FEDERAL COURT OF AUSTRALIA
Bitek Pty Ltd v IConnect Pty Ltd [2012] FCA 133
Citation: Bitek Pty Ltd v IConnect Pty Ltd [2012] FCA 133 Parties: BITEK PTY LTD ACN 084 308 207 v ICONNECT PTY LTD ACN 129 382 341 and ABEDEL-GUNE CHAKIELLI File number: VID 1249 of 2011 Judge: KENNY J Date of judgment: 24 February 2012 Catchwords: PRACTICE AND PROCEDURE – default judgment – respondent had not entered an appearance or filed a defence – respondent in default – judgment given. Legislation: Federal Court Rules 2011 (Cth)
Designs Act 2003 (Cth)Cases cited: Yeo v Damos Earthmoving Pty Ltd [2011] FCA 1129
Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433 Diesel SPA v Hwang [2005] FCA 1619
Wu v Avin Operations Pty Ltd [2006] FCA 36
HIT Entertainment Ltd v Lodin [2006] FCA 722
Macquarie Bank Ltd v Seagle [2005] 46 FCR 400 Macquarie Bank Ltd v Seagle [2008] FCA 1417
Speedo Holdings BV v Evans (No 2) [2011] FCA 1227
Universal City Studios LLLP v Hoey t/as DVD Kingdom (2006) 232 ALR 525
Norwich Pharmacal Co v Commissioners of Customs & Excise [1974] AC 133
Computershare Ltd v Perpetual Registrars Ltd [2000] 1 VR 626
Hooper v Kirella Pty Ltd (1999) 96 FCR 1Date of hearing: 24 February 2012 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 27 Counsel for the Applicant: Mr Gary Fitzgerald Solicitor for the Applicant: Norman Waterhouse Counsel for the Respondents: No appearance by the Respondents
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 1249 of 2011
BETWEEN: BITEK PTY LTD
ACN 084 308 207
ApplicantAND: ICONNECT PTY LTD
ACN 129 382 341
First RespondentABEDEL-GUNE CHAKIELLI
Second Respondent
JUDGE:
KENNY J
DATE OF ORDER:
24 FEBRUARY 2012
WHERE MADE:
MELBOURNE
THE COURT DECLARES THAT:
1.The respondents have each infringed Australian Design Registration Number 321171 (“the first Bitek design”) in breach of s 71 of the Designs Act 2003 (Cth) by their dealings in the product described as the “Bullnose Wall Plate AV Cable Management Home Theatre” or similar, referred to in sub-paragraph (a) of the particulars to paragraph 6 of the Statement of Claim dated 10 November 2011 (“the Statement of Claim”).
2.The respondents have each infringed Australian Design Registration Number 332193 (“the second Bitek design”) in breach of s 71 of the Designs Act 2003 (Cth) by their dealings in the product described as the “Reverse Bullnose Wall Plate AV Cable Management” or similar, referred to in sub-paragraph (b) of the particulars to paragraph 6 of the Statement of Claim.
AND THE COURT ORDERS THAT:
1.The respondents, whether by themselves, their servants, agents, successors or assigns, during the term of the registration of the first Bitek design, without the licence or authority of the owner of the first Bitek design, are restrained from making or offering to make a product which is identical to or substantially similar in overall impression to the first Bitek design, or importing into Australia, selling, offering…
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- AGLC
- Bitek Pty Ltd v IConnect Pty Ltd [2012] FCA 133
- Case
- [2012] FCA 133
- Decision Date
CaseChat Overview and Summary
The primary legal issue was whether Bitek Pty Ltd could obtain a default judgment against IConnect Pty Ltd under Rule 5.23(2) of the Federal Court Rules 2011, given that IConnect Pty Ltd had not responded to the proceedings. The court had to ascertain whether the applicant’s claim for relief was properly and discretely pleaded and if the applicant was entitled to the relief sought. The respondent's default was confirmed by evidence that it had been served and made aware of the proceeding and the application for default judgment.
The court found that the applicant's claim need not be proved by evidence, but rather must be properly pleaded on the face of the statement of claim. The court reviewed the statement of claim and concluded that each element of the relevant civil wrong was properly and discretely pleaded, satisfying the conditions for judgment in default. Additionally, the evidence submitted by Bitek Pty Ltd supported its claim of entitlement to the relief sought. Therefore, the court granted the application for default judgment in favour of Bitek Pty Ltd.
The court ordered that IConnect Pty Ltd was to be restrained from making or selling products identical or substantially similar to those registered by Bitek Pty Ltd. It also ordered damages to be assessed, along with interest, or alternatively, an account of IConnect Pty Ltd's profits made from the infringement. Furthermore, IConnect Pty Ltd was required to provide a verified list of documents and allow inspection of those documents related to the disputed products. The matter was listed for further applications or directions, and liberty to apply was reserved.
Orders
Orders of the court
1. The respondents, whether by themselves, their servants, agents, successors or assigns, during the term of the registration of the first Bitek design, without the licence or authority of the owner of the first Bitek design, are restrained from making or offering to make a product which is identical to or substantially similar in overall impression to the first Bitek design, or importing into Australia, selling, offering to sell, or using such a product for the purpose of any trade or business, or keeping such a product for any of the aforementioned purposes.
2. The respondents, whether by themselves, their servants, agents, successors or assigns, during the term of the registration of the second Bitek design, without the licence or authority of the owner of the second Bitek design, are restrained from making or offering to make a product which is identical to or substantially similar in overall impression to the second Bitek design, or importing into Australia, selling, offering to sell, or using such a product for the purpose of any trade or business, or keeping such a product for any of the aforementioned purposes.
3. The respondents pay the applicant damages to be assessed for infringement of the first Bitek design and the second Bitek design, together with interest, or, at the applicant’s election, an account be taken of the respondents’ profits made by the infringement of the first Bitek design and the second Bitek design, together with interest.
4. The respondents on or before 4:00 pm on 23 March 2012 give discovery to the applicant by a verified list of documents in accordance with rule 20.17 of the Federal Court Rules 2011 of any and all documents evidencing, relating to, concerning or referring to:
(i) the supply or possible supply to (including any importation by) either or both of the respondents of the products referred to in paragraph 6 of the Statement of Claim (“the products”);
(ii) the sale or supply (or possible sale or supply or any offer to sell or supply) or use by either or both of the respondents of the products;
(iii) profits made by either or both of the respondents in connection with any dealings in the products (such documents including, but not limited to, any profit and loss statement of either of the respondents).
5. The respondents provide inspection of such discovered documents on or before 4:00 pm on 30 March 2012 and, upon the applicant undertaking by its solicitor to pay the respondents’ reasonable costs of copying and forwarding such documents in the first instance, such inspection shall be provided by the respondents by forwarding copies of all such discovered documents (in electronic or hard copy form) to the solicitors for the applicant.
6. Should the applicant so elect, an enquiry be held as to the respondents’ profits made from the infringement of the first Bitek design and the second Bitek design.
7. The applicant file and serve any affidavits by 23 March 2012 as to its costs incurred to date in relation to the proceeding, and any minute of proposed orders concerning such costs.
8. The matter is listed for any applications or directions on a date to be fixed on or after 16 April 2012.
9. Liberty to apply is reserved.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
There was no appearance for the respondents today, although the evidence establishes that they were served and made aware of the proceeding and today’s application and hearing. CONSIDERATION Pursuant to Rule 5.23(2) of the Rules:(2) If a respondent is in default, an applicant may apply to the Court for: (a)an order that a step in the proceeding be taken within a specified time; or (b) if the claim against the respondent is for a debt or liquidated damages — an order giving judgment against the respondent for: (i) the debt or liquidated damages; and (ii)if appropriate, interest and costs in a sum fixed by the Court or to be taxed; or (c)if the proceeding was started by an originating application supported by a statement of claim, or if the Court has ordered that the proceeding continue on pleadings — an order giving judgment against the respondent for the relief claimed in the statement of claim to which the Court is satisfied that the applicant is entitled; or (d)an order giving judgment against the respondent for damages to be assessed, or any other order; or (e)an order mentioned in paragraph (b), (c) or (d) to take effect if the respondent does not take a step ordered by the Court in the proceeding in the time specified in the order. Rule 5.22 provides that:A party is in default if the party fails to: (a)do an act required to be done, or to do an act in the time required, by these Rules; or (b) comply with an order of the Court; or (c) attend a hearing in the proceeding; or (d) prosecute or defend the proceeding with due diligence. Rule 5.23 and Rule 5.22 are not materially different from the equivalent provision under the former Rules: see O 35A r 3(2)(c). The principles that were applicable under the earlier provision continue to apply: see, e.g., Yeo v Damos Earthmoving Pty Ltd [2011] FCA 1129 at [9] per Gordon J. According to these principles, the applicant’s claim need not be proved by evidence. Instead, on the face of the statement of claim, there must be a claim for the relief sought and the court must have jurisdiction to grant that relief. See Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433 at [3] per Heerey J; Diesel SPA v Hwang [2005] FCA 1619 at [2] per Tamberlin J; Wu v Avin Operations Pty Ltd [2006] FCA 36 at [57] per Kenny J; and HIT Entertainment Ltd v Lodin [2006] FCA 722 at [5]-[6] per Stone J. Before an applicant can be said to be “entitled” to the relief claimed in the statement of claim, the court needs to be satisfied that “each element of the relevant civil wrong involved is properly and discretely pleaded in the statement of claim”: see Macquarie Bank Ltd v Seagle [2005] 46 FCR 400 at 406 to 407 [24] per Conti J; Macquarie Bank Ltd v Seagle [2008] FCA 1417 at [20] per Jagot J; and Speedo Holdings BV v Evans (No 2) [2011] FCA 1227 at [24] per Flick J. Having read the statement of claim in this proceeding, I find that these conditions are satisfied. In addition, the evidence filed by the applicant in support of its application today further confirms that the applicant is entitled to the relief sought.