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The court held that intellectual property right owners, like any other plaintiff, must prove that there is a risk that the defendant will engage in infringing conduct in the future before a court will grant an injunction against a defendant. The court also preferred the view that, in proving risk of future infringement, such risk should not simply be inferred from past infringement without consideration of other relevant circumstances.
After being caught importing various items from China that infringed a number of Louis Vuitton Malletier’s registered trade marks in Australia, Knierum (who was unrepresented) settled an action against him by consenting to a number of proposed orders, including permanent injunctions restraining him from infringing Louis Vuitton Malletier’s trade marks and delivering up on oath for destruction any goods and documents in his possession which bore any of Louis Vuitton Malletier’s trade marks.
The court was asked to make these proposed orders by consent. In exercising its discretion to refuse the orders as proposed, the court took into account the fact that (i) Knierum was unrepresented, and (ii) that the imposition of a permanent injunction would put Knierum at risk of committing two offences for one act of infringement if he were to repeat the offence: first for breach of the Trade Marks Act and second for breach of the injunction. This latter factor was taken into account notwithstanding the fact that the Trade Marks Act creates the offence as well as provides for an injunction as an appropriate remedy for infringement.
Upon suggestion by the court, Louis Vuitton Malletier agreed to limit the injunction to a period of five years, whereafter orders were pronounced.
Shortly after, Louis Vuitton Malletier requested that the orders be recalled before they were entered, and that the matter be relisted so it could present further argument in relation to the duration of the injunction.
In deciding whether there was a basis to recall the orders, the court held that it had not erred in modifying the consent injunction proposed by the parties. In particular, the court pointed out that Louis Vuitton Malletier did not have any evidence that Knierum would re-offend in the future. Additionally, it considered the imposition of a permanent injunction unduly onerous notwithstanding Knierum’s consent, and expressed the view that such an injunction “would not have been agreed to” had Knierum been advised by a lawyer.
(a) the risk of being caught was great;
(b) the consequences of being caught were likely to be more than what Knierum could bear; and
(c) there was no other conduct engaged in by Knierum from which it could be inferred that he would re-offend.
Accordingly, the court refused to recall its orders.
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