Chanel Limited v Kim

[2008] FCA 477

FEDERAL COURT OF AUSTRALIA

Chanel Limited v Kim [2008] FCA 477

CHANEL LIMITED AND CHANEL AUSTRALIA PTY LIMITED ACN 000 012 153 v MIRA KIM
NSD 2084 OF 2007

SACKVILLE J
3 APRIL 2008
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 2084 OF 2007

BETWEEN:

CHANEL LIMITED
First Applicant

CHANEL AUSTRALIA PTY LIMITED ACN 000 012 153
Second Applicant

AND:

MIRA KIM
Respondent

JUDGE:	SACKVILLE J
DATE OF ORDER:	3 APRIL 2008
WHERE MADE:	SYDNEY

THE COURT:

1.Declares that the respondent has infringed Australian Registered Trademarks 122296, 174921, 463755 and 1012493 (together ‘the Chanel trademarks’).

2.Orders that the respondent, by herself, her servants and agents, be restrained from importing into Australia or distributing within Australia, without the authority of the applicants, goods that infringe any of the Chanel trademarks.

3.Orders that all goods currently in the possession of the Australian Customs Services pursuant to seizure reference number DGR 200708541/1kk N0039835 be forfeited to the Commonwealth.

4.Orders that the respondent pay the costs of the applicants.

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 2084 OF 2007

BETWEEN:

CHANEL LIMITED
First Applicant

CHANEL AUSTRALIA PTY LIMITED ACN 000 012 153
Second Applicant

AND:

MIRA KIM
Respondent

JUDGE:	SACKVILLE J
DATE:	3 APRIL 2008
PLACE:	SYDNEY

EX TEMPORE JUDGMENT

1. These proceedings arise out of the seizure by the Chief Executive Officer of the Australian Customs Service (‘CEO’) of a consignment of 100 scarves bearing the Chanel trademark or Chanel’s crossed Cs device mark. The consignment was seized pursuant to s 133 of the Trademarks Act 1995 (Cth) (‘Trademarks Act’), on the ground that the scarves had applied to them a sign that in the opinion of the CEO was substantially identical with or deceptively similar to a registered trademark.  In a judgment delivered on 20 December 2007 (Chanel Limited v Kim [2007] FCA 2076), I made orders that the CEO be restrained, until further order, from releasing the consignment of 100 scarves.

2. The proceedings were commenced by the applicants on 22 October 2007.  They seek declaratory relief in relation to the alleged infringement by the respondent of four of their registered trademarks (‘the Chanel trademarks’).  The applicants also seek injunctive and consequential relief. 

3. The applicants have filed a motion seeking default judgment against the respondent, pursuant to Federal Court Rules (‘FCR’), O 35A r 3(2)(c).  They do so on the ground that the proceedings were commenced by an application supported by a statement of claim and the respondent is in default of directions made by the court.  The respondent has neither filed an appearance, nor complied with a direction to file a defence.

4. Order 35A r 3(2)(c) empowers the court to give judgment against the respondent in these circumstances for the relief that:

   ‘(i) The applicant appears entitled to on the statement of claim; and

   (ii) The court is satisfied it has power to grant’.

5. The evidence establishes that the respondent has been served both with the initiating process and with the motion and supporting affidavits that underlie the present application.  The evidence also establishes that the applicants hold the Chanel trademarks.  I am satisfied by the evidence that has been read on behalf of the applicants by Mr Bova, who appears on their behalf, that the respondent infringed the Chanel trademarks by importing the scarves without the authority of the applicants.  In these circumstances, it is appropriate to make a declaration that the respondent has infringed the Chanel trademarks.

6. The applicants seek an injunction restraining the respondent by herself, her servants and agents from infringing each of the Chanel trademarks.  While I think that the applicants are entitled to an injunction, in my opinion it is preferable for any injunction to be framed in more precise terms than the applicant suggests.  Mr Bova did not resist that proposition.  Accordingly, the order I propose to make is that the respondent, by herself, her servants and agents, be restrained from importing or distributing, without the authority of the applicants, goods that infringe any of the Chanel trademarks.

7. The applicants seek an order that all goods currently in the possession of the Australian Customs Service pursuant to seizure reference number DGR 200708541/1kk N0039835 be forfeited to the Commonwealth.  It is appropriate that such an order be made. 

8. I note that although the application seeks damages and in the alternative an account of profits, those forms of relief are not pursued by the applicants.

9. Finally, the applicants seek an order that the respondent pay the costs of the proceedings.  It is also appropriate that that order be made. 

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

Associate:

Dated:        3 April 2008

Counsel for the Applicant:	Mr C N Bova
Solicitor for the Applicant:	Shelston IP Lawyers
Solicitor for the Respondent:	The Respondent did not appear
Date of Hearing:	3 April 2008
Date of Judgment:	3 April 2008