In Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970, Liquid Engineering 2003 (“LE2003”) successfully brought trade mark infringement proceedings and was also successful in bringing a claim under section 88 of the Trade Marks Act, to have the register rectified to reflect the fact that it was the true owner of two trade marks which had been registered by its former employee, Edwards. However, as LE2003 had originally brought the claim for rectification under section 92, the trial judge made an order that it pay Edwards’ costs of those original proceedings.
Edwards appealed against the decision at first instance in relation to the calculation of the account of profits for the infringement held to have occurred, while LE2003 cross appealed against both the calculation of the account of profits and the adverse costs order made. In Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd [2009] FCAFC 7, the Full Court allowed LE2003’s appeal in relation to the account of profits, increasing the award from $106,000 to $330,000, however rejected the appeal in relation to costs.The original claim brought by LE2003 under section 92 alleged that Edwards could not have used or intended to use the two trade marks in good faith, because he had appropriated those marks from his employer. The Full Court upheld the decision of the trial judge that the expression “use in good faith” for the purposes of section 92 requires no more that a genuine intent to use the mark for commercial purposes, rather than a token use. Accordingly, the circumstances surrounding Edwards use of the trade marks was not relevant to claim under section 92.