Asian Investments Corporation Ltd v Finnie

[2005] FCA 1484

FEDERAL COURT OF AUSTRALIA

Asian Investments Corporation Ltd v Finnie [2005] FCA 1484

Federal Court Rules Order 32 sub-rule 2(1)(c)

ASIAN INVESTMENTS CORPORATION LTD v JUDITH ANNE FINNIE & ORS
NSD 1508 OF 2003

HELY J
4 JULY 2005
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1508 OF 2003

BETWEEN:

ASIAN INVESTMENTS CORPORATION LTD
(ACN 009 562 092)
APPLICANT

AND:

JUDITH ANNE FINNIE
FIRST RESPONDENT

STUART STEVEN CARRINGTON
SECOND RESPONDENT

STUART RICHARD FINNIE
THIRD RESPONDENT

SYDNEY THOMAS FINNIE
FOURTH RESPONDENT

JUDITH ANNE FINNIE
CROSS CLAIMANT

ASIAN INVESTMENTS CORPORATION LTD
(ACN 009 562 092)
CROSS RESPONDENT

JUDGE:

HELY J

DATE OF ORDER:

4 JULY 2005

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.The respondents, whether themselves, their servants, agents or otherwise, be restrained from selling, advertising or distributing products under or by reference to the applicant’s trade mark, Action Balm.

2.The cross claim be dismissed.

3.The respondents pay the applicant’s costs of the proceedings insofar as those costs relate to the issue of infringement of trade mark and the cross claim.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1508 OF 2003

BETWEEN:

ASIAN INVESTMENTS CORPORATION LTD
(ACN 009 562 092)
APPLICANT

AND:

JUDITH ANNE FINNIE
FIRST RESPONDENT

STUART STEVEN CARRINGTON
SECOND RESPONDENT

STUART RICHARD FINNIE
THIRD RESPONDENT

SYDNEY THOMAS FINNIE
FOURTH RESPONDENT

JUDITH ANNE FINNIE
CROSS CLAIMANT

ASIAN INVESTMENTS CORPORATION LTD
(ACN 009 562 092)
CROSS RESPONDENT

JUDGE:	HELY J
DATE:	4 JULY 2005
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. When this matter was called on for hearing this morning, neither the first respondent nor the second and third respondents appeared.  The fourth respondent, Mr Sydney Finnie, did appear and he informed me that the second and third respondents are one and the same person.  Eventually, an appearance was announced by Mr Dennis, solicitor, on behalf of the applicant, and he sought to proceed with the application notwithstanding the failure of the first, second and third respondents to appear.

2. Mr Sydney Finnie, the fourth respondent, handed me a document dated 3 July 2005, which I marked as an exhibit.  This document indicated that the members of the Finnie family, if I may use that description, were withdrawing from this action and were not proceeding with their cross-claim.  The document explained the reasons why the members of the Finnie family were taking that course, but I am not concerned with that explanation.  All that I am concerned with is the course of action which the respondents have chartered.

3. I was informed by Mr Dennis that the only case which the applicant now seeks to make is a claim based upon infringement of trade mark.  The only relief which the applicant claims is an order that the respondents, whether themselves, their servants, agents or otherwise, be restrained from selling, advertising or distributing products under or by reference to the applicant’s trade mark, Action Balm.

4. There is evidence that as from 26 July 2001 the applicant was registered as the owner of Australian Registered Trade Mark No. 883645, which is a composite mark consisting of the words ‘Action Balm’ in association with a zig-zag stripe in rectangle form.  The respondents admit by par 11 of their defence that the applicant is recorded in the Trade Marks Register kept and maintained by the Registrar of Trade Marks as the owner of Australian Registered Trade Mark No. 883645 for the composite mark ‘ACTION BALM with ZIG-ZAG STRIPE IN RECTANGLE’ with effect from 26 July 2001.

5. There is some evidence of infringement of that mark, and in the circumstances I consider that the applicant has established an entitlement to an injunction to protect the registered mark. 

6. The document handed up by Mr Sydney Finnie and the Finnie family’s defence and cross-claim to these proceedings, make it plain that the entitlement of the applicant to registration of that mark is a matter which the respondents would have wished to put in issue.  However, in default of their appearance, and in the light of their decision not to prosecute the cross-claim, that is a matter which simply has to be put to one side.

7. I therefore order that the respondents, whether themselves, their servants, agents or otherwise, be restrained from selling, advertising or distributing products under or by reference to the applicant's trade mark, Action Balm.

8. Mr Dennis seeks an order that the cross-claim be dismissed.  Order 32 sub-rule 2(1)(c) of the Federal Court Rules would seem to justify an order to that effect.  I therefore dismiss the cross-claim by reason of the cross-claimant’s non-appearance and failure to prosecute the cross-claim.  The cross-claim having been dismissed, the cross-claimant should pay the cross-respondent’s costs of the cross-claim. 

9. I further order that the respondents pay the applicant’s costs of the proceedings insofar as those costs relate to the issue of infringement of trade mark.

I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Hely.

Associate:

Dated:             19 October 2005

Solicitor for the Applicant:

Dennis & Company

The First Respondent did not appear

The Second Respondent did not appear

The Third Respondent did not appear

The Fourth Respondent appeared in person

Date of Hearing:

4 July 2005

Date of Judgment:

4 July 2005