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Friday, March 21, 2014

Bugatti v Bugatchi: The cost of trade mark infringement

By Kimberley Evans, Trade Mark Attorney 

In early December 2013, this IP blog reported the decision in Bugatti GmbH v Shine Forever Men Pty Ltd (Shine Forever [Strike?] No. 1) in which Shine Forever's BUGATCHI UOMO trade mark was found to infringe Bugatti's registered BUGATTI trade mark. Since the time of our post, there has been an opposition decision from IP Australia as well as an order for compensation by way of an account of profits from the Federal Court and Shine Forever ain't looking so shiny now…


Two-sentence summary of the Trade Mark opposition decision

The Trade Mark Registrar's opposition decision, following the judgement of Justice Tracey in Shine Forever No. 1, unsurprisingly found that the BUGATCHI UOMO mark was deceptively similar to the BUGATTI registered trade mark under section 44. The Registrar's delegate considered whether the applicant's evidence established prior continuous use, honest concurrent use or other circumstances which would make it proper for the Registrar to accept the application but dismissed these 'defences' and refused to register the application for BUGATCHI UOMO.

I think we can call that 'Strike 2'…

Bugatti GmbH v Shine Forever Men Pty Ltd (No 2) – Strike 3?

On 7 March 2014, Justice Tracey followed up his decision in Shine Forever No. 1 with an order for compensation for Shine Forever's infringement of Bugatti's registered trade marks. While Bugatti submitted detailed arguments in support of its request for an account of profits (totaling $551, 159.39), Shine Forever tarnished itself further by failing to comply with the court's orders in a timely way and served up affidavits, which His Honour described as incomplete, inadequate and suffering from numerous deficiencies – strike 3?  Shine Forever was definitely 'Out!' when it failed to enter an appearance on 17 February 2014, particularly given that an earlier hearing had been adjourned for the sole purpose of allowing Shine Forever an opportunity to make submissions on the question of compensation. 

Justice Tracey's judgment was short and sweet when awarding Bugatti the exact account of profits it had requested, plus indemnity costs. While commenting that Bugatti's process of calculating the account of profits sought was far from ideal, Justice Tracey found that there was not enough evidence from Shine Forever to allow His Honour to make a fully informed decision. Any concerns that His Honour faced regarding Bugatti's calculations were offset by Bugatti's willingness to make allowances in favour of Shine Forever and His Honour's opinion that Bugatti should not be prejudiced by Shine Forever's failure to provide evidence and submissions on the account of profits in accordance with court orders.

Take home message?

It literally pays to provide a reasonable and detailed basis for the calculation of compensation sought (particularly in circumstances where the respondent doesn't make an appearance).

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