BALDWINS • FoodLegal

Australian Lawyers and Consultants

Baldwins' Client wins against Dr Martens: Landmark Decision by Federal Court

June 2000

On 8 June 2000, the Full Court of the Federal Court of Australia handed down its judgment in favour of Baldwins' client Windsor Smith Pty Ltd in an appeal case against Dr Martens Australia Pty Ltd. The Full Court reversed the earlier decision of trial judge Justice Goldberg when the three judges of the Full Federal Court unanimously held that Windsor Smith had not engaged in passing off any of its shoes as being those made by Dr Martens. Windsor Smith is a leading brand in the Australian footwear market with its shoes selling in more than 1200 outlets.

The decision brings to a conclusion the proceedings initiated more than four years ago by the UK based Dr Martens. Windsor Smith was one of several Australian footwear manufacturers against whom Dr Martens had initiated court proceedings. It is understood that Dr Martens had initiated proceedings in a number of jurisdictions around the world in support of its claimed proprietary rights to the brand and get-up of Dr Martens shoes against manufacturers and distributors of so-called "lookalike" shoes. The outcome of this Australian case has been awaited with keen interest as it formed part of a worldwide campaign by Dr Martens Group to protect its get-up and brand. The decision of the Full Federal Court must now call into question the Dr Martens’ litigation strategy.

The Full Court noted that although Windsor Smith (and other manufacturers) had adopted the “look” of the Dr Martens shoe, factors such as the Windsor Smith branding, the Windsor Smith labelling and point of sale material, and the price differences between the Windsor Smith product and the Dr Martens product meant that any suggestion of misleading or deceptive conduct under the Trade Practices Act was not able to be sustained by Dr Martens.

At the original trial, the judge found that Windsor Smith’s use of the phrase “The Original” on the sole of its shoe constituted a representation that Windsor Smith’s footwear was manufactured by interests associated with Dr Martens. The Full Court disagreed with the view taken by the trial judge, and held that Windsor Smith’s branding, labelling and pricing distinguished Windsor Smith footwear from the Dr Martens product, and that therefore it could not be said that Windsor Smith was representing that its shoes were from the same trade source as that of Dr Martens.

The Full Court’s decision is significant because it assists in defining the parameters of section 52 of the Trade Practices Act (which prohibits misleading and deceptive conduct) as well as delineating the Australian common law position on passing off.

The head of Baldwins’ commercial litigation group, partner Mr Sam Recht comments on the case:

"Baldwins believed the trial judge had erred in making the findings of fact that he did, and we recommended that our client appeal against the decision. We briefed top barristers and we are pleased that our advice has been vindicated by the favourable decision on appeal. Intellectual property disputes and trade practices litigation now form a major part of our commercial litigation practice. We are not afraid to take a stand for the client, no matter how substantial the resources mustered by our opponents against us".

Mr David Catterns QC and Mr Colin Golvan of Counsel were the barristers briefed by Baldwins for the appeal.

For further information, contact Sam Recht at BALDWINS, Australian Lawyers & Consultants.

The judgment of the Full Federal Court can be read by clicking here.