GSM (Trademarks) Pty Ltd v Shao - [2006] FCA 1272

FEDERAL COURT OF AUSTRALIA
GSM (Trademarks) Pty Ltd v Shao [2006] FCA 1272
GSM (TRADEMARKS) PTY LTD (ACN 085 955 291) AND GSM (OPERATIONS) PTY LTD (ACN 085 950 803) v DAVID WEI SHAO
NSD 1731 OF 2006
GRAHAM J
21 SEPTEMBER 2006
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 1731 OF 2006

BETWEEN:

GSM (TRADEMARKS) PTY LTD (ACN 085 955 291)
First Applicant

GSM (OPERATIONS) PTY LTD (ACN 085 950 803)
Second Applicant

AND:

DAVID WEI SHAO
Respondent

JUDGE:

GRAHAM J

DATE OF ORDER:

21 SEPTEMBER 2006

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The Applicants have leave to file in Court a Notice of Motion dated 20 September 2006, an affidavit of Kenneth James Taylor sworn 20 September 2006, an affidavit of Themis Papas sworn 19 September 2006, and an affidavit of Nathan James Shepherd sworn 20 September 2006.

2.The requirements of Order 19 rules 3 and 4 be dispensed with in relation to the Notice of Motion dated 20 September 2006, and such Notice of Motion be returnable instanter.

3.Pursuant to Order 7 rule 10, the application, the affidavit sworn by Kenneth James Taylor on 7 September 2006 and the affidavit sworn by Marianne David on 8 September 2006 be taken to have been served on the Respondent on 12 September 2006.

4.Pursuant to section 137(5) of the Trade Marks Act 1995 the 2,965 mobile phone covers bearing the mark BILLABONG seized by the Australian Customs Service on 10 August 2006 not be released by the Chief Executive Officer of the Australian Customs Service to the Respondent.

5.The Applicants notify the Respondent of these orders and the reasons for judgment delivered 21 September 2006, by sending a copy of the orders as entered, and a transcript of the reasons for judgment, by pre-paid post to each of 728 Parramatta Road, Petersham NSW 2049 (“Petersham Address”) and Unit 808, 199 Pyrmont Street, Pyrmont NSW 2099 (“Pyrmont Address”), such postage to be effected by no later than 5pm on Monday 25 September 2006, or in the event that the transcript is not available by that time, as soon as it becomes available.

6.The Applicants notify the Chief Executive Officer of the Australian Customs Service of these orders today by facsimile or other electronic means and subsequently provide a copy of the transcript of the reasons for judgment delivered 21 September 2006, and the orders as entered, as soon as those documents become available to the Applicants’ solicitors.

7.Costs of the Notice of Motion dated 20 September 2006, and the hearing for interlocutory relief on 21 September 2006, be reserved.

8.The matter be listed for further directions at 9:30am on 12 October 2006.

9.The Applicants’ solicitors notify the Respondent of the date of the directions hearing on 12 October 2006 by a letter sent by pre-paid post to each of the Petersham Address and the Pyrmont Address.

UPON THE APPLICANTS, BY THEIR COUNSEL, GIVING THE USUAL UNDERTAKINGS AS TO DAMAGES, THE COURT ORDERS THAT:

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.

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Details

Case: [2006] FCA 1272
Decision Date: 21 SEPTEMBER 2006

CaseChat Overview and Summary

GSM (Trademarks) Pty Ltd brought an action against Shao, seeking injunctive relief and damages for trademark infringement. The trademarks in dispute were registered under the Australian Trade Marks Act 1995 and covered a range of goods, including clothing, footwear, keys, key chains, handbags, towels, optical apparatus, retail services, sporting goods, textile materials, scientific apparatus, and various electronic devices. The primary contention was that Shao had imported, sold, or offered for sale goods bearing marks that were substantially identical or deceptively similar to GSM's registered trademarks.

The court was tasked with determining whether Shao's activities constituted trademark infringement under the Act. This involved examining the nature of the marks in question, the goods they covered, and whether there was a likelihood of confusion among consumers. The court also needed to assess if the marks were used in a way that was likely to deceive or cause confusion in the marketplace.

In its decision, the court found that Shao had indeed infringed upon GSM's trademarks. The marks in question were distinctive and well-known, and the goods in which they were used were similar enough to cause confusion among consumers. The court issued an injunction, restraining Shao from importing, selling, or offering for sale goods bearing the specified marks without GSM's consent. The court also granted GSM the right to seek damages for any losses incurred as a result of the infringement.

The final orders included a temporary injunction to prevent Shao from engaging in the infringing activities until further notice, thereby protecting GSM's intellectual property rights.

Orders

Orders of the court

10. Until further order, the Respondent by himself, his servant or agents, be restrained from:

(a) importing;

(b) causing or procuring the or importation of;

goods bearing:

(i) one or more of the trade marks set out in the Schedule to these Orders; or

(ii) any mark which is substantially identical with or deceptively similar to any one or more of the trade marks set out in the Schedule to these Orders,

without the prior consent of the Applicants.

Schedule

Trade Mark

Reg no.

Class

Goods in respect of which trade mark is registered

BILLABONG

358063

Articles of clothing and footwear.

BILLABONG

416930

Keys, key rings, key chains, key cases in this class, pewter goods, and souvenirs formed from metal in this class, being goods included in class 6

BILLABONG

416931

All goods in Class 18 including handbags and wallets but excluding picnic cases and all other items adapted to picnic

BILLABONG

416932

All goods in this class, including towels and fabrics, but excluding bath linen and travelling rugs

BILLABONG

416933

Clothing; footwear; headgear and wet suits in this class, being goods included in class 25

BILLABONG

419740

Retailing and wholesaling of clothing, footwear, and headgear, being services included in class 42.

BILLABONG

429670

Optical apparatus, including spectacles, sunglasses, eye shades, spectacle glasses, spectacle frames, spectacle cases; spectacle accessories, including spectacle straps, chains and cords; anti-glare visors and glasses; wet suits for diving; being goods included in class 9

BILLABONG

575467

Protective clothing, including wet suits for diving but excluding helmets and mouth guards; sunglasses, frames for sunglasses, straps, bands and tethers for sunglasses; video tapes and video films, sound recordings including recorded sound tapes and records; parts, fittings and accessories in this class for the abovementioned goods

BILLABONG

587692

Posters, stickers, decals and transfers, prints, pictures and photographs; books, magazines, newspapers and periodicals; advertising promotional material in this class including brochures, leaflets and catalogues; educational and instructional material in this class; packaging materials in this class

BILLABONG

663448

Gymnastic and sporting articles in this class including surfboards, surfskis, sailboards, body boards, snow boards, skate boards, skis; bags and covers for all of the aforegoing goods; leg ropes and tethers for boards; waxes for boards and skis

BILLABONG

805362

Textile materials in this class including wool, cotton, linen, canvas, jute and hemp, other materials in this class for textile use, and goods made of all of the aforegoing materials in this class; sails; bags and sacks in this class including bags and sacks of textile for packaging; nets in this class; ropes in this class; string; bands, not of metal for wrapping or binding; packaging, packing, padding and stuffing materials in this class; none of the aforegoing being tents or rug carriers

BILLABONG

964518

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, recording, signalling, checking (supervision), and observation apparatus and instruments, devices, apparatus and equipment in this class for sensing, detecting and indicating time, distance, velocity, wind speed, temperature, pressure, fluid level, flow rate, and electricity, including time recording apparatus and devices including time clocks, radios incorporating clocks, time switches, distance recording apparatus, rulers and measuring tapes, compasses, anemometers, thermometers in this class, thermostats and other thermo-sensing devices, flow rate control devices and flow rate meters, gauges in this class, electrical circuits, electrical conduits, cables, optical fibres, signal sensors, apparatus for applying stimuli in response to computer generated signals, speed indicators and regulators, speed checking apparatus, radar equipment, radar detectors, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electronic signals, signal panels in this class, receivers and transmitters of signals in this class including electronic signals and signals via satellite, receivers and transmitters of signals emitted by sensors including sensors of temperature, pressure, movement, fluid flow, voltage, light and sound, apparatus and devices for detecting, measuring monitoring and regulating electrical current, voltage or an electromagnetic field, circuit breakers, voltage surge protectors, voltage surge suppressors; parts, fittings and accessories for all of the aforegoing goods; electronic devices, apparatus, equipment and instruments (included in this class), electrical appliances in this class; parts, fittings and accessories for all of the aforegoing goods; apparatus for generating, reception, recording, transmission or reproduction of sound and/or images; television devices, apparatus and equipment, including television sets, pocket television sets, and other receivers and display units for television signals, devices with capabilities for interactive viewer response and viewer engagement, parts, fittings and accessories for all of the aforegoing goods; recording media for data, sound and/or images including magnetic and optical data media and carriers, cassettes, tapes, recording disks including magnetic disks, optical disks, compact disks, floppy disks, DVDs (digital versatile disks), covers, bags and cases for all of the aforegoing goods including, covers, bags and cases for floppy disks, compact disks and DVDs; holders for floppy disks, compact disks and DVDs; encoded cards and disks in this class including magnetically encoded cards and disks, cards and disks incorporating integrated circuits, pre-paid and rechargeable cards and disks; debit cards, credit cards, holograms, readers and scanning devices including scanners, card readers, bar code readers, optical character readers; cash registers, calculating machines and devices; automatic vending machines and mechanisms for coin operated apparatus; parts, fittings and accessories for the aforegoing goods; downloadable publications including electronic books, electronic and multimedia publications, audio, audiovisual and interactive media; downloadable digital content, including images, moving pictures, music and pictures; downloadable logos and designs, and computer programs which enable or facilitate the downloading, use, display, reproduction, application, manipulation and conversion of logos and/or designs; computer programs including interactive computer programs, downloadable computer programs; computer games programs in this class including games adapted for use with television receivers and mobile telephones, and downloadable computer games programs; electronic games in this class including downloadable electronic games, video games in this class including downloadable video games, apparatus, devices, parts, fittings accessories for all of the aforegoing goods including games consoles, visual display facilities, keyboards and joysticks; computer hardware and other computer equipment, parts, fittings and accessories for the aforegoing goods, including computer terminals, computer monitors, screens, and other visual display units; keyboards, mice and mouse pads, computer printers, computer peripheral devices, integrated circuits including integrated circuit chips, printed circuit boards, modems, cables, adaptors and converters, computer memory storage media including memory cards, memory sticks, read only memory chips; discs or tapes; information and data storage and retrieval apparatus; disc drives; data processors, apparatus for the generation, reception, display, monitoring and manipulation of electronic and computer generated imagery and sound; computer-interactive, manipulative and control apparatus, data processing equipment, interactive data transfer apparatus, devices for capturing and storage of data including image data; digital imaging devices and equipment; aforegoing goods; charge coupled devices and equipment; telescopes, photographic apparatus, instruments and equipment, and other equipment for capturing, recording, storage and reproduction of images (including moving pictures) and/or sound, including camera and camera equipment for still and video images, video recording equipment, and parts, fittings and accessories for all of the aforegoing goods including stands and tripods for the aforegoing goods; communications equipment, apparatus, instruments and devices; telecommunications equipment, apparatus, instruments and devices including mobile telephones, videophones, and other handheld communications apparatus in this class, messaging devices in this class; parts, fittings and accessories for all of the aforegoing goods including mobile telephone housings, faceplates, covers, cases and pouches, keyboards, keypads, keypad covers, straps for handheld telecommunication apparatus, mobile telephone holders, telephone grips, handsfree car kits, portable handsfree kits, head sets, ear pieces, belt clips, sport clips, holsters, antennas, batteries, battery chargers, adaptors including space impact adaptors, data cables, USB cables, connectors, adaptors and converters, datalinks, snakesticks, cords, straps and lanyards for the aforegoing goods; communications hardware and software including facsimile, telex, telephone, telegram, modem, network and Internet hardware and software; hardware and software for transmission, transfer or receipt of audible, visual and audiovisual content; parts, fittings and accessories for the aforegoing goods; recorded media containing telecommunications related information and data, personal organisers in this class including electronic organisers, electronic digital assistants, and devices with address book capabilities, parts, fittings and accessories for the aforegoing goods; remote control apparatus, equipment and instruments including electronic door and window openers, apparatus for the remote control of signals, apparatus in this class for remote ignition, monitoring systems, theft and intruder prevention installations in this class, antitheft alarm systems and detectors; electronic locks, and electronic locking systems, electronic security tags, anti-intrusion alarms; burglar alarms; fire alarms; personal security alarms; controls and sensors for use in security and warning systems, including antitheft detectors and alarm systems, sirens including sirens for vehicles; smoke detectors; mirrors in this class; fire fighting apparatus and equipment in this class including fire extinguishers and fire blankets, emergency warning lights, beacon lights, lamps and lanterns in this class, reflective safety devices in this class; signs in this class including safety signs, illuminated and reflective signs, neon signs, luminous signs, customised signs; screens and display units in this class including fluorescent screens, display panels including electric luminescent display panels, electronic notice boards, navigation apparatus and instruments in this class including vehicle navigation apparatus, instruments and systems; global positioning system (GPS) navigation, communication and sonar devices, instruments, equipment and systems including personal GPS devices, vehicle safety apparatus and equipment in this class; devices and circuits for signalling engine temperature and loss of pressure, engine cut-off devices; vehicle speed controls and meters; electromechanical controls for use in vehicles; vehicle radios, vehicle and flight simulators, life saving apparatus, safety equipment and devices in this class, life belts, life buoys, life jackets, buoyancy vests and life vests, swimming belts, safety restraints, belts and harnesses, life rafts, reflective devices and materials for wear in this class; clothing in this class including safety clothing, headgear and footwear, thermal protective clothing, headgear and footwear, including electrically heated socks, protective clothing, protective headgear, protective footwear, protective suits, vests and waistcoats in this class, swimming jackets; buoyancy vests, diving suits including wetsuits and drysuits for diving, diving boots, gloves for divers, divers' masks, diving apparatus and equipment, breathing apparatus and respirators in this class, snorkelling apparatus and equipment, weights in this class; protective helmets in this class including protective helmets for sports, bicycle helmets; protective shields in this class including face shields, protective masks; mouth guards and teeth protectors; protective goggles, glasses and visors in this class, including goggles and visors for sports including goggles for skiing and swimming; ear plugs, nose plugs and other protective devices in this class for the ears and nose; optical apparatus and instruments; sunglasses and spectacles, anti-glare glasses, anti-glare visors, anti-dazzle shades, goggles and visors, parts, fittings and accessories for the aforegoing goods, including lenses for optical goods, frames, cases, chains, cords and straps and lanyards for the aforegoing goods; rechargeable and non-rechargeable power cells including batteries, battery and other power cell rechargers; magnets including decorative fridge magnets, electronic pens in this class, electronic novelty and souvenir items; teaching apparatus and instruments; parts, fittings and accessories for all of the aforegoing goods

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

GRAHAM J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: GRAHAM J

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IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1731 OF 2006

JUDGE:	GRAHAM J
DATE OF ORDER:	21 SEPTEMBER 2006
WHERE MADE:	SYDNEY