Goodman Fielder Pte Ltd v Conga Foods Pty Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 31 March 2021
• Neutral Citation: [2021] FCA 307
• Court: Federal Court
• Date: 31 March 2021

Federal Court of Australia

Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2021] FCA 307

File number:	NSD 328 of 2018
Judgment of:	BURLEY J
Date of judgment:	31 March 2021
Catchwords:	TRADE MARKS – infringement – goods of the same description – where scope of alleged infringing goods not sufficiently made clear by the parties at trial – further infringement findings ; PRACTICE AND PROCEDURE – form of final orders – scope of declaratory and injunctive relief ; PRACTICE AND PROCEDURE – whether respondents should be granted sell-through period for infringing products – whether respondents should be ordered to deliver up infringing products after sell-through period ; PRACTICE AND PROCEDURE – whether respondents should be ordered to withdraw application to register trade mark found to infringe applicants’ trade marks ; PRACTICE AND PROCEDURE – whether orders for rectification of the Trade Marks Register are necessary where applicants have voluntarily amended their registrations ; PRACTICE AND PROCEDURE – stay of determination of quantum pending appeal ; COSTS – whether costs should be paid as a lump sum or taxed – whether costs should be awarded on issue by issue basis – apportionment of costs
Legislation:	Federal Court of Australia Act 1976 (Cth) s 23, s 24(1A), s 37AF, s 43 Federal Court Rules 2011 (Cth) r 34.48, r 36.08 Trade Marks Act 1995 (Cth) s 4, s 17, s 33, s 120 ; Federal Court of Australia, Costs Practice Note (GPN-COSTS), 25 October 2016 Macquarie Dictionary (5th ed, 2009, Sydney)
Cases cited:	Australian Competition and Consumer Commission v Cambur Industries Pty Ltd [2006] FCA 1027; ATPR ¶42-127 Calidad Pty Ltd v Seiko Epson Corporation (No 2) [2019] FCAFC 168; 147 IPR 386 Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50; 122 CLR 25 Firebird Global Master Fund II Ltd v Republic of Nauru (No 2) [2015] HCA 53; 327 ALR 192 Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808 Goodman Fielder Pty Ltd v Conga Foods Pty Ltd [2019] FCA 2053 Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd (No 2) [2018] FCAFC 7 In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (No 2) [2020] FCA 772 Philips Electronics NV v Remington Products Australia Pty Ltd [1997] FCA 1048; 150 ALR 355 QS Holdings Sarl v Paul’s Retail Pty Ltd (No 2) [2011] FCA 1038 Red Bull Australia Pty Limited v Sydneywide Distributors Pty Limited t/as Sydneywide Bottlers Australia [2001] FCA 1750 Rural Press Ltd v Australian Competition and Consumer Commission [2003] HCA 75; 216 CLR 53 Solahart Industries Pty Ltd v Solar Shop Pty Ltd (No 2) [2011] FCA 780; 282 ALR 43 Thai Gypsum Products Company Ltd v Waring & Gillow Pty Ltd [1994] FCA 556; 29 IPR 99 Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471; 143 FCR 479 Wooldridge v Australian Securities and Investments Commission [2015] FCA 349
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	87
Date of hearing:	11 March 2021
Counsel for the Applicants / Cross-respondents:	Mr E J C Heerey QC with Ms M Evetts
Solicitor for the Applicants / Cross-respondents:	Norton Rose Fulbright
Counsel for the Respondents/Cross-claimants:	Mr M Hall SC with Ms S Stewart
Solicitor for the Respondents/Cross-claimants:	Clayton Utz

ORDERS

		NSD 328 of 2018
BETWEEN:	GOODMAN FIELDER PTE LTD First Applicant ; LA FAMIGLIA FINE FOODS PTY LTD Second Applicant
AND:	CONGA FOODS PTY LTD First Respondent ; PASTIFICIIO RANA S.P.A. Second Respondent
AND BETWEEN:	CONGA FOODS PTY LTD (and another named in the Schedule) First Cross-Claimant
AND:	GOODMAN FIELDER PTE LTD (and another named in the Schedule) First Cross-Respondent

order made by:	BURLEY J
DATE OF ORDER:	31 MARCH 2021

THE COURT DECLARES THAT:

1. The respondents have infringed Australian trade mark registration number 1155473 by using, as a trade mark, each of , LA FAMIGLIA RANA and @lafamigliarana (La Famiglia Rana Marks) in relation to fresh filled pasta, fresh gnocchi and fresh lasagne sheets.

THE COURT ORDERS THAT:

2. The respondents, whether by themselves, their directors, employees, agents or howsoever otherwise, be restrained from infringing Australian trade mark registration number 1155473, including, in particular, from using any of the La Famiglia Rana Marks on or in relation to fresh filled pasta, fresh lasagne sheets or fresh gnocchi.

Non-use of trade marks

3. Pursuant to s 97(2) of the Trade Marks Act 1995 (Cth), the following Australian Registered Trade Marks be removed from the Register:

   1. Trade mark number 701727; and

   2. Trade mark number 1130187.

4. Pursuant to s 101(2) of the Act, the goods in respect of which registered trade mark 1155473 is registered be amended to read as follows, with effect from the priority date:

Bread, bread rolls, buns, flat bread, pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; frozen, chilled and shelf stable bread.

5. Pursuant to s 101(2) of the Act, the goods in respect of which registered trade mark 1171906 is registered be amended to read as follows, with effect from the priority date:

Pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; frozen, chilled and shelf stable bread.

6. Pursuant to s 101(2) of the Act, the goods in respect of which registered trade mark 16891333 is registered be amended to read as follows, with effect from the priority date:

Pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; sandwiches; frozen, chilled and shelf stable bread.

7. Pursuant to s 101(2) of the Act, the goods in respect of which registered trade mark 1689131 is registered be amended to read as follows, with effect from the priority date:

Pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; sandwiches; frozen, chilled and shelf stable bread.

8. Within 5 business days the parties are to serve a copy of these orders on the Registrar of Trade Marks.

Costs

9. The respondents pay the applicants’ costs of the infringement claim, excluding costs of the applicants’ evidence not read and the costs of and associated with the Quantium evidence that was not admitted into evidence.

10. The applicants are to pay 50% of the respondents’ costs of the cross claim.

11. Pursuant to r 40.02(b) of the Federal Court Rules 2011 (Cth), the costs awarded in orders 9 and 10 be paid in a lump sum.

12. The parties are to...