PKT Technologies Pty Ltd (formerly known as Fairlight.Au Pty Ltd) v Peter Vogel Instruments Pty Ltd

• Jurisdiction: Australia Federal only
• Court: Federal Court
• Judgment Date: 05 December 2019
• Neutral Citation: [2019] FCAFC 216
• Date: 05 December 2019

FEDERAL COURT OF AUSTRALIA

PKT Technologies Pty Ltd (formerly known as Fairlight.Au Pty Ltd) v Peter Vogel Instruments Pty Ltd [2019] FCAFC 216

Appeal from:	PKT Technologies Pty Ltd (formerly known as Fairlight.Au Pty Ltd) v Peter Vogel Instruments Pty Ltd [2018] FCA 1587
File number:	NSD 2091 of 2018
Judges:	BESANKO, BANKS-SMITH AND STEWART JJ
Date of judgment:	5 December 2019
Catchwords:	DAMAGES – damages for wrongful repudiation of agreement – expectation damages – whether claim for expectation damages expressly abandoned in previous hearing – party is bound by forensic election – likelihood of attainment of a profit – whether evidence of projections of future earnings sufficient to prove a likelihood of attainment – where projections undermined by actual performance – projections rejected as reliable indicator of actual performance – whether losses arising naturally from the breach of the contract – claim for expectation damages rejected ; DAMAGES – reliance damages – whether reliance damages only available as an alternative to expectation damages – not bound to elect between types of damages – recoupment of reliance losses – whether trial judge included future operating expenses in calculation – onus fell on appellant to prove that the net value of the performed contract would not have covered the expenditure incurred prior to rescission – onus not met – where trial judge relied on a general percentage figure to calculate lost opportunity to recoup reliance losses – no error in approach – 30% of expenditure award maintained ; DAMAGES – additional mitigation damages awarded – whether sufficient basis to allow damages – whether mitigation losses can predate repudiation of the contract – losses do not logically relate to mitigation – award reduced ; TRADE MARKS – account of profits – where registered trade mark infringed by respondent by offering to supply and supplying applications for use on electronic devices – where trade mark used in relation to sales made both in Australia and other countries – whether profits recoverable by registered owner in respect of sales made in other countries – whether appellant clearly argued or sufficiently developed submissions with regard to applicability of s 228 of the Trade Marks Act 1995 (Cth) – matter not sufficiently raised – whether sales made in other countries shown to be based on offers to sell in Australia – ground dismissed – whether sales rightly attributed to the use of the trade mark – cross-appeal ground dismissed ; Copyright – infringement – whether cross-respondents jointly liable for copyright infringement – no evidence that infringement authorised by parent company – cross-appeal ground dismissed
Legislation:	Copyright Act 1968 (Cth) s 115(4) Trade Marks Act 1955 (Cth) s 117(1) Trade Marks Act 1995 (Cth) ss 7(4), 9, 20, 120, 126, 228
Cases cited:	Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 68; 120 ALR 495 Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50; 122 CLR 25 Commonwealth of Australia v Amann Aviation Pty Ltd [1991] HCA 54; 174 CLR 64 Deckers Outdoor Corporation Inc v Farley (No 2) [2009] FCA 256; 176 FCR 33 Fairlight.AU Pty Ltd v Peter Vogel Instruments Pty Ltd (No 3) [2015] FCA 1422; 116 IPR 118 Hadley v Baxendale (1854) 9 Exch 341 Hughes v National Trustees, Executors and Agency Company of Australasia Ltd [1979] HCA 2; 143 CLR 134 International Hair Cosmetics Group Ltd v International Hair Cosmetics Ltd [2011] FCA 339; 218 FCR 398 James Minifie & Co v Edwin Davey and Sons [1933] HCA 17; 49 CLR 349 Kids for Life v Chamberlain Group [2014] NSWSC 1561 Malec v JC Hutton Pty Ltd [1990] HCA 20; 169 CLR 638 Mallett v McMonagle [1970] AC 166 Metwally v University of Wollongong [1985] HCA 28; 60 ALR 68 Nudd v R [2006] HCA 9; 225 ALR 161 Peter Vogel Instruments Pty Ltd v Fairlight.Au Pty Ltd [2016] FCAFC 172; 343 ALR 387 Peter Vogel Instruments Pty Ltd v Fairlight.Au Pty Ltd (No 2) [2016] FCAFC 191 PKT Technologies Pty Ltd (formerly known as Fairlight.Au Pty Ltd) v Peter Vogel Instruments Pty Ltd [2018] FCA 1587; 135 IPR 463 Re the Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28; 82 CLR 199 Robinson v Harman (1848) 1 Exch 850; 154 ER 363 Sellars v Adelaide Petroleum NL [1994] HCA 4; 179 CLR 332 Ship Hako Endeavour v Programmed Total Marine Services Pty Ltd [2013] FCAFC 21; 211 FCR 369 Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720; 369 ALR 299 TC Industrial Plant Pty Ltd v Robert’s Queensland Pty Ltd [1963] HCA 57; 180 CLR 130 Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471; 143 FCR 479 Warren v Coombes [1979] HCA 9; 142 CLR 531 WD & HO Wills (Aust) Ltd v Rothmans Ltd [1956] HCA 15; 94 CLR 182 ; Davison M J and Horak I, Shanahan’s Australian Law of Trade Marks and Passing Off (6th ed, Thomson Reuters, 2016)
Date of hearing:	9 May 2019
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	210
Counsel for the Appellant / Cross-Respondents:	G Sirtes SC and A Kaufman
Solicitor for the Appellant / Cross-Respondents:	Kalus Kenny Intelex Lawyers
Solicitor for the Respondent / Cross-Appellant:	P Vogel and R Goldie of Goldie Corporate Counsel

ORDERS

		NSD 2091 of 2018
BETWEEN:	PKT TECHNOLOGIES PTY LTD (ACN 104 307 888) (FORMERLY KNOWN AS FAIRLIGHT.AU PTY LTD) Appellant
AND:	PETER VOGEL INSTRUMENTS PTY LTD ACN 140 173 397 Respondent
AND BETWEEN:	PETER VOGEL INSTRUMENTS PTY LTD ACN 140 173 397 Cross-Appellant
AND:	PKT TECHNOLOGIES PTY LTD (ACN 104 307 888) (FORMERLY KNOWN AS FAIRLIGHT.AU PTY LTD) (and another named in the Schedule) First Cross-Respondent

JUDGES:	BESANKO, BANKS-SMITH AND STEWART JJ
DATE OF ORDER:	5 December 2019

THE COURT...