General Motors Corporation & Holden Ltd v Ur-Rehman
[2005] VSC 253
•20 July 2005
| IN THE SUPREME COURT OF VICTORIA | Not Restricted |
AT MELBOURNE
COMMERCIAL & EQUITY DIVISION
INTELLECTUAL PROPERTY LIST
No. 9309 of 2004
| GENERAL MOTORS CORPORATION AND HOLDEN LTD (ACN 006 893 232) | Plaintiffs |
| v | |
| ATTIQUE UR-REHMAN AND WASEEM ASIF | Defendants |
---
JUDGE: | HARPER J | |
WHERE HELD: | MELBOURNE | |
DATE OF HEARING: | 1 JULY 2005 | |
DATE OF JUDGMENT: | 20 JULY 2005 | |
CASE MAY BE CITED AS: | GENERAL MOTORS CORPORATION & ANOR v UR-REHMAN & ANOR | |
MEDIUM NEUTRAL CITATION: | [2005] VSC 253 | |
---
TRADE MARKS – Application for final judgment – Clothing using marks substantially identical with or deceptively similar to registered trade marks
---
APPEARANCES: | Counsel | Solicitors |
| For the Plaintiffs | Mr G. Fitzgerald | Phillips Ormonde & Fitzpatrick |
| The Defendants in person |
HIS HONOUR:
This proceeding was commenced by a generally endorsed writ which was issued on 26 November 2004. A statement of claim was filed on 21 January 2005. By it, the plaintiffs allege (among other things) that the first plaintiff is and at all material times was a registered owner under the Trade Marks Act 1995 of the Australian Registered Trade Marks listed in an attachment (Attachment A) to the statement of claim. The second plaintiff, it is alleged, is an authorised user of those trade marks, all of which have at all material times been, and remain, of full force and effect.
The plaintiffs complain that all but two of the trade marks listed in Attachment A have been infringed by the defendants. That infringement has resulted from the activities of the defendants, who (as the plaintiffs allege) have sold, offered to sell or otherwise dealt in clothing to which or in relation to which one or more signs which are substantially identical with or deceptively similar to one or more of the specified trade marks have been applied.
The plaintiffs assert that they have suffered and will continue to suffer loss and damage as a result of the impugned activities of the defendants unless the latter are appropriately restrained by order of this Court. They therefore seek (among other relief) declarations that the trade marks have been infringed and interlocutory and permanent injunctions restraining the defendants from using as a trade mark any sign that is substantially identical with or deceptively similar to any of the trade marks listed in Attachment A.
On 14 June 2005 the plaintiffs issued a summons for final judgment. They assert that, pursuant to O.22 of the Rules of the Supreme Court, they are entitled to such judgment, and to certain consequential relief, because the defendants have no defence to so much of their claim as concerns the allegations of trade mark infringement.
On the hearing of an application for final judgment, the Court may give such judgment for the plaintiff against the defendant on the part of the claim to which the application relates as is appropriate. On the other hand, if the defendant satisfies the Court that in respect of that part of the claim a question ought to be tried, or that there ought for some other reason to be a trial of that part of the claim, the application should to that extent be dismissed and the defendant should be given leave to defend.[1]
[1]Rule 22.06(1)
The application was heard by me on Friday 1 July 2005. It was supported by a large number of affidavits verifying the facts on which the relevant part of the claim was based. That sworn by Jane Francis Marshall on 10 June 2005 included a statement that in the belief of the deponent there is no defence to the plaintiffs' claims against the defendants "for infringement of trade mark as set out in the plaintiffs' statement of claim".
In these circumstances, the Court should give the plaintiffs judgment unless the defendants either show that the claim is one for which the plaintiffs cannot apply for judgment by virtue of r.22.02(2), or that the plaintiffs' proceedings are irregular, or unless the defendants by affidavit or otherwise satisfy the Court that in respect of the claim a question ought to be tried – or for some other reason the question should go to trial.[2] In other words, once the plaintiffs have, by affidavit made in accordance with the rules, established a good cause of action, the defendants have the burden of satisfying the Court that leave to defend should be given. The words "a question which ought to be tried" in paragraph (1)(b) of r.22.06 correspond to the words "a good defence to the action on the merits" of the former O.14 r.1(a); the change in language is not intended to establish a new and different test for leave to defend.[3]
[2]Williams' Civil Procedure – Victoria at para.[22.06.10]
[3]Williams op. cit para.[22.06.15]
It also remains the position that, "where there is a real case to be investigated in fact or law, leave to defend should be given … Whatever the language various courts have used, … the substance of the criterion to be applied is that after the matter involved has been explained to the judge there must be a real uncertainty without full argument or further investigation of the facts as to the plaintiffs' right to judgment."[4]
[4]Australian Can Co Pty Ltd v Levin & Co Pty Ltd [1947] VLR 332 at 333
The affidavit before me supports a number of conclusions of fact. First, the trade marks the subject of the application are owned by the first plaintiff, which has licensed the second plaintiff to use them: see the affidavits of, respectively, Roderick Anton Frank Saunders sworn on 23 November 2004 and of Therese Anne Ryan sworn 8 June 2005 and the exhibits to those affidavits. Secondly, the defendants traded in at least 55 items of clothing by selling them to agents of the plaintiffs: see the affidavits of Victoria Evans sworn on, respectively, 18 November 2004 and 1 June 2005; and the affidavit of Craig Raymond Douglas sworn on 22 November 2004. Then, on 29 November 2004 the plaintiffs – acting pursuant to Anton Piller orders made by me – found an seized some 751 items of clothing and 189 documents at premises with which the defendants are associated. The relevant facts are deposed to in the affidavits of, respectively, Mr Saunders and Gregory Morris Chambers each of which was sworn on 3 December 2004; and the reports of the supervising solicitors, Michael Sneddon and Kellech Nanette Smith. Thirdly, each defendant has admitted purchasing "purported Holden clothing": see the affidavit of the first defendant sworn 9 December 2004 and that of the second defendant sworn 13 December 2004. Fourthly, none of the clothing seized was genuine; while it purported to be that of the second plaintiff, and while the signs attached to them were either substantially identical, or deceptively similar, to trade marks owned by the first plaintiff, other indicia established that each item of the clothing was counterfeit: see the affidavit of Ms Marshall sworn on 10 June 2005. During the course of the application for summary judgment, I examined a number of the relevant items, as well as a number of pieces of genuine clothing. I was in each case satisfied that the allegedly counterfeit articles were indeed so, and that the articles put forward by the plaintiffs as being genuine not only met that description but differed from those said to be unauthorised copies.
It follows from the above that, on the affidavit material upon which they rely, the plaintiffs have established a prima facie case that the defendants had dealt in clothing bearing trade marks owned by the first plaintiff which the second plaintiff was authorised to use. By way of defence, the defendants have admitted their acquisition of "purported Holden clothing" and have put forward no admissible material by way of defence. By their respective affidavits in opposition to the summons for final judgment, they have simply put forward an unauthenticated document purporting to be evidence that a supplier of clothing based in Thailand forwarded certain authentic "Holden" garments to the defendants. Even if this document were properly authenticated, it would not prove that the defendants did not deal in counterfeit clothing.
In my opinion the plaintiffs are, for the reasons I have endeavoured to set out above, entitled to declarations and injunctions in the form sought by them in the summons of 14 June. I will discuss with the parties the particular form which the judgment should take.
---
0
0
0