (Cth), ss. 23, 23(1A), 37AF, 43
· Federal Court Rules 2011 (Cth) r. 34.48, r. 36.08
· Trade Marks Act 1995 (Cth), ss. 4, 17, 33, 120