Correspondents for South Australia, Victoria and Western Australia

Note:  Where any of the barristers were involved in a case reported below and the matter is still running, or potentially so, the other correspondents have taken the role of reporting that case.

Re Bacchus Distillery Pty Ltd (Administrators Appointed) [2014] VSC 111 (26 March 2014):  In the last issue, we reported that the assignee of certain rights to an invention used to manufacture clean skin spirits obtained a declaration in the Federal Court that the registered proprietor of the corresponding patent held that patent on trust for itself and the applicant as co-owners in equity: Neobev Pty Ltd v Bacchus Distilleries Pty Ltd (Administrators Appointed) [2014] FCA 4.  Nevertheless, Bacchus’s administrators wished to sell the patent (along with Bacchus’s other assets) and sought declarations in the Supreme Court of Victoria that they were entitled to sell the patent and give Bacchus priority over Neobev when applying the proceeds from the sale.  The administrators successfully established a power of sale under various bases, but failed to establish that Bacchus or the administrators would enjoy any priority over any claim of Neobev to a share of the proceeds.  Justice Judd also concluded by noting that the administrators’ success in making out a right to sell the patent was “not to be taken as authorisation that they may do so”.  Neobev’s “very real interest” in the sale process (including as to allocation of price between Bacchus’s assets, including the patent) meant that continuing supervision by the Court was required.

Bugatti GmbH v Shine Forever Men Pty Ltd (No 2) [2014] FCA 171 (7 March 2014): Bugatti successfully established that the respondent, in marketing clothing and accessories under the marks BUGATCHI or BUGATCHI UOMO, had infringed Bugatti’s BUGATTI mark, and elected for an account of profits.  After being ordered to file relevant financial information, the respondent filed largely deficient affidavit evidence in support of the proposition that it had made no profit during the relevant two year period and then failed to appear at the hearing.  Even working with the respondent’s objectionable and inadequate affidavit material, Bugatti was able to satisfy the Court that the respondent plausibly had made at least $550,000 in profit, and obtained an order in its favour accordingly.

Agapitos v Habibi [2014] WASC 47 (25 February 2014):  A Western Australian dentist who had managed to register DENTAL EXCELLENCE as a trade mark (and also traded under that name) bit off more than he could chew when he sued a South Perth dentist trading under the name “South Perth Dental Excellence” for trade mark infringement, passing off and misleading and deceptive conduct.  The Court was not convinced that members of the public identified the words “Dental Excellence” with the plaintiff’s business (thereby defeating the passing off claim), and was not persuaded that the phrase had acquired distinctiveness or a secondary meaning in the minds of the public (thereby defeating the misleading and deceptive claim in respect of what was plainly an “eloquently descriptive trade name”).  Further, the Court held that the defendant’s counterclaim for rectification was made out as the plaintiff’s mark was not inherently distinctive, and ordered that it be cancelled.

Caffell & Falcon [2014] FamCAFC 34 (26 February 2014):  The appellant in a Family Court matter sought to challenge the trial judge’s reliance on the report of a psychologist.   Although his report primarily was based on his counselling sessions with the parties and their child, the psychologist also may have been provided with, and read, reports given to him by the respondent.  The appellant contended that in so doing, the respondent had breached the Copyright Act.  In considering whether that translated into an appellable error on the part of the trial judge, the Court described the appellant’s claim as “specious”.