- About You
- About Us
- Trade Marks
- Domain Names
- IP Law
- IP Disputes
The Markwell Blog
Additional damages adds up to a lot of kebab
In Halal Certification Authority Pty Limited v Scadilone Pty Limited  FCA 614, the Federal Court of Australia for the first time awarded ‘additional damages’ for trade mark infringement.
Halal Certification Authority Pty Ltd (‘HCA’) is one of 13 organisations authorised by the Australian Government to inspect meat production and certify that it is halal in accordance with Islamic requirements.
Meat producers and wholesalers who wish to be certified must comply with these requirements and pay a licence fee to HCA. In exchange they receive a certificate bearing HCA’s registered logo mark.
In 2012, it came to HCA’s attention that Quality Kebabs Wholesalers had been supplying two restaurants with meat certified as halal. Importantly, the certificates issued by Quality Kebabs were identical to those issued by HCA, including HCA’s trade marked logo.
As HCA had not in fact certified Quality Kebab’s products or issued the certificate, it commenced legal proceedings against Quality Kebabs and the two restaurants for trade mark infringement.
The Court’s decision on damages (‘a lot of kebab’)
After finding that there had been an infringement of HCA’s registered trade mark, the Court turned to the question of damages.
Damages based on s 126(1) of the Trade Marks Act 1995 is compensatory in nature. HCA argued that it should be compensated on the basis of the licence fees it had lost – around $60,000 in the case of the wholesaler and $5,000 in the case of each restaurant. Alternatively, HCA sought damages based on the loss of value in its trade mark and damage to reputation.
The Court held that it was unlikely that Quality Kebabs or the restaurants would have entered into a licensing arrangement with HCA whose fees were significantly higher than other halal certifiers. Accordingly, there were no ‘lost’ licence fees. There was also no evidence to support the damages claim based on loss of value or reputation. So, the Court awarded nominal compensatory damages of $10.
However, the Court considered that an award of ‘additional damages’ under s 126(2) of the Act is not compensatory in nature but takes into account the flagrancy of the infringement and the need to deter similar infringements. On this basis, the Court awarded additional damages against Quality Kebabs of more than $91,000 (which, as Perram J observed, is ‘a lot of kebab’).
- Section 126(2) of the Trade Marks Act 1995 (Cth) now allows for the award of additional damages for trade mark infringement.
- Additional damages are not compensatory but take into account the flagrancy of the infringement, the conduct of the infringer and the need to deter infringements.
- Trade mark owners now have a further potential avenue for recovering damages against an infringer even where they are unable to prove ordinary loss.
- Without Oyster Bay, it’s just a bottle
- Omega fails reputation test in trade mark dispute
- Trade marking colours – lessons for brand owners
- New law to protect major event sponsors
- Additional damages adds up to a lot of kebab
- Descriptive trade marks and Google Adwords
- Changes to trademark oppositions in China
- Important changes to Chinese trade mark laws
- A mite too late: Dick Smith loses OzEmite
- Trade Marks Office decision too bad for IBAD
Get in touch
Intl: +61 3 9909 7693
Melbourne VIC 3000 AUSTRALIA
We eat trade marks for breakfast
Markwell is a boutique intellectual property firm that provides no-nonsense, business-relevant, expert advice in trade marks, domain names and intellectual property law. Representing brand owners in Australia, Asia and Worldwide.
Our attorneys have been featured in: