In the case of Paco Nominees Pty Ltd v Ella Secret Australia Pty Ltd (Default Judgment), [2025] FCA 366, the Federal Court has ruled that one respondent infringed trademarks by offering for sale, selling, and supplying counterfeit goods, while the second respondent procured or acted as a party to the first respondent’s trademark infringement.
The first applicant was the registered owner of trademarks that the second applicant had authorisation to use. Both applicants filed a trademark infringement suit against two respondents. The applicants asked the court to issue a default judgment against the respondents under rules 5.23(2)(c) and (d) of the Federal Court Rules 2011 (Cth).
The applicants alleged that:
the first respondent promoted, offered for sale, sold, and supplied clothing not manufactured by the applicants or lacking the licence of either applicant, beginning at least 25 August 2024
the second respondent – the first respondent’s sole director, secretary, shareholder, and controlling mind – sold counterfeit goods
the second respondent was liable as an accessory for the first respondent’s conduct
Trademark suit succeeds
The Federal Court of Australia issued an order that permanently restrained:
the first respondent from offering for sale, selling, and supplying counterfeit goods under s. 126(1) of the Trade Marks Act 1995 (Cth)
the second respondent from procuring, knowingly concerning himself in, or acting as a party to the first respondent’s trademark infringement under s. 23 of the Federal Court of Australia Act 1976 (Cth)
The court directed the respondents to pay, jointly and severally, the first applicant’s damages for trademark infringement amounting to $20,000 under s. 126(1) of the Trade Marks Act and both applicants’ costs of the proceeding amounting to $33,025.15 on a party-party basis.
The court deemed the respondents in default since they were served with the pleadings, received notice of court orders dated 4 November 2024, and fell under rules 5.22(b), (c), and/or (d) of the Federal Court Rules.
The court also found the applicants entitled to the injunctions and cost award that they requested.
Regarding first respondent
The court noted that the applicants’ statement of claim pleaded the necessary elements to show trademark infringement by the first respondent.
Considering the respondents’ default, the applicants established by admission that the first respondent used the trademark through utilising a sign that would objectively and contextually be viewed as showing a “badge of origin” on the apparel, the court said.
As against second respondent
Also given the respondents’ default, the court held that the applicants established that the second respondent was liable as a joint tortfeasor because he:
has served as the first respondent’s sole director, secretary, and shareholder since 20 June 2024
was in control of, the controlling mind of, and fully knowledgeable of the first respondent’s infringing conduct
was involved in and knowingly concerned in the first respondent’s business and operations
was acting concurrently with the first respondent, who was the primary infringer
The court concluded that both respondents shared a common design during the relevant period in which the alleged acts of infringement took place.
Leave a Reply