GSM (Trademarks) Pty Ltd v Shao (No 2)

[2006] FCA 1393

FEDERAL COURT OF AUSTRALIA

GSM (Trademarks) Pty Ltd v Shao (No 2) [2006] FCA 1393

TRADE MARKS – whether the privilege against self-incrimination justifies refusal of Norwich Pharmacal relief

Federal Court of Australia Act 1976 (Cth) s 50
Trade Marks Act 1995 (Cth) s 148

Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133
Ross v Internet Wines Pty Ltd (2004) 60 NSWLR 436

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
12 OCTOBER 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:	12 OCTOBER 2006
WHERE MADE:	SYDNEY

THE COURT:

1.Grants leave to the respondent to file in Court a Notice of Appearance signed by the respondent and dated 12 September 2006.

2.Orders that the publication of exhibit A4 (as retendered on the hearing commencing at 5:00 pm on 12 October 2006) be forbidden without the leave of the Court or a Judge in accordance with s 50 of the Federal Court of Australia Act 1976 (Cth).

3.Notes the applicants have personally served the respondent with copies of the following documents:

(a)   Application filed 8 September 2006; 

(b)   Sealed copy of the orders made on 21 September 2006;

(c)   Reasons for judgment dated 21 September 2006;

(d)   Notice of Motion filed in Court on 12 October 2006;

(e)   The applicants’ outline of submissions on default judgment application;

(f)    The following affidavits and exhibits:

(i)Kenneth James Taylor sworn 7 September 2006;

(ii)Kenneth James Taylor sworn 20 September 2006;

(iii)Exhibit KJT – 1 to Kenneth James Taylor sworn 20 September 2006;

(iv)Marianne David sworn 8 September 2006;

(v)Marianne David sworn 11 October 2006;

(vi)Exhibit MD – 1 to Marianne David Sworn 11 October 2006;

(vii)Themis Papas sworn 19 September 2006;

(viii)Exhibit TP – 1 to Themis Papas sworn 19 September 2006;

(ix)Themis Papas sworn 11 October 2006;

(x)Nathan James Shepherd sworn 20 September 2006;

(xi)Lesley Ellen Skipp sworn 11 October 2006;

4.Directs the respondent file and serve any affidavits he wishes to rely upon in the proceedings generally on or before 13 November 2006.

5.Directs the applicants file and serve any affidavits in reply on or before 27 November 2006.

6.Directs that any motion seeking discovery by the respondent shall be filed and served on or before 19 October 2006 and made returnable for a date to be appointed by my associate.

7.Orders that the costs of the proceedings on 12 October 2006 be reserved.

8.Orders that if the respondent is in default of any of the orders or direction of the Court for more than 48 hours, the applicants have liberty to restore the Notice of Motion filed in Court on 12 October 2006 to the list without further notice to the respondent.

9.Grants liberty to apply on 2 days’ notice.

10.Orders that the matter be fixed for a final hearing on Wednesday 29 November 2006 at 10:15 am.

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 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:	12 OCTOBER 2006
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. What is presently before the Court is a Notice of Motion filed in Court this morning, made returnable instanter, in which a number of prayers for final relief were recorded which it was intended by the applicants to seek in the event that the respondent failed to appear at the appointed time for the directions hearing at 9:30 am today.  As it transpires, I granted leave to the applicants to file the Notice of Motion in Court, returnable instanter, and was in the course of considering the motion and the evidence in support of it when, at 10:21 am, Mr Shao (‘the Respondent’) arrived in Court.

2. I gave certain directions at that time and indicated that I would be prepared to sit at 5:00 pm today with a view to deciding a prayer for relief contained in the notice of motion as paragraph 9, requiring the respondent to file an affidavit disclosing certain material in relation to other persons and in relation to manufacture and importation and other matters associated with goods said to be goods which bear the applicant’s trade mark ‘Billabong’ in infringement of the applicant’s rights.  When the matter came before the Court at 5 pm, the proposed order requiring an affidavit to be filed and served by the respondent was modified and short minutes of order were handed up, which set out the modified form of order sought.

3. The order sought was set out in paragraph 5 of the short minutes of order under the heading ‘Norwich Pharmacal Relief’, which I understand to be a reference to the decision of the House of Lords in Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133 (‘Norwich Pharmacal’). The formulation of the order was the subject of some discussion between the Bench and counsel for the applicants, who indicated that they would seek an amended form of relief which was likely to be more readily understood by the respondent as a litigant in person.

4. The order that was ultimately sought was as follows: 

   ‘(5)That the respondent, on or before 19 October 2006, file and serve an affidavit:

   (a)setting out the names and all known current contact details, including addresses, telephone numbers, fax numbers and email addresses and domain names of all persons and entities known by him to have been in any way involved at any time in the manufacture, importation into Australia, sale, offer for sale, purchase, order, supply, distribution, promotion or provision at any time of any of the following goods bearing the BILLABONG mark:

   (i)mobile telephones;

   (ii)mobile telephone covers;

   (iii)mobile telephone accessories;

   (iv)mobile telephone faceplates; or

   (v)any other similar goods;

   (collectively the “Goods in Question”);

   (b)in relation to each such person or entity, including the Respondent, a statement setting out what is known of their involvement in such activities, including places, dates, purchase prices, sale prices and descriptions and numbers of units;

   (c)to the extent not covered in (a) or (b), setting out details of the manufacture of the Goods in Question; and

   (d)attaching copies of all documents in his possession, custody, power or control which evidence such matters, and confirming that the information and documents so provided constitute a compete (sic) and accurate disclosure of such matters or things,

   and verifying that all such information is complete.’

5. On 21 September 2006 I delivered reasons for judgment in respect of an application for interlocutory injunctive relief which was then before the Court, which resulted in orders being made restraining the respondent by himself, his servants or agents until further order from doing certain things.  In those reasons for judgment I have set out a number of the background facts which have been supplemented by some of the additional affidavits which have been read on the current application. 

6. The affidavits relied upon by the applicants are those of Kenneth James Taylor, sworn 7 September 2006, Kenneth James Taylor, sworn 20 September 2006 (paragraphs 1, 2, 3, 9 and 15 being read), affidavit of Themis Papas, sworn 19 September 2006 (paragraphs 1 to 3 inclusive, 5 to 8 inclusive, 11, 12 (the first sentence), 14 and 18 being read), affidavit of Nathan James Shepherd, sworn 20 September 2006 (paragraphs 1 to 5 being read), affidavit of Themis Papas, sworn 11 October 2006 (paragraphs 1 to 13 being read), affidavit of Lesley Ellen Skipp, sworn 11 October 2006 (paragraphs 1 to 5 inclusive and 7 to 13 inclusive being read).

7. The exhibits before me included exhibit KJT-1 to the affidavit of Kenneth James Taylor sworn 20 September 2006, exhibit TP-1 to the affidavit of Themis Papas sworn 19 September 2006 and exhibit LES-1 to the affidavit of Lesley Ellen Skipp sworn 11 October 2006, in respect of which I made an order forbidding publication in accordance with s 50 of the Federal Court of Australia Act 1976 (Cth), subject to certain terms and conditions.

8. The respondent indicated that he did not wish to call any evidence on the current application.

9. Norwich Pharmacal was a case against the Commissioners of Customs and Excise who were, in effect, innocent bystanders who were able to provide information about people involved in the importation of goods into the United Kingdom which involved patent infringements.  Relief was granted against the Commissioners compelling them to, in effect, disclose the identity of the people who were the owners of the goods the subject of the importation.  The position which prevailed in England at the time would appear not to have equated to that which prevails in Australia where disclosure of an owner, in circumstances such as presently prevail, may be effected in accordance with the provisions of the Trade Marks Act 1995 (Cth) (‘the Act’) in respect of infringing goods or potentially infringing goods.

10. In his speech, Lord Reid said at 174:

    ‘… It has been clear at least since the time of Lord Hardwicke that information cannot be obtained by discovery from a person who will in due course be compellable to give that information either by oral testimony as a witness or on a subpoena duces tecum.  Whether the reasons justifying that rule are good or bad it is much too late to enquire: the rule is settled.  But the foundation of the rule is the assumption that eventually the testimony will be available either in an action already in progress [and I interpolate, which would be such as the present case] or in an action which will be brought later.  It appears to me to have no application to a case like the present case.  Here, if the information in the possession of the respondents cannot be made available by discovery now, no action can ever be begun because the appellants do not know who are the wrongdoers who have infringed their patent.  So the appellants can never get the information.

    To apply the mere witness rule to a case like this would be to divorce it entirely from its proper sphere.  Its purpose is not to prevent but to postpone the recovery of the information sought.  It may sometimes have been misapplied in the past but I see no reason why we should continue to do so. 

    But this does not mean, as the appellants contend, that discovery will be ordered against anyone who can give information as to the identity of a wrongdoer.  There is absolutely no authority for that.  A person injured in a road accident might know that a bystander had taken the number of the car which ran him down and have no other means of tracing the driver.  Or a person might know that a particular person is in possession of a libellous letter which he has good reason to believe defames him but the author of which he cannot discover.  I am satisfied that it would not be proper in either case to order discovery in order that the person who has suffered damage might be able to find and sue the wrongdoer.  Neither authority, principle nor public policy would justify that.

    So discovery to find the identity of a wrongdoer is available against anyone against whom the plaintiff has a cause of action in relation to the same wrong.  It is not available against a person who has no other connection with the wrong than that he was a spectator or has some document relating to it in his possession.  But the respondents are in an intermediate position.  Their conduct was entirely innocent;  it was in the execution of their statutory duty.’

    His Lordship proceeded to find that discovery in the form then sought, which would be equated to preliminary discovery in this State nowadays should be ordered. 

11. One of the problems confronting the applicants in their present application is that a person is guilty of an offence under s 148 of the Act:

    ‘… if the person intentionally:
    …
    (d)      imports goods into Australia for the purpose of trade or manufacture;

    knowing that, or reckless of whether or not:
    …

    (g)a registered trade mark is falsely applied to them or in relation to them.’

12. Questions of privilege arise in the circumstances.  In a parallel situation in relation to Mareva relief, the New South Wales Court of Appeal in Ross v Internet Wines Pty Ltd (2004) 60 NSWLR 436, held that it was inappropriate for a court to require a person to create a document, the contents of which may tend to incriminate the person, whether there be an arrangement for the document to be placed in a sealed envelope and made available to the relevant Judge's associate with a claim for privilege or not.

13. It seems to me that in the circumstances of this case, it would be entirely inappropriate to order the respondent to provide an affidavit such as the one sought in the proposed prayer for relief to which I have referred.  In the circumstances, I decline to order, what is called, the Norwich Pharmacal relief sought in the draft short minutes.  There has been discussion earlier as to what other appropriate orders should be made and these are conveniently dealt with by reference to the short minutes of order which I initial and date this day.

I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Graham.

Associate:
Dated:        25 October 2006

Counsel for the Applicant:	Mr P W Flynn
Solicitor for the Applicant:	Baker & McKenzie
The Respondent appeared in person.
Date of Hearing:	12 October 2006
Date of Judgment:	12 October 2006