Intellectual Property - Trade Mark Law Update - Vitaco Health IP Pty Ltd v AFI Cosmetic Pty Ltd (No 3) [2024] FCA 598

Intellectual Property
Tom Cordiner Headshot
M Marcus
C Cunliffe 2
Marcus Fleming Headshot 1
Surkis Amy Headshot

Trade Mark and Copyright law – Justice Rofe awards healthy sum of $250K in additional damages against owner of impugned website – 7 June 2024

The quantum of any award of additional damages for trade mark and copyright infringement can be difficult to predict but, generally, the Federal Court of Australia has, subject to rare exceptions, appeared reticent to award very large sums.

In this case, AFI Cosmetic Pty Ltd and its director were found to have engaged in trade mark and copyright infringement, and were found liable for $30K for loss of reputation in the applicant’s marks and $250K for additional damages for both trade mark and copyright infringement. Their conduct concerned the operation of a website that used the first applicant’s HEALTHERIES trade marks (that were registered in respect of cosmetics and toothpaste) and that were also artistic copyright works.

Justice Rofe’s reasons for making such a large award for additional damages were that the figure “marks the Court’s recognition of the opprobrium attached to the respondents’ conduct, and is an amount intended to deter further infringing conduct by the respondents or others.” Her Honour made the award notwithstanding that the applicants had not put on any evidence as to sales lost by them due to the respondents’ infringing conduct, nor any evidence that the respondents would be able to pay the amounts sought. Indeed, there seems to have been no evidence of any sales of infringing products through the impugned website. Against that, the applicants submitted that the respondents’ conduct in developing the infringing websites, including copying the first applicant’s Registered Marks and Artistic Works, was deliberate and calculated to mislead, and sufficiently egregious to merit a substantial award of additional damages.

While the decision was made as part of a default judgment application (the respondents’ failing to comply with various orders or appear at the hearing for default judgment), it provides an indication of the Court’s willingness to award significant sums for additional damages.

  • Tom Cordiner Headshot

    Tom Cordiner KC holds the dual qualification of barrister and registered patents and trade mark attorney

  • M Marcus

    Melissa Marcus practises in defamation law and all aspects of intellectual property

  • C Cunliffe 2

    Clare Cunliffe practises in intellectual property and general commercial litigation

  • Marcus Fleming Headshot 1

    Marcus Fleming has a significant practice in commercial litigation with a particular focus on intellectual property law.

  • Surkis Amy Headshot

    Amy Surkis is a general commercial litigator with a scientific background and over 10 years' experience.

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