Claims include infringement, passing off, Australian Consumer Law contraventions
Australia’s Federal Court allowed the applicants to move forward with their trademark and consumer law proceeding against the first respondent, which was in liquidation, because the interests of justice supported hearing and determining the claims against both respondents together.
In Toyota Jidosha Kabushiki Kaisha v Ozi4x4 Pty Ltd (Leave to proceed), [2025] FCA 981, the applicants filed a statement of claim against the respondents in November 2023.
The applicants alleged trademark infringement, passing off, and contraventions of the Australian Consumer Law (ACL) in connection with vehicle parts and accessories that the first respondent allegedly imported, advertised, promoted, offered for sale, sold, and supplied from online and physical premises.
The applicants argued that the second respondent – as the sole director and principal responsible for the first respondent’s operations – was liable as an accessory for the infringement and ACL contraventions and as a joint tortfeasor with the first respondent for passing off.
The applicants asserted that the respondents breached their October 2021 settlement agreement to enforce a compromise arising from the applicants’ earlier proceeding against the respondents, which alleged trademark infringement, misleading and deceptive conduct, and passing off.
The applicants wanted injunctive relief, damages for infringement, and exemplary damages for passing off.
Last July, the Supreme Court of Victoria appointed a liquidator and ordered the winding up of the first respondent in insolvency under the Corporations Act 2001 (Cth), which would prevent the applicants from moving forward with their proceeding against the first respondent without the court’s leave.
The applicants brought an interlocutory application, supported by an affidavit, to request leave to proceed against the first respondent.
The court considered it appropriate to permit the applicants to proceed against the first respondent for the following reasons.
First, the court noted that the liquidator did not oppose the application.
Second, the court saw serious and substantive issues for a trial against the first respondent. In making this finding, the court acknowledged the respondents’ admission to certain facts in their defence, their responses or lack thereof to the applicants’ notices to admit, the affidavit evidence, and the written opening the applicants prepared.
Third, the court deemed it undesirable to fragment the questions rather than hearing and determining all claims against both respondents together. The court noted that the applicants asserted the respondents’ concurrent liability in numerous respects.
The court said concurrent liability arose from the applicants’ allegations of settlement agreement breaches, accessorial liability for statutory claims, and the respondents’ liability as joint tortfeasors in passing off.
Fourth, the court ruled that the depletion of resources at other creditors’ expense, which could be a relevant consideration in different circumstances, was irrelevant in this case. The court noted that the first respondent would probably not incur more costs to defend the proceeding because the liquidator said he had no funds and would not participate in the proceeding.
Fifth, the court found some complexity in this matter, which rendered the applicants’ claims against the first respondent more suitable for judicial determination, especially given that the matter was prepared for trial and could proceed immediately.
Sixth, the court held that the applicants could not obtain some relief via the proof of debt process. The court noted that exemplary damages for passing off, if awarded, would act as a deterrent and demonstrate its disapproval of the relevant conduct.
