Paco Nominees Pty Ltd v Ella Secret Australia Pty Ltd (Default Judgment)

This case concerned alleged counterfeit Geedup-branded clothing sold from a market stall at Paddy’s Markets in Flemington, New South Wales. Paco Nominees Pty Ltd owned the registered Geedup trade marks, and Geedup Online Pty Ltd was authorised to use them in the retail business. The evidence described Geedup as a premium Australian streetwear label founded in Western Sydney, later relaunched as an online-only brand, with a business model built around exclusive online sales and limited releases.

The applicants said they had been dealing with counterfeit activity since around April 2023, after customer reports that fake Geedup products were being offered for sale at Paddy’s Markets in Haymarket and Flemington. They responded with anti-counterfeiting measures including market surveillance, trap purchases, investigations, cease and desist letters, notices of objection and liaison with Australian Border Force and market operators.

The immediate dispute focused on Ella Secret Australia Pty Ltd and its sole director and shareholder, Ali Matar Briman. The applicants alleged that since at least 25 August 2024, Ella Secret had promoted, offered for sale, sold and supplied clothing that was not manufactured by or with the licence of the applicants but displayed the Geedup trade marks. Investigators made two trap purchases from Ella Secret’s stall, one on 25 August 2024 and another on 8 September 2024.

The evidence referred to a pair of counterfeit Geedup trackpants and a counterfeit Geedup hoodie. Geedup’s Global General Manager said he examined the purchased items and observed that they replicated the design of genuine Geedup products and replicated swing tags used on genuine products, but did not have the Certilogo authentication tags used by the Geedup Group and were significantly inferior in quality and workmanship.

The respondents did not engage with the proceeding in the way the Federal Court required. The judgment says they were served with the originating application, statement of claim and related material in October 2024. Even after service, they did not file an address for service, did not file defences, did not attend the case management hearing on 9 December 2024 and did not appear at the hearing of the default judgment application on 9 April 2025.

Under the Federal Court Rules, a party may be in default if it fails to do an act required by the Rules, fails to comply with a court order, fails to attend a hearing, or fails to prosecute or defend the proceeding with due diligence. The Court found that the respondents had committed defaults falling within those categories.

That did not mean the applicants automatically received every order they asked for. The Court emphasised that the power to give judgment against a defaulting party is discretionary and must be exercised cautiously. The Court still had to be satisfied on the face of the pleadings that the applicants were entitled to the relief claimed, and then had to consider whether each kind of relief was appropriate.

That procedural point is important for business owners. Ignoring a claim does not make it disappear. It usually means the Court will assess the case based on the applicant’s pleadings and evidence, without hearing any competing explanation from the respondent. In practice, that can make declarations, injunctions and monetary orders much easier for the applicant to obtain.

The Court identified the central question as whether it should exercise its discretion to grant the relief claimed. That involved two broad steps. First, were the respondents in default under the Federal Court Rules. Second, on the face of the pleadings, were the applicants entitled to the declarations, injunctions, damages and costs they sought.

On trade mark infringement, the Court considered the pleaded claim under section 120(1) of the Trade Marks Act 1995 (Cth). The issue was whether Ella Secret had used as a trade mark signs that were substantially identical with, or deceptively similar to, the registered Geedup trade marks in relation to goods for which those marks were registered. The judgment referred to the High Court’s explanation in Self Care that using a sign as a trade mark means using it as a badge of origin, assessed objectively in context.

Because the respondents were in default, they were taken to have admitted key pleaded allegations. Those admissions included Paco’s ownership and validity of the Geedup trade marks, the use of the Geedup marks as trade marks, the fact that the counterfeit goods were goods in respect of which the marks were registered, and the promotion, offer for sale, sale and supply of counterfeit goods bearing the marks without authority.

The Court also had to decide whether the individual respondent could be the subject of personal relief. The pleaded case said Mr Briman had been since 20 June 2024 the sole director, secretary and shareholder of Ella Secret, was in control of and the controlling mind of the company, and was involved in and knowingly concerned in its business and operations. The Court accepted that, by default, those allegations were admitted and were sufficient to support liability consistent with joint tortfeasor principles.

The Court granted default judgment. It declared that by offering for sale, selling and supplying counterfeit goods, Ella Secret Australia Pty Ltd had infringed the Geedup trade marks. It also declared that Mr Briman had procured or been a party to the company’s infringement.

The Court then made permanent restraining orders. The company was permanently restrained from offering for sale, selling and supplying counterfeit goods. The individual respondent was permanently restrained from procuring, or being knowingly concerned in, or a party to, any trade mark infringement by the company of that kind.

On monetary relief, the Court ordered the respondents jointly and severally to pay Paco Nominees Pty Ltd $20,000 in damages for trade mark infringement. It also ordered the respondents jointly and severally to pay the applicants’ costs on a party-party basis in the sum of $33,025.15.

The available reasons explain the Court’s approach to compensatory damages and then move into a discussion of additional damages under section 126(2) of the Trade Marks Act. However, the publicly available text used for this note cuts off during that discussion. The available orders record the declarations, injunctions, $20,000 damages order and costs order set out above. This page therefore does not go further than those orders when describing the final outcome.

The applicants sought pecuniary and non-pecuniary relief, but the judgment says that at the hearing counsel pressed the claim for damages on behalf of Paco, the owner of the trade marks. Paco claimed $20,000 for diminution of reputation under section 126(1) of the Trade Marks Act.

The Court noted there was no evidence quantifying lost sales, business or licence payments with precision. There was evidence of the two trap purchases and the prices at which the counterfeit goods were sold. The trackpants were sold for $90, compared with authentic products selling for $130 to $170. The hooded jumper was sold for $93, compared with authentic products retailing for $170 to $220. The Court said Paco had established that it was likely to have suffered loss or damage from lost sales, even though the amount was not calculable.

The Court also accepted that Paco had goodwill and reputation to protect. The evidence described a successful streetwear business with distinctive designs, collaborations with well-known musicians and athletes, and one-off limited edition releases sold exclusively through Geedup’s website. The counterfeit goods were said to replicate genuine designs and swing tags, but not the Certilogo authentication tags, and to be significantly inferior in quality and workmanship.

On that basis, the Court was satisfied that Paco’s reputation had been diminished by the counterfeit selling, despite the respondents being described as commercial minnows. The Court considered an award of $20,000 for reputational loss appropriate.

The available reasons then turn to additional damages and set out the statutory factors and relevant authorities. But the text available for this note is truncated before the discussion finishes. That means the safest public reading is this: the available orders clearly show a $20,000 damages award and a costs order, and the reasons clearly explain the reputational loss basis for the $20,000 award. The text available here should not be used to state any further final award of additional damages beyond what appears in those orders.

If you run a retail business, the first lesson is about sourcing. The goods in this case were alleged to look convincing enough to replicate genuine designs and swing tags. That means a reseller cannot rely on appearance alone. If you stock branded goods, you should know who supplied them, whether that supplier is authorised, what authenticity features the brand uses, and whether the goods came through a legitimate channel.

The second lesson is about records. If a brand owner challenges your stock, you will need invoices, supplier details, communications and any authenticity checks you carried out. Without that material, it becomes much harder to explain how the goods were sourced and whether you acted responsibly.

The third lesson is procedural. If you receive a cease and desist letter, an originating application, a statement of claim or hearing dates, do not ignore them. In this case, the respondents’ failure to participate meant the Court proceeded on the basis of the pleaded admissions created by default. That left the respondents exposed to declarations, permanent injunctions, damages and costs without any competing evidence from their side.

The fourth lesson is for directors and founders. In smaller businesses, the same person often controls purchasing, pricing, staffing and sales. The Court was prepared to make personal restraining orders against the individual respondent because the pleaded case said he was the sole director, shareholder and controlling mind and was knowingly concerned in the conduct. If you are personally involved in sourcing or selling suspect stock, the company structure may not fully shield you from personal exposure.

For brand owners, the case is also a useful enforcement example. The evidence relied on included customer reports, anti-counterfeiting activity, trap purchases, evidence about authentication features, and evidence about the brand’s reputation and sales model. Those are the kinds of practical building blocks that can support urgent or default relief in counterfeit matters.

The judgment is dated 16 April 2025 and was delivered by Raper J in the Federal Court of Australia. The hearing of the default judgment application took place on 9 April 2025. The available reasons record service of the proceeding in October 2024, a case management hearing on 9 December 2024, and the two trap purchases on 25 August 2024 and 8 September 2024.

This page is published on a review basis because the available public text is truncated near the additional damages discussion. The core orders and most of the reasoning are available, but the text does not include the complete final discussion of that part of the claim. The page therefore focuses on the parts of the outcome that are clearly supported by the available orders and reasons.