General Motors Corporation v Ur-Rehman; Diesel SpA v Ur-Rehamn

[2004] VSC 499

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

No. 9301 of 2004

DIESEL SPA and DIESEL WHOLSEALE PTY LTD (ACN 066 175 219)	Plaintiffs
v
ATTIQUE UR-REHMAN and WASEEM ASIF	Defendants

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JUDGE:	HARPER J
WHERE HELD:	MELBOURNE
DATE OF HEARING:	26 NOVEMBER 2004
DATE OF RULING:	26 NOVEMBER 2004
CASE MAY BE CITED AS:	GENERAL MOTORS CORPORATION & ANOR v UR-REHMAN & ANOR; DIESEL SPA & ANOR v UR-REHMAN & ANOR
MEDIUM NEUTRAL CITATION:	[2004] VSC 499

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PRACTICE & PROCEDURE – Applications ex parte for Anton Piller orders – Alleged infringement of trade marks – Risk of disposal of counterfeit goods – Evidence of dealing and of admissions by the defendants – Applications granted.

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APPEARANCES:	Counsel	Solicitors
For General Motors Corporation and Holden Ltd	Mr G Fitzgerald	Phillips Ormonde & Fitzpatrick
For Diesel SPA and Diesel Wholesale Pty Ltd	Mr E Heerey	Middletons

HIS HONOUR: 

1. I am satisfied that each set of plaintiffs has made out a case which warrants the grant of an Anton Piller order in each instance.  I am conscious of the necessity for the court to be satisfied that there is a real risk that the defendants, if the orders are not granted, will destroy or dispose of the counterfeit, or allegedly counterfeit, articles so as to defeat the ends of justice.

1. In this case the satisfaction arises not from direct evidence, but from what I think is a justifiably drawn inference that the risk exists.  All the evidence which is presently before me indicates that in each case there has been a dealing with counterfeit articles.  In the case of the Holden articles there is direct evidence by way of admission from the defendants that they are aware that the fact that the goods with which they are dealing are counterfeit goods.  Being so aware, it is highly likely that the defendants would seek to destroy, or dispose of, counterfeit garments in their possession if they were informed of the fact that the proceedings had been instituted.

1. Such disposal or destruction would not necessarily defeat the ends of justice in the sense that the plaintiffs already have evidence which, if accepted, would establish the causes of actions upon which they rely.  On the other hand, the continued possession of the articles and their continued sale by the defendants would continue to erode the plaintiffs financial position, and the risk that that behaviour would continue is it seems to me very real. In any event, it seems to me that in the circumstances of the case the incentive to destroy, or remove, the evidence would be very strong.  In those circumstances it seems to me that in the case of General Motors and Holden there is a real risk that if the Anton Piller application is not granted, the defendants will destroy, or dispose of, the articles in question, and that that will seriously prejudice the position of the plaintiffs. 

1. There is a difference between the position of the plaintiffs in the General Motors Holden proceeding, or proposed proceeding, and the plaintiffs in the Diesel proceeding. In the former there is direct evidence, by way of admission, of knowledge in the defendants that they are trading in counterfeit goods.

1. I am prepared, however, to infer such knowledge in the Diesel proposed proceeding.  It seems to me that the modus operandi of the defendants, which is in evidence through the affidavit in particular of Miss Evans of 18 November 2004, gives rise to an inference that the defendants are knowingly trading in counterfeit goods not only of the proposed plaintiffs in the General Motors Holden proposed proceeding, but also in relation to the articles which the proposed plaintiffs in the proposed Diesel proceedings say are counterfeit garments. 

1. It seems to me in those circumstances that the conditions which must be established before a Anton Piller application is granted have been established, and I accordingly will make an Anton Piller order in each case, subject to discussion about the final form of those orders.

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