Tommy Hilfiger Europe Inc. and Anothers v McGarry (T/A Lifejacket) and Others

• Jurisdiction: Ireland
• Judge: Carroll J.
• Judgment Date: 08 March 2005
• Neutral Citation: [2005] IEHC 66
• Docket Number: No. 2494 P./1999
• Court: High Court
• Date: 08 March 2005

[2005] IEHC 66

THE HIGH COURT

No. 2494 P./1999

Tommy Hilfiger Europe Inc. & Anor v McGarry t/a Lifejacket Goodstock Ltd & Anor

BETWEEN/

TOMMY HILFIGER EUROPE INC. AND TOMMY HILFIGER EURO BV

PLAINTIFFS

AND

DEREK McGARRY t/a “LIFEJACKET”, GOODSTOCK LIMITED AND LIFEJACKET LIMITED

(The second and third named defendants joined by Order of the High Court made on 25th March, 1999)

DEFENDANTS

TRADE MARKS ACT 1996 S20

TRADE MARKS ACT 1996 S23

MCA RECORDS INC & ANOR v CHARLY RECORDS LTD & ORS (NO 5) 2003 1 BCLC 93 2002 BCC 650

INTELLECTUAL PROPERTY

Passing off

Trademarks - Infringement - Whether defendant's goods benefited from association with plaintiff's goods - MCA Records v Charly Records Ltd [2003] 2 BCLC 93 considered - Injunction restraining passing off granted and damages awarded (1999/2494P - Carroll J -8/3/2005) [2005] IEHC 66

Tommy Hilfiger Europe Inc v McGarry

Judgment of

Carroll J.

1 delivered the 8th day of March, 2005.

2 “Tommy Hilfiger” is a well known trademark for young people's casual wear. The mark is a flag in red, white and navy. The owners of the trademark were preparing to launch the product in Ireland in December, 1999. Their choice of outlets were Brown Thomas and some selected up-market outfitters in Galway, Cashel, Tullamore and Mullingar.

3 The agent for Tommy Hilfiger, Mr. Shah, heard rumours in February, 1999 that there were counterfeit garments on the market. An outlet in Galway owned by Mr. Joe Hanley received from the defendant Derek McGarry a carton of goods (about 3 dozen) which were sports tops with "Tommy Sports" on them. They were of inferior quality to Tommy Hilfiger garments. Mr. Hanley believed they were by Tommy Hilfiger and would not sell them in competition with the genuine article. He informed Mr. Shah and couriered a garment to him.

4 A major fashion fair, Futura Fair, was due to be held at the RDS between 28th February and 2nd March, 1999. Mr. Shah went to the McGarry stand on Friday 28th and saw copies of four original Tommy Hilfiger garments together with other "Tommy Sports" garments. He then got his solicitors, Messrs. A. & L. Goodbody, to bring an application on Friday afternoon for an order made under s. 20 of the Trademark Act,1996, which was granted by Judge Macken. The effect of this order was for the delivery up of garments which were unauthorised copies of the plaintiffs' garments. He also visited Mr. McGarry's place of business at Grand Canal Street and was told he was not operating out of there.

5 Caroline Plunkett, a solicitor with A. & L. Goodbody attended with an apprentice at the Futura Fair on Monday at 12.30 p.m. She produced a letter to Mr. McGarry setting out the effect of the s. 20 order and explained it to him. She advised him to consult his own solicitor. The perfected order was served later on that day.

6 Mr. McGarry said he had bought the garments in England and was entitled to sell them. He was told that there was no Tommy Hilfiger manufacturer in England. Initially he refused to co-operate but after a considerable time Mr. McGarry surrendered 47 garments when the show was closing, having received advice from his solicitor.

7 There was a conflict of evidence that Caroline Plunkett indicated which garments she required and Mr. McGarry gave them. She denied this. As she understood the order the defendant had to surrender the garments. If he refused she could not seize the garments. I accept her evidence that she did not point out or choose any garments and that they were handed over voluntarily by Mr. McGarry.

8 On 4th March there were a further 170 garments shown to the plaintiffs at the defendants' solicitors, Messrs. L.K. Shields.

9 An interlocutory application was heard on 25th March, 1999 and the court granted certain relief. There could be a permitted sale of certain garments listed in schedule 1 but detailed accounts were to be kept of the sales.

10 There was to be no sale of garments listed in schedule 2.

11 The plaintiffs claim that the garments are inferior in quality and undermine the standard of the Tommy Hilfiger product. They debase the mark by a cheap imitation.

12 The position about "Tommy Sports" is that the manufacturer in England who used that label subsequently assigned his rights to the plaintiffs.

13 Mr. McGarry went to inspect the register of trademarks on 5th March, 1999. He discovered that there was no trademark registered in this country for "Tommy Sports". He applied to register it. The application was still pending at the time of trial, following opposition filed by the plaintiffs.

14 Insofar as the history of his trading companies are concerned, Lifejacket Ltd., the third defendant, ceased trading in December, 1998 with debts. There is no evidence that Lifejacket traded in Tommy Hilfiger goods. Goodstock Ltd., the second defendant, ceased trading in 2002 with debts of €140,000. On 15th March, 1999 Mr. McGarry formed another company, Tommy Sports Clothing Ltd. It started trading in 2001 and still trades. He also formed ODC Enterprises Ltd. on 25th October, 2001. This is the company which is applying for the trademark.

15 Mr. McGarry claims the execution of the order was oppressive and that goods were seized which were not infringing any trademark. I do not accept this as no goods were seized but were handed over voluntarily.

16 Before the Futura Fair the defendants sold 2,500 garments which were a mixture of Tommy Hilfiger, Tommy Sports and others. After the fair and after an interval of one to one and a half years Mr. McGarry commenced manufacturing under the label Tommy Sports. He sold 1,400/1,500 garments, being a mixture of branded goods including Tommy Sports.

17 The profit in Tommy Sports Clothing Ltd. was:

to November ”01 gross profit €400,000 net profit 30%

November ”02 gross profit €700,000 net profit 30%

18 As far as the initial infringement of copyright was concerned, where copies of Tommy Hilfiger garments were exhibited for sale, this is no longer contested and the defendants are liable for infringement of copyright.

19 ...