GSM (Trademarks) Pty Ltd v Shao (No 3)
[2006] FCA 1745
•29 NOVEMBER 2006
FEDERAL COURT OF AUSTRALIA
GSM (Trademarks) Pty Ltd v Shao (No 3) [2006] FCA 1745
GSM (TRADEMARKS) PTY LTD (ACN 085 955 291) AND GSM (OPERATIONS) PTY LTD (ACN 085 950 803) v DAVID WEI SHAO
NSD 1731 OF 2006GRAHAM J
29 NOVEMBER 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 ApplicantGSM (OPERATIONS) PTY LTD (ACN 085 950 803)
Second ApplicantAND:
DAVID WEI SHAO
Respondent
JUDGE:
GRAHAM J
DATE OF ORDER:
29 NOVEMBER 2006
WHERE MADE:
SYDNEY
THE COURT DECLARES THAT:
The Respondent has infringed the First Applicant’s registered trade mark 964518 by importing into Australia the 2,968 mobile phone covers seized by the Australian Customs Service on 10 August 2006 (the ‘Seized Goods’), which have had the trade mark BILLABONG applied to them without the authority of the First Applicant.
THE COURT ORDERS THAT:
Order 10 made on 21 September 2006, and the Applicants’ associated undertaking as to damages, be discharged.
The Respondent by himself, his servant or agents, be permanently restrained from:
(a) importing;
(b) causing or procuring the importation of;
(c) selling or offering or exposing for sale,
goods bearing:
(i)one or more of the trade marks set out in the Schedule to these Orders (‘Registered Trade Marks’); or
(ii)any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks,
without the prior consent of the First Applicant.
The Respondent by himself, his servants, agents or otherwise be restrained from authorising, aiding, abetting, counselling or procuring any person or entity to:
(a) import;
(b) cause or procure to be imported;
(c) sell or offer or expose for sale;
goods bearing:
(i) one or more of the Registered Trade Marks, or;
(ii)any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks;
without the prior consent of the First Applicant.
Pursuant to section 137(3)(b) of the Trade Marks Act 1995 (Cth), the Seized Goods be forfeited to the Commonwealth for disposal at the direction of the Chief Executive Officer of Australian Customs.
Within 14 days of service of this order upon him, the Respondent deliver up to Baker & McKenzie solicitors at Level 27, 50 Bridge Street, Sydney NSW, or any other nominated agent of the Applicants, all goods, documents and other materials in his possession, custody or control, including, without limitation, mobile phone covers, stationery, business cards, brochures and marketing materials which bear, without the authority of the First Applicant:
(a) any one or more of the Registered Trade Marks;
(b)any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks.
(Materials) and that the Applicants may destroy or otherwise dispose of the Materials as they see fit.
The Respondent pay the Applicants’ costs fixed in the sum of $58,680.
Schedule
Registered Trade Marks
| Trade Mark | Reg no. | Class | Goods in respect of which trade mark is registered |
| BILLABONG | 358063 | 25 | Articles of clothing and footwear. |
| BILLABONG | 416930 | 6 | 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 | 18 | All goods in Class 18 including handbags and wallets but excluding picnic cases and all other items adapted to picnic |
| BILLABONG | 416932 | 24 | All goods in this class, including towels and fabrics, but excluding bath linen and travelling rugs |
| BILLABONG | 416933 | 25 | Clothing; footwear; headgear and wet suits in this class, being goods included in class 25 |
| BILLABONG | 419740 | 42 | Retailing and wholesaling of clothing, footwear, and headgear, being services included in class 42. |
| BILLABONG | 429670 | 9 | 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 | 9 | 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 | 16 | 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 | 28 | 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 | 22 | 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 | 9 | 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 |
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 ApplicantGSM (OPERATIONS) PTY LTD (ACN 085 950 803)
Second ApplicantAND:
DAVID WEI SHAO
Respondent
JUDGE:
GRAHAM J
DATE:
29 NOVEMBER 2006
PLACE:
SYDNEY
REASONS FOR JUDGMENT
The first applicant is the owner of the registered trade mark ‘BILLABONG’ number 964518 in class 9. The protection afforded by that registration extends to the use of the mark in respect of mobile phones and parts, fittings and accessories for mobile telephone housings, faceplates, covers, cases and pouches.
On or about 10 August 2006 the Australian Customs Service seized 2,965 mobile phone covers bearing designs, labels and/or markings that appeared to infringe the registered trade mark in respect of which the second applicant was an authorised user.
It would appear that an entry for home consumption was presented to the Australian Customs Service which nominated David Wei Shao, the respondent, as the owner of the mobile phone covers. Accordingly, Mr Shao was the designated owner of the goods within the meaning of the Trade Marks Act 1995 (Cth) (‘the Act’).
By letter dated 10 August 2006, which appears to have been received by the second applicant on 14 August 2006, the Australian Customs Service notified the second applicant that it had seized the mobile phone covers. Under s 137 of the Act it was open to the applicants to institute proceedings for infringement of the mark and to seek relief in respect of the seized goods. It would appear that on 25 August 2006 the Chief Executive Officer of the Customs Service extended the time within which proceedings for infringement may be commenced to at least 8 September 2006 or, arguably, 11 September 2006. As it transpires, the proceedings now before the Court were commenced on 8 September 2006, that is to say within the time limit permitted by s 137 of the Act.
The seized goods were inspected by Kenneth James Taylor, a director of Mainpack Pty Limited which carries on business under the business name Trade Mark Investigation Services. Trade Mark Investigation Services has been authorised by Billabong International Limited, the parent company of the applicants, to represent Billabong International Limited and its subsidiaries in matters pertaining to the infringement and/or unauthorised use of its intellectual property.
When Mr Taylor inspected the seized goods he photographed cardboard cartons said to contain the seized goods. From the contents of one of the cartons, showing, when opened, numerous items in various colours within clear plastic containers and also some of the items themselves following their removal from the relevant cardboard carton, it seems clear that the seized goods answered the description of mobile telephone covers and upon each of them the word or the mark ‘Billabong’ was prominently displayed.
Prior to the institution of the proceedings Mr Taylor says that he had a telephone conversation with a person whom he described as ‘the respondent’. I am satisfied that the person with whom Mr Taylor spoke was indeed the respondent in the current proceedings. The conversation took place in circumstances where Mr Taylor had telephoned a mobile telephone number 0433 168 887. After leaving a message inviting the recipient to call Mr Taylor back, Mr Taylor spoke with the person whom he had described as ‘the respondent’ and whom I find was the respondent in the proceedings now before the Court. The conversation included:
Taylor: ‘The Billabong phone covers seized by Customs are counterfeit and I urge you to forfeit the covers and settle the matter.’
Respondent: ‘There are many companies called Billabong Australia, why don't you look on the IP Australia website? Billabong is a generic word and contained in the Oxford Dictionary. Is the company going to sue the Oxford Dictionary as well? I don't care if I'm going to court, I have my point to argue … If you can give my company the licence I will buy...’
Taylor: ‘Why have Billabong on it?’
Respondent: ‘I make the market colourful. I have rights. I will argue my rights. …’
…
Taylor: ‘What is the best address to send you mail?’Respondent: ‘728 Parramatta Road, you know where I am. Just send it there and I will pick it up.’
The address apparently provided to Customs in the entry for home consumption was 728 Parramatta Road, Petersham, NSW 2049. Following the institution of these proceedings a number of attempts were made to effect service of the initiating process at 728 Parramatta Road, Petersham (‘the Petersham premises’), and also at Unit 808, 199 Pyrmont Street, Pyrmont, NSW. The Pyrmont address was an address for a residential unit being an address for one ‘Wei Shao’ an officer of Amtel International Pty Limited (ACN 111 770 597).
On the afternoon of 16 September 2006 Mr Themis Papas, telephoned the mobile telephone number 0433 168 887. The person who answered the telephone call had a conversation with Mr Papas. I find that that person was the respondent. In the course of the conversation the following words were spoken:
Papas: ‘Am I speaking to David Shao?’
Respondent: ‘Yes.’
Papas: ‘Where can I deliver these documents to you today?’
Respondent: ‘I am interstate on holidays.’
Papas: ‘Where on holidays?’
Respondent: ‘I don't have to tell you where I am.’
Papas: ‘Did you get the documents I gave to Henry Hong?’
Respondent: ‘I don't have anything to do with Henry Hong.’
Papas: ‘Did Henry give you the documents last week?’
Respondent: ‘No.’
Papas: ‘Henry said he was delivering the documents to you last Tuesday night.’
Respondent: ‘Send them in the post. Send them in federal post, I got some documents last time as I am avoiding service.’
Papas: ‘I need to hand deliver them to you. Where can I deliver these documents to you tomorrow?’
Respondent: ‘Deliver them through the post, I don't want them hand-delivered. Last time someone delivered documents he took my photo. I had a fight with him and then he laughed at me because he took film of me and the Police got involved. I don't want this. I don't know how you have to deliver but I don't want this trouble again. I'm not going to meet you anywhere for you to deliver. I don't want to meet anyone from Trademark or ACAG. Just deliver to 728.’
Papas: ‘So you are avoiding service of these documents?’
Respondent: ‘Yes.’
Papas: ‘Can I deliver them to your home address?’
Respondent: ‘Yes. Deliver them to 728.’
Papas: ‘728 where?’
Respondent: ‘Parramatta Road, Petersham.’
Papas: ‘That can't be your home address?’
Respondent: ‘Yes, it's my home address, send it in the mail like before.’
Several attempts were made to effect service of the initiating process and two of the supporting affidavits on 8, 9, 11, 12, 13, 16 and 17 September 2006. In fact, a copy of the Application and two of the supporting affidavits were left at the Petersham premises on 11 September 2006 with a Mr Henry Hong. At the time of the provision of those documents to Mr Hong a conversation took place as follows:
Papas: ‘Is David Shao here?’
Hong: ‘No, but you can leave them here with me’, and he pointed to the Court Documents in Mr Papas's hand.
Papas:‘What is your name?’
Hong: ‘Henry.’
Mr Papas proceeded to hand the documents to Mr Hong saying, ‘Thanks and bye’.
On 12 September 2006 Mr Hong had further conversation with Mr Papas in which he indicated that he had delivered the documents which had been left with him on 11 September to Mr Shao. This was further confirmed in a later conversation between Mr Papas and Mr Hong at about 6:30 pm on 12 September 2006 and again at about 4:45 pm on 13 September 2006.
Order 7 rule 10 of the Federal Court Rules (‘the Rules’) provides:
‘10. Where for any reason it is impractical to serve a document in the manner set out in the Rules, but steps have been taken to bring the document to the notice of the person to be served, the Court may order that the document be taken to have been served on that person on a date specified in the order.’
On 21 September 2006 the Court ordered that 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.
At about 5:45 pm on 25 September 2006 Mr Papas attended at the Petersham premises. He parked the vehicle in which he was travelling around the corner from the Petersham premises. He observed a BMW motor vehicle, registration API 62M parked in the street in which his vehicle was parked.
At approximately 8:20 pm he observed a man exit the Petersham premises, enter the BMW motor vehicle and drive away. Mr Papas proceeded to follow the BMW motor vehicle which was driven to 8 Quay Street, Haymarket. At approximately 8:54 pm Mr Papas observed the man who had been driving the BMW motor vehicle park the vehicle and proceed to enter a restaurant located at Shop 2, 8 Quay Street, Haymarket.
At approximately 9:00 pm Mr Papas entered the restaurant and located the man whom he had observed driving away from the Petersham premises in the BMW motor vehicle. In the course of the conversation which ensued between Mr Papas and the gentleman in question, Mr Papas took a number of photographs of the gentleman using a concealed camera. Those photographs are photographs of the person who appeared before me when this matter was last before the Court, arriving at Court at 10:21 am on 12 October 2006, some 51 minutes after his matter was listed for hearing.
Mr Papas had conversation with the respondent to the following effect:
Papas:‘David Shao’
Respondent: ‘Yes?’
Papas:‘David Shao?’
Respondent: ‘Yes.’
Papas:‘David Shao, documents for you.’
whereupon Mr Papas placed certain documents on to the table in front of the respondent including a sealed copy of the Orders made by the Court on 21 September 2006.
Respondent: ‘I am not David Shao.’
Papas: ‘Yes, you are David Shao. You're served.’
Respondent: ‘I'm not him, I don't have to tell you who I am.’
Papas: ‘You're served David Shao.
Following the conversation to which reference has just been made Mr Papas proceeded towards the door of the restaurant. As he proceeded to leave, the respondent ran around in front of him and grabbed him around the neck taking hold of Mr Papas's bag. Further conversation ensued:
Respondent: ‘You took my picture.’
Papas: ‘Let go.’
Respondent: ‘You took my picture.’
Papas, speaking in a loud voice: ‘Let go.’
Following encouragement from staff of the restaurant Mr Papas left the restaurant. As he was walking away the respondent came out of the restaurant and ran up to him. The respondent proceeded to strike Mr Papas on the head with his right hand. Mr Papas endeavoured to get away from the respondent who proceeded to chase him down the street. After a short time the respondent withdrew.
As mentioned earlier, the matter was before the Court on 21 September 2006. Apart from making an order under Order 7 rule 10 of the Rules an order was made pursuant to s 137(5) of the Act that 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.
Apart from ancillary orders being made, an interlocutory injunction was granted upon the applicants by their counsel giving to the Court the usual undertaking as to damages, restraining the respondent by himself, his servants or agents from:
‘(a) importing;
(b) causing or procuring the or importation of;
(c) selling or offering or exposing for sale,
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 applicant’ until further order.
On 21 September 2006 the matter was stood over for further directions to 12 October 2006 at 9:30 am. On 12 October 2006 the respondent failed to appear when the matter was first called. Leave was granted to the applicants to file in a Court a Notice of Motion returnable instanter seeking a number of orders by way of final relief.
As mentioned earlier the respondent arrived in Court at 10:21 am at a stage when the Court was considering the motion and the evidence in support of it. In the circumstances the applicants indicated that the only relief which they then sought was relief described as ‘Norwich Pharmacal relief’. The application for such relief was considered by the
Court at 5:00 pm on 12 October 2006. In the result no such relief was ordered but a number of other directions and orders were made.
Leave was granted to the respondent to file in Court a Notice of Appearance signed by the respondent and dated 12 October 2006. The respondent proceeded to file a Notice of Appearance on 12 October 2006 giving as his address 728 Parramatta Road, Petersham, NSW 2049.
The proceedings were fixed for hearing at 10:15 am today on a final hearing basis. When the matter was called this morning the respondent failed to appear. In the circumstances the applicants have asked the Court to proceed with the hearing under Order 32 rule 2(1)(d) of the Rules. That rule relevantly provides:
‘If, when a proceeding is called on for trial, any party is absent, the Court may:
...(d) proceed with the trial generally or so far as concerns any claim for relief in the proceeding.’
I am satisfied that the 2,965 mobile phone covers were imported into Australia by the respondent for the purposes of sale and that such importation constituted an infringement of the trade mark ‘BILLABONG’ number 964518 registered in the name of the first applicant.
The second applicant was an authorised user of the trade mark and other Billabong trade marks. As such it has the same rights to relief as the registered owner pursuant to s 26(1) of the Act. Accordingly, the applicants are entitled to the relief which they seek in respect of the infringement of the mark.
Under s 137(3)(b) of the Act the Court may order that the seized goods be forfeited to the Commonwealth. Such an order would seem appropriate in the circumstances of the present case.
The applicants also seek relief in the nature of a mandatory injunction for the delivery up of goods, documents and other materials in the possession, custody or control of the respondent which bear, without the authority of the first applicant, any one or more of the ‘BILLABONG’ trade marks and relief permitting the applicants to destroy or otherwise dispose of such goods, documents and/or other materials. It seems to me entirely appropriate that relief of this nature should also be granted given the infringement which has occurred.
The final question is costs. Given the history of the matter the applicants seek an order for costs permitted by Order 62 rule 4(2)(d) of the Rules rather than a conventional order which would require costs to be paid by a party against whom they may be ordered on the basis that they be taxed. Order 62 rule 4(2)(d) provides:
‘4(2) Where the Court orders that costs be paid to any person, the Court may further order that as to the whole or any part of the costs specified in the order, instead of taxed costs, that person shall be entitled to:
...
(d)a sum in respect of costs to be ascertained in such manner as the Court may direct.’
When the matter was before the Court on 21 September 2006 the costs of the Notice of Motion dated 20 September 2006 and the hearing for interlocutory relief on 21 September 2006 were reserved. When the matter was before the Court on 12 October 2006 the Court ordered that the costs of the proceedings on 12 October 2006 be reserved.
Affidavit evidence has been read on the final hearing of Marianne David, a solicitor in the employ of the applicants’ solicitors, who as I would understand it has the carriage of the matter. Her evidence establishes that the costs in fact incurred by the applicants in the infringement proceedings have totalled $73,351.67, an amount which includes Goods and Services Tax where appropriate.
It has been urged upon me that, given the conduct of the respondent who plainly attempted to avoid service of the initiating process and his subsequent conduct in arriving late at Court on 12 October 2006, special circumstances exist which warrant departure from the normal approach to the awarding of costs in proceedings such as this. It is submitted that it would be an unfair burden to visit upon the applicants the requirement that they have to submit bills of costs and have them taxed in circumstances where it is unlikely that the respondent would appear and participate in any taxation in any event.
I am satisfied that special circumstances do exist which would warrant the question of costs being dealt with under Order 62 rule 4(2)(d) of the Rules. Whilst counsel for the applicants submitted that it may be appropriate to order that the costs be paid on an indemnity basis, I am minded to the view that a party and party basis would be appropriate, allowing a discount of 20 per cent from the costs in fact incurred to reflect that basis. Such a discount would produce a lump sum amount of approximately $58,680. I consider that an order for payment of the applicant’s costs in that sum should be made.
I certify that the preceding thirty-five (35) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Graham. Associate:
Dated: 13 December 2006
Counsel for the Applicant: Mr P W Flynn Solicitor for the Applicant: Baker & McKenzie The Respondent did not appear. Date of Hearing: 29 November 2006 Date of Judgment: 29 November 2006
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