Disney Enterprises, Inc v Sondavid Pty Ltd - [2008] FCA 1394

FEDERAL COURT OF AUSTRALIA
Disney Enterprises, Inc v Sondavid Pty Ltd [2008] FCA 1394
INTELLECTUAL PROPERTY – trade marks – ex parte application for interlocutory relief – goods seized by Australian Customs Service – infringement proceedings – interlocutory order preventing release of the goods
Held: Interlocutory orders granted.
Trade Marks Act1995 (Cth) Customs Act 1901 (Cth)
Nokia Corporation v Yu [2008] FCA 1087
DISNEY ENTERPRISES, INC. and THE WALT DISNEY COMPANY (AUSTRALIA) PTY LIMITED (ACN 003 471 029) v SONDAVID PTY LTD (ACN 080 246 680) and AUSTIN JOHN WATSON
NSD1323/2008
JAGOT J
11 SEPTEMBER 2008
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD1323/2008

BETWEEN:

DISNEY ENTERPRISES, INC.
First Applicant

THE WALT DISNEY COMPANY (AUSTRALIA) PTY LIMITED (ACN 003 471 029)
Second Applicant

AND:

SONDAVID PTY LTD (ACN 080 246 680)
First Respondent

AUSTIN JOHN WATSON
Second Respondent

JUDGE:

JAGOT J

DATE OF ORDER:

11 SEPTEMBER 2008

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.On the applicants giving the usual undertaking as to damages, the Chief Executive Officer of Customs is restrained until further order from releasing any of the goods bearing the Disney Trade Marks or any mark which is substantially identical or deceptively similar to the Disney Trade Marks, which goods are the subject of and referred to in the Notification of Seizure to Objector dated 18 July 2008 sent to the first applicant marked with the Australian Customs Service reference number 2008/019868-01.
2.These orders be entered ex parte.
3.The costs of the applicants’ notice of motion filed 3 September 2008 are reserved.
4.Direct the applicants to notify the respondents of these orders and the date of the next directions hearing by sending a letter enclosing a copy of the orders as entered, by pre-paid registered post, to Sondavid Pty Ltd, Level 1, Plazza on the Boulevard, corner Elkhorn Ave and Surfers Paradise Boulevard, Surfers Paradise QLD 4217.
5.Direct the applicants to notify the Chief Executive Officer of the Australian Customs Service of these orders and provide a copy of the orders as entered by 18 September 2008.
6.List the proceedings for directions before Jagot J at 9.30am on 7 October 2008 and vacate the directions hearing on 23 September 2008.

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

NSD1323/2008

BETWEEN:

DISNEY ENTERPRISES, INC.
First Applicant

THE WALT DISNEY COMPANY (AUSTRALIA) PTY LIMITED (ACN 003 471 029)
Second Applicant

AND:

SONDAVID PTY LTD (ACN 080 246 680)
First Respondent

AUSTIN JOHN WATSON
Second Respondent

JUDGE:

JAGOT J

DATE:

11 SEPTEMBER 2008

PLACE:

SYDNEY

REASONS FOR JUDGMENT

By notice of motion filed on 3 September 2008, the applicants seek an order against the Chief Executive Officer of Customs (the Customs CEO) pursuant to s 137(5) of the Trade Marks Act1995 (Cth) (the Act). The order would restrain the Customs CEO until further order from releasing certain goods seized by the Australian…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Disney Enterprises, Inc v Sondavid Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2008] FCA 1394
Decision Date: 11 September 2008

CaseChat Overview and Summary

Disney Enterprises, Inc, an American entertainment company, sought an interlocutory injunction against Sondavid Pty Ltd, an Australian company, to prevent the release of goods bearing Disney trade marks which were in the custody of the Australian Customs Service. The dispute came before Jagot J in the Federal Court of Australia.

The central legal issue was whether the applicants had established a prima facie case sufficient to justify the granting of an interlocutory injunction. The applicants argued that they had demonstrated a serious question to be tried and that the balance of convenience lay in favour of the injunction. The respondents did not oppose the injunction, but argued that the applicants had not established a serious question to be tried.

Jagot J held that the applicants had made out a prima facie case. The judge found that there was a serious question to be tried concerning whether the respondents had infringed the applicants' trade marks and that the balance of convenience favoured the grant of the injunction. The judge noted that the release of the goods could cause irreparable harm to the applicants' reputation and goodwill, and that the respondents had not demonstrated any significant prejudice that would result from the injunction.

The court granted the interlocutory injunction, restraining the Chief Executive Officer of Customs from releasing the goods bearing the Disney trade marks. The court also ordered that the applicants provide notice of the orders to the respondents and the Chief Executive Officer of Customs, and listed the proceedings for a directions hearing. The costs of the notice of motion were reserved.

Orders

Orders of the court

1. On the applicants giving the usual undertaking as to damages, the Chief Executive Officer of Customs is restrained until further order from releasing any of the goods bearing the Disney Trade Marks or any mark which is substantially identical or deceptively similar to the Disney Trade Marks, which goods are the subject of and referred to in the Notification of Seizure to Objector dated 18 July 2008 sent to the first applicant marked with the Australian Customs Service reference number 2008/019868-01.

2. These orders be entered ex parte.

3. The costs of the applicants’ notice of motion filed 3 September 2008 are reserved.

4. Direct the applicants to notify the respondents of these orders and the date of the next directions hearing by sending a letter enclosing a copy of the orders as entered, by pre-paid registered post, to Sondavid Pty Ltd, Level 1, Plazza on the Boulevard, corner Elkhorn Ave and Surfers Paradise Boulevard, Surfers Paradise QLD 4217.

5. Direct the applicants to notify the Chief Executive Officer of the Australian Customs Service of these orders and provide a copy of the orders as entered by 18 September 2008.

6. List the proceedings for directions before Jagot J at 9.30am on 7 October 2008 and vacate the directions hearing on 23 September 2008.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

JAGOT J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: JAGOT J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD1323/2008

JUDGE:	JAGOT J
DATE OF ORDER:	11 SEPTEMBER 2008
WHERE MADE:	SYDNEY

JUDGE:	JAGOT J
DATE:	11 SEPTEMBER 2008
PLACE:	SYDNEY