Asia Television Limited v Oscar Video Club Pty Ltd (ACN 052 032 381)
[2001] FCA 1377
•21 SEPTEMBER 2001
FEDERAL COURT OF AUSTRALIA
Asia Television Limited v Oscar Video Club Pty Ltd (ACN 052 032 381)
[2001] FCA 1377ANTON PILLER ORDER - no proper factual basis established - application dismissed.
Television Broadcast Limited v Thi Phuong Nguyen (1988) 21 FCR 34 applied
ASIA TELEVISION LIMITED, ATV ENTERPRISES LIMITED AND CHINATOWN ENTERTAINMENT (AUSTRALIA) PTY LTD (ACN 073 003 675) v OSCAR VIDEO CLUB PTY LTD (ACN 052 032 381), LING SHEN TRADING AS WENHUA MANDARIN VIDEO AND DARRA VIDEO PTY LTD (ACN 082 985 528)
Q 203 OF 2001DRUMMOND J
21 SEPTEMBER 2001
BRISBANE
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
Q 203 OF 2001
BETWEEN:
ASIA TELEVISION LIMITED
FIRST APPLICANTATV ENTERPRISES LIMITED
SECOND APPLICANTCHINATOWN ENTERTAINMENT (AUSTRALIA) PTY LTD (ACN 073 003 675)
THIRD APPLICANTAND:
OSCAR VIDEO CLUB PTY LTD (ACN 052 032 381)
FIRST RESPONDENTLING SHEN TRADING AS WENHUA MANDARIN VIDEO
SECOND RESPONDENTDARRA VIDEO PTY LTD (ACN 082 985 528)
THIRD RESPONDENT
JUDGE:
DRUMMOND J
DATE OF ORDER:
21 SEPTEMBER 2001
WHERE MADE:
BRISBANE
THE COURT ORDERS THAT:
1.The application for an Anton Piller order be dismissed.
2.There be no order as to costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
Q 203 OF 2001
BETWEEN:
ASIA TELEVISION LIMITED
FIRST APPLICANTATV ENTERPRISES LIMITED
SECOND APPLICANTCHINATOWN ENTERTAINMENT (AUSTRALIA) PTY LTD (ACN 073 003 675)
THIRD APPLICANTAND:
OSCAR VIDEO CLUB PTY LTD (ACN 052 032 381)
FIRST RESPONDENTLING SHEN TRADING AS WENHUA MANDARIN VIDEO
SECOND RESPONDENTDARRA VIDEO PTY LTD (ACN 082 985 528)
THIRD RESPONDENT
JUDGE:
DRUMMOND J
DATE:
21 SEPTEMBER 2001
PLACE:
BRISBANE
REASONS FOR JUDGMENT
I have an application before me for an Anton Piller order. The application is, of course, brought ex parte. By their originating application, the three applicants claim damages for trade mark infringement, an account of profit derived from trade mark infringement and an order transferring the proceeding to the Victorian Registry of the Court. No permanent injunction or order for delivery up of infringing articles is sought. By way of interlocutory relief, an Anton Piller order is sought and an interlocutory injunction restraining the four respondents from renting or otherwise dealing with video cassettes bearing any one of five marks is also claimed.
The thrust of the case as revealed by the evidence before me is that the respondents, operators of four video stores in Brisbane, have since at least the beginning of this year been renting out videos marked with one or other of the marks of which it appears the first applicant is the registered proprietor.
The first applicant is a Hong Kong company, as is the second applicant. The third applicant is an Australian company. I have before me a licensing agreement between the second and third applicants whereby the second applicant grants to the third applicant “the Licensing Right in the programme for the license period in the Territory …”. The licensing right is described as “Exclusive Home Video Right Only”. The license period is from 19 April 2000 to 18 April 2003 and the program is defined as “Schedule A”. Schedule A is not, however, included in the material before me.
There is nothing, in short, in the evidence before me to indicate that this licensing agreement confers on the third applicant the right to distribute videos in Australia marked with any of the first applicant’s registered marks during the license period referred to therein. There is nothing indeed in the material before me to indicate that the second applicant has any rights to deal with the first applicant’s registered marks.
I observe that, on the face of the incomplete licensing agreement before me, there is nothing to indicate that the right granted to the third applicant in respect of home videos, if it indeed is a right in respect of the distribution of videos marked with the first applicant’s mark, is an exclusive right; that is, exclusive to the third applicant in Australia to the exclusion of any other organisation in Australia. The point is not without significance given that the possibility is open on the evidence before me that the four respondents may have obtained the videos, undoubtedly marked with the first applicant’s marks which they have been renting out, from a lawful source. That that is not a fanciful possibility is suggested by the conduct of each of the four respondents in continuing to deal perfectly openly with videos marked with the first applicant’s marks even after the action the third applicant took against them in early July 2001, to which I later refer.
In short, the absence of any evidence to show that either the second or third applicants have any rights with respect to the distribution in Australia of videos marked with the first applicant’s marks, by itself and also when coupled with the possibility left open by the evidence that the four respondents may have obtained from a lawful source the right to distribute the videos marked with the first applicant’s marks anyway, means that it is not possible for the applicants to show that they have “an extremely strong prima facie case” of trade mark infringement. That is the first requirement for an Anton Piller order referred to by Lee J in Television Broadcast Limited v Thi Phuong Nguyen (1988) 21 FCR 34 at 38.
The second requirement for an Anton Piller, according to what his Honour there says, is that the damage, potential or actual, must be very serious for the applicant. The absence of evidence showing that the second or third applicants have any rights at all with respect to the user in Australia of the first applicant’s marks means that those two applicants cannot satisfy this second element of Anton Piller relief either. The possibility that I have referred to which is left open on the evidence, that the four respondents may have obtained a lawful right to distribute videos marked with the first applicant’s registered marks, also means that the first applicant, which is undoubtedly the registered owner of the marks on the material before me, cannot show the requisite damage either.
The third element of Anton Piller relief and that which justifies the grant of this draconic remedy is that there must be:
“... clear evidence that the defendants have in their possession incriminating documents or things, and that there is a real possibility that they may destroy such material before any application inter parties can be made.”
There are two matters referred to there: the first is possession of incriminating items. In the context of this case that means possession of goods in circumstances that that will involve mark infringement. I have already explained why I think the evidence is deficient in not establishing that, but the second aspect of this element of Anton Piller relief is that there must be a real possibility of destruction of material if application for relief is made on notice.
In my opinion, it is simply not possible for the applicant to show that. The material before me indicated that the third applicant’s agents have, on a number of occasions prior to 5 July, visited each of the respondents’ four stores and have been able to obtain for rent videos on what appear to be normal commercial terms in normal commercial circumstances, which videos are marked in various ways with one or other of the first applicant’s trade marks.
The evidence shows that on 5 July, the solicitors for the third applicant - that being the only applicant from which they have obtained instructions, although the third applicant claims the authority of the first and second applicants to bring these proceedings - wrote to each of the respondents in strong terms demanding the return of the undertaking set out on the bottom of the letter by close of business on Wednesday, 11 July 2001, on pain of proceedings being instituted against the particular respondent if the undertaking was not proffered by that time. Undertakings to withdraw from rental any video cassettes marked with any of the first applicant’s marks and the handing up for destruction of those video cassettes is demanded in this letter.
Notwithstanding the strong demand made of each of the respondents by that letter of 5 July 2001, which the material before me indicates was received by each of those respondents, it would appear that soon after, the third applicant’s agent made a number of visits to each of the four respondents’ stores between 19 August and 21 September. On each occasion, she has had not the slightest difficulty in obtaining for rental on ordinary commercial terms in ordinary commercial circumstances from each of the respondents videos marked with one or other of the first applicant’s marks.
The length of time over which each of the respondents has been dealing in videos marked with the first applicant’s marks and particularly the length of time and the quite open circumstances in which they continue to deal in goods so marked after receipt of the letter of demand of 5 July 2001 negates, in my opinion, the proposition that there is any significant risk that if proceedings are commenced on notice against any of those four applicants there is a risk that one or other of them will destroy material evidence, ie, marked videos.
In this context counsel drew my attention to par 48 and following of Ms Lin’s affidavit referring to recording her visit to Darra Video, the third respondent, on 9 September. That provides no support at all for the proposition that there is some evidence against that one respondent of a risk of destruction if proceedings on notice for trade mark infringement are commenced against it. What happened on that occasion is that the operator of the third respondent’s store, when asked for an ATV, ie, a video marked with the first applicant’s marks, being one of those videos listed in the third applicant’s catalogue, the person operating the store said, in effect, that while they had them in stock there were none presently available for rental because they were all rented out. The response of the third applicant’s agent was then to ask for some older videos marked with the first applicant’s mark and without any hesitation the operator of the third respondent’s store produced such a video and rented it out to the third applicant’s agent without the slightest demur, qualification or hesitation. That is no evidence at all, in my opinion, that the third respondent is likely to destroy marked videos if proceedings are brought on notice.
For these reasons I am not prepared to give the applicants the benefit of the draconic remedy of Anton Piller relief which carries with it such a powerful tactical advantage in litigation.
The application for an Anton Piller order is therefore dismissed. There will be no order as to costs.
I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Drummond. Associate:
Dated: 21 September 2001
Counsel for the Applicant: L Ma Solicitor for the Applicant: Davellin Lawyers Date of Hearing: 21 September 2001 Date of Judgment: 21 September 2001
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